[00:00:03] Speaker ?:
That's true, but this is a view to no vote, no law.

[00:00:40] Speaker 05:
Mr. Saunders, please proceed.

[00:00:45] Speaker 04:
May it please the court.

[00:00:46] Speaker 04:
I'd hope to say you could cut through some of the procedural tangles in this case by declining to extend dynamic drinkware.

[00:00:53] Speaker 04:
That option's likely been taken off the table, perhaps in bank review.

[00:00:58] Speaker 04:
Still, this panel can and should correct PTO's errors in applying dynamic drinkware.

[00:01:03] Speaker 04:
and otherwise avoiding the substance of Arios' challenges to the 794 patent.

[00:01:10] Speaker 04:
The final written decision in this case was the first ever to extend the rule that was applied to this area, announce a new issue, a new legal standpoint.

[00:01:23] Speaker 04:
And indeed, before the record closed, Illumina itself had argued only that the provisional patent application

[00:01:31] Speaker 04:
needed to support the subject matter relied upon in the published patent application.

[00:01:37] Speaker 04:
They hadn't argued that there needed to be support for the claims.

[00:01:41] Speaker 04:
Now, once this new rule was announced in the final written decision, the board should reopen the record and consider all the evidence that Ariosa presented to meet that standard.

[00:01:53] Speaker 04:
Alternatively, if there wasn't a new standard here, then it should have held Illumina to its waiver under this court's decision in Giacome.

[00:02:01] Speaker 04:
What the board couldn't do and what it did here is fault Ariosa for not building a record on an argument that Illumina wasn't making before the record closed.

[00:02:16] Speaker 04:
Now, you may be thinking to yourself, well, there was some discussion of the additional evidence in the sense that the board, in its decision-denying hearing, discussed the evidence relating to claim one of the fan publication.

[00:02:30] Speaker 04:
But one of the difficulties we have under the extension of dynamic drinkware in this trial within a trial that's created is that if any claim of the fan publication is supported by the written description in the provisional application, then that priority link has been established.

[00:02:52] Speaker 04:
And the fan publication is priority for everything that has been carried over from that earlier application.

[00:03:00] Speaker 04:
And so the board needed to address all of the evidence that had been presented, which included detailed claim charts, not just about claim one in the fan publication, but about all of the other claims.

[00:03:15] Speaker 04:
So we have just a failure to address

[00:03:18] Speaker 04:
the evidence and arguments that were presented to it.

[00:03:23] Speaker 04:
And I think a misunderstanding on the part of the board when claim one was picked out as an example.

[00:03:29] Speaker 04:
The argument that Arioso was making was that as described in exhibits, which had already been made of record by Illumina, all of the claims of the fan publication were supported by the provisional application.

[00:03:44] Speaker 04:
You should reopen the record.

[00:03:46] Speaker 04:
and consider this evidence.

[00:03:48] Speaker 04:
And it's not a complete response or analysis for the board to look at one piece of that and then to have no discussion whatsoever of all the other claims.

[00:04:00] Speaker 04:
And then the other piece of its analysis, which was to say, well, none of this is a new rule, the implications of that then bend back against Illumina.

[00:04:09] Speaker 04:
Because if none of this is a new rule, the fact that it was making the argument

[00:04:15] Speaker 04:
that is the legal standard we are advocating for or are advocating for before the record closed would say that there is a waiver on its part, as this court found in Giacomini when no argument was given there.

[00:04:31] Speaker 04:
In addition to this impossibility of saying it's new but it's not new at the same time,

[00:04:39] Speaker 04:
The board also committed a legal error in analyzing the shifting burdens of production under dynamic dribble wear in that it faulted Ariosa for not contending in its petition that Illumina had no entitlement to its earlier priorities.

[00:05:04] Speaker 04:
But that gets things

[00:05:06] Speaker 04:
backwards under the burdens of production.

[00:05:08] Speaker 04:
Our burden was to come forward and say, we're offering the fan publication here.

[00:05:12] Speaker 04:
It's 102E Art.

[00:05:15] Speaker 04:
We identified their filing date in 2002.

[00:05:19] Speaker 04:
Fan publication on its face has a filing date of 2001.

[00:05:22] Speaker 04:
And then if there's going to be any establishment of an earlier priority date on their part, they have the burden of production under dynamic drinkware, under technology licensing, under

[00:05:37] Speaker 04:
to do that analysis and say, no, we have a 2002 filing date for the application that immediately leads to our patent, but here are the reasons why we're claiming an earlier peridate, at which point the burden would have shifted back to us.

[00:05:55] Speaker 04:
So to say that we had an initial upfront burden to say, as the board said, petitioner did not argue

[00:06:06] Speaker 04:
that the 794 patent was not entitled to its earliest possible effective filing date of September of 2001.

[00:06:14] Speaker 04:
It wasn't a duty on our part up front to be pre-budding what they were going to say when the burden of production shifted to them.

[00:06:23] Speaker 04:
So we think this is a very straightforward legal error in the analysis that would also warrant remand to the board.

[00:06:33] Speaker 04:
And the other piece of its reasoning on that in terms of discussing whether we had identified the fan publication as 102E part, we clearly had, and you don't need to look any farther than the board's institution decision.

[00:06:50] Speaker 04:
We even gave you the screenshot in our brief so you could see that the board was instituting on 102E as well.

[00:06:58] Speaker 04:
And if you look at the Patanona response here, clearly Illumina understood that.

[00:07:03] Speaker 04:
And it was addressing the filing date of the fan publication itself, as well as the issue of getting back to the earlier filing date of the provisional.

[00:07:18] Speaker 04:
So what we're presenting to you here, now that we have the adverse precedent against us on what had been our lead argument, was a series of

[00:07:29] Speaker 04:
legal errors and positions that are either not being fully addressed or positions being taken by the agency where you're adopting two contract reviews simultaneously or a clear legal error in shifting the burden of proof onto our client inappropriately.

[00:07:49] Speaker 04:
And the effect of all of these was to leave us in a position where there is no consideration

[00:07:55] Speaker 04:
of the substance of our challenge, and we've won it all along here, was the opportunity to have the priority paired to the claims of the 794 patent.

[00:08:08] Speaker 04:
And the board error is going through tremendous lengths through these procedural rulings to not consider that substance.

[00:08:17] Speaker 04:
And those lengths extended even after the final written decision here, where we had a termination decision

[00:08:25] Speaker 04:
for the ex parte re-examinations, which I think was striking in the sense that you had grounds that had been not instituted initially in the IPR on the ground that they were redundant to FAN.

[00:08:44] Speaker 04:
And then at the time that the determination decision is being made, the board has already knocked FAN out of the case.

[00:08:54] Speaker 04:
And so what it's doing is it's terminating an expertly re-examination that the central re-examination unit had found presented substantial new questions of patentability on a ground that it hadn't considered upfront as redundant.

[00:09:10] Speaker 04:
But by the time it's making its decision, there, of course, is nothing left to that redundancy determination based on having knocked Fan out of the case.

[00:09:20] Speaker 04:
You also have sort of sweeping reasoning by the board if you look at

[00:09:24] Speaker 04:
the Schumer reference that was offered as well, that was not instituted in the Roche IPR, again, on the grounds of redundancy.

[00:09:37] Speaker 04:
And then there's a termination of the attempt to have the PTO consider that.

[00:09:42] Speaker 04:
And then on Strauss, you have an initial determination that says, well,

[00:09:49] Speaker 04:
Even though this is a continuation application, and so by definition, nothing has changed here, you needed to attach the parent application.

[00:09:59] Speaker 04:
That wasn't attached.

[00:10:01] Speaker 04:
It's a publicly available document.

[00:10:02] Speaker 04:
We, the board, have cited it.

[00:10:04] Speaker 04:
Illumina has cited it.

[00:10:05] Speaker 04:
But on this technicality, you didn't attach it.

[00:10:09] Speaker 04:
And so then every effort is made to say, let's have substantive consideration of that in Roche attempted in its IPR.

[00:10:17] Speaker 04:
They attempted in the ex parte re-examinations.

[00:10:21] Speaker 04:
And these were instituted.

[00:10:23] Speaker 04:
Substantial new questions of patentability were found.

[00:10:26] Speaker 04:
But the board's reasoning was essentially that that upfront issue couldn't be corrected here.

[00:10:35] Speaker 04:
They're citing the timing of this and saying, well, you needed to go back to that point in time and show us why you could have.

[00:10:42] Speaker 04:
And we think that this sweeps far beyond

[00:10:45] Speaker 04:
the purpose of this provision, which, as you'll recall, on the face of the statute applies only, quote, during the pendency of the IPR.

[00:11:00] Speaker 04:
And so there's a reasoning that says, essentially, if there's a gap between your first request and these later ex parte re-examinations, then we can say you could have brought this

[00:11:16] Speaker 04:
and knock out those ex parte re-examinations.

[00:11:19] Speaker 04:
But to have that sweeping reasoning, which would essentially allow the board to knock these out under any circumstances, makes no sense when mapped onto a statute that provides this authority only for a limited period of time during the IPR.

[00:11:40] Speaker 04:
And what that tells you is that this is authority that goes to

[00:11:44] Speaker 04:
avoiding duplication.

[00:11:46] Speaker 04:
It's preventing the train wreck when all these proceedings are going at once.

[00:11:50] Speaker 04:
It's not a general authority to announce a standard that says if it wasn't in the initial IPR petition, then we won't entertain it in the ex parte re-examination context as well.

[00:12:06] Speaker 04:
So we think that that is a continuation of the legal errors

[00:12:12] Speaker 04:
abuse that would be made by the board that all amount to one thing, which is no substantive consideration in these proceedings of the arguments that were making no comparison of the disclosures in the 810 provisional and the other prior art that we've offered to the claims of the patent, other than, of course, in institution decisions that found a substantial likelihood of cess and in

[00:12:40] Speaker 04:
the ex parte re-examination orders, which found 18 substantial new questions of patentability.

[00:12:48] Speaker 04:
There are a lot of issues in this case, so if the panel doesn't have other questions at this time, then I'll reserve my time for that.

[00:12:55] Speaker 05:
Mr. Saunders?

[00:12:57] Speaker 05:
Mr. Hickman?

[00:12:58] Speaker 05:
In the very next sentence, it says, where there are differences, or where there are differences between the two.

[00:13:07] Speaker 05:
And we submit the board correctly read that.

[00:13:09] Speaker 05:
May it please the Court.

[00:13:13] Speaker 00:
I'm here this morning to address the reviewability of Arios' appeal of the Board's decision to terminate the ex parte reexaminations.

[00:13:21] Speaker 00:
And for as long as the USPTO has been conducting post-grant proceedings, the rule has been that the agency's decision not to have a proceeding is not reviewable in Article III Court.

[00:13:37] Speaker 00:
That's been the case for ex parte reexaminations.

[00:13:39] Speaker 00:
That's been the case for inter partes reexaminations.

[00:13:42] Speaker 00:
It's been the case for inter partes reviews and for interferences.

[00:13:45] Speaker 00:
And this case is no different.

[00:13:48] Speaker 00:
We know that's the answer because we can see that in the statute.

[00:13:52] Speaker 00:
And so I'll briefly this morning recap what the statute says.

[00:13:58] Speaker 00:
Sections 134b and 141b, which govern appeals from ex parte reexaminations to the board and to this court, make clear

[00:14:06] Speaker 00:
that only patent owners can take appeal from a rejection of the examiner, and the appeal that it's taken must be from a final rejection of the examiner.

[00:14:17] Speaker 00:
That was the landscape before the American Inventions Act, and nothing in the AIA changed that.

[00:14:26] Speaker 00:
The landscape before the American Events Act was also clear from the reexamination statute itself, sections 302 through 306 of the patent act.

[00:14:36] Speaker 00:
And those sections also made clear that, again, the patent owner is the party who has the right to appeal.

[00:14:44] Speaker 00:
Section 306 specifically says that a patent owner may appeal under section 134 to the board.

[00:14:53] Speaker 00:
The syntax case, which is an old case, addresses those sections of the Ex Parte re-examination statute and fully supports the same result here.

[00:15:02] Speaker 00:
In the America Invents Act, what Congress said is, in sections 315D and the second sentence of section 325D, Congress envisioned that there may be parallel proceedings such as the scenario that we have here.

[00:15:18] Speaker 00:
And what Congress said is that the agency can figure out what to do in the event of parallel proceedings.

[00:15:25] Speaker 00:
The director delegated authority to the board to determine ultimately what to do in a situation like this.

[00:15:30] Speaker 00:
And the board exercised that authority and assessed all the relevant considerations and concluded that the ex parte re-examinations should not go forward.

[00:15:44] Speaker 00:
So I think the statutory scheme is clear here.

[00:15:48] Speaker 00:
And so unless the court has any specific questions, I'll simply yield the rest of my time.

[00:15:54] Speaker 03:
I have one question.

[00:15:57] Speaker 03:
You refer in your brief to this as a jurisdictional issue?

[00:16:00] Speaker 03:
Yes, sir.

[00:16:01] Speaker 03:
As opposed to an issue, let's say, of standing or, for lack of a better term, appealability or cause of action

[00:16:11] Speaker 03:
Why do you think of it as jurisdictional?

[00:16:16] Speaker 00:
Well, our brief said that it's really both about jurisdiction and it's about having a cause of action to appeal.

[00:16:23] Speaker 00:
And the Supreme Court, certainly in recent years, has made clear that those are actually jurisdiction and standing and having a cause of action are distinct concepts.

[00:16:35] Speaker 03:
Which category do you think this one falls in?

[00:16:38] Speaker 00:
Both jurisdiction and having a cause of action.

[00:16:41] Speaker 00:
more directly answer your honor's question.

[00:16:43] Speaker 00:
We know that because we can see that in the statute.

[00:16:46] Speaker 00:
The statute, both sections 141 and 134, speak to this court's jurisdiction as an Article III court to review certain types of appeals from ex parte reexamination decisions, certain matters that come out of those.

[00:17:03] Speaker 00:
So I would say that 134 and 141 speak to what this court can do.

[00:17:11] Speaker 03:
As opposed to this court having the authority to do that, but only at the behest of certain parties.

[00:17:19] Speaker 03:
Would you consider both of those to be jurisdictional?

[00:17:24] Speaker 00:
I would.

[00:17:24] Speaker 00:
I think Congress was speaking to the same concept with both of those.

[00:17:29] Speaker 00:
But I think on the second point about which parties can

[00:17:34] Speaker 00:
Bring the appeal, I think that's also relevant to having a cause of action.

[00:17:38] Speaker 03:
But you think it is jurisdictional in addition to being a cause of action issue?

[00:17:46] Speaker 00:
I do.

[00:17:47] Speaker 00:
And for the reasons that I just stated, that Congress did speak to, in certain situations, an Article III court can adjudicate certain appeals, certain matters that come out of proceedings before the agency in some cases.

[00:18:04] Speaker 05:
So unless there are any further questions, can I sit down?

[00:18:13] Speaker 05:
Thank you, Mr. Hickman.

[00:18:18] Speaker 01:
Thank you, Your Honor, and may it please the Court.

[00:18:20] Speaker 01:
Edward Reinus on behalf of Illumina.

[00:18:23] Speaker 01:
The first point of error that was identified by Pellant was, as I understood the argument, was that the rehearing

[00:18:33] Speaker 01:
a request should have been granted, and that would be legal error not to do so.

[00:18:37] Speaker 01:
And what I think the fundamental flaw there is, there is a conflation of the concept of a precedent on a question that interprets a statute where there's never been a controlling ruling by a court versus a reversal of a controlling ruling of law.

[00:18:58] Speaker 01:
In their rehearing petition, they identified the Hatch case, which says,

[00:19:03] Speaker 01:
that an agency must provide an opportunity to meet a legal standard where there's a reversal of a controlling issue of law that's existed.

[00:19:11] Speaker 01:
And they didn't meet that standard.

[00:19:13] Speaker 01:
And I don't think anyone here thinks they can, because they also cited, for example, a dynamic drink where the district court judge that said, excuse me, in the Amgen case, the district court judge said this is a first issue, first impression.

[00:19:31] Speaker 01:
So they embraced the concept.

[00:19:32] Speaker 01:
that no one had expressly stated that Section 119 should be interpreted the way this court has interpreted recently in the MGen case and Drinkware and so forth.

[00:19:43] Speaker 01:
So that threshold question of whether there was a change in law sufficient to warrant a rehearing petition, they didn't meet the own standard that they set forth in the petition.

[00:19:53] Speaker 01:
So that alone should be sufficient.

[00:19:55] Speaker 01:
The second aspect of the complaint on the rehearing petition, as I understood it, was that they tendered

[00:20:02] Speaker 01:
an offer of proof that they could meet the standard of mission alcohol amgen by showing entitlement to filing 810 properly under section 119.

[00:20:17] Speaker 01:
And with respect to that, they identified only one claim, which was claim one, the board to its credit.

[00:20:25] Speaker 01:
I mean, the shirking workload I don't think is a fair

[00:20:30] Speaker 01:
implication, which is what we're getting from the argument.

[00:20:33] Speaker 01:
They spent pages going through claim one of the 946 non-provisional application to show that it wasn't supported by the earlier 810 application.

[00:20:46] Speaker 01:
And they said, that's the one you've identified.

[00:20:48] Speaker 01:
It was the only one identified in the record.

[00:20:50] Speaker 01:
They weren't going to start fishing around for other claims to test that, especially when the threshold showing hadn't even been made that there was a change in controlling loss sufficient to

[00:21:00] Speaker 03:
It was a little unclear to me, and straighten me out on this, but you're right as far as I can tell that they only specifically argued claim one, but they attached other claims to their submission and helped me understand the relationship between those other claims as far as their argument went.

[00:21:24] Speaker 03:
And the argument they were making with respect to claim one.

[00:21:27] Speaker 01:
So the argument was different because the inventions were somewhat different.

[00:21:33] Speaker 01:
And with respect to claim seven, which is the one that they're championing now on appeal, which is just one of many.

[00:21:39] Speaker 03:
But it was included, was it not, with the package that they presented to the board at the re-hearing?

[00:21:44] Speaker 01:
Only in the sense that this was included in this appeal.

[00:21:46] Speaker 01:
I mean, it was a record piece of evidence.

[00:21:52] Speaker 01:
37 CFR442104B5.

[00:21:54] Speaker 01:
They have an obligation to specify each piece of evidence and explain why it's relevant.

[00:22:00] Speaker 03:
It wasn't any more specific than that, that it was just, this happened to be one of the claims that was found somewhere in the record.

[00:22:07] Speaker 03:
It wasn't, there wasn't more?

[00:22:08] Speaker 01:
No, I mean, they cited documents where they made showing expert reports and things from other proceedings, but they didn't develop the argument.

[00:22:18] Speaker 01:
There was one sentence that said, for example, claim one meets it.

[00:22:21] Speaker 01:
And then they attached, as an appendix, to the rehearing petition, the claim chart for claim one.

[00:22:27] Speaker 01:
So when you get a brief, it would have been, for example, claim one, and then it would have been an addendum that had the claim chart.

[00:22:36] Speaker 01:
And then you would have had to go and look at the district court briefing or whatever and figure it out.

[00:22:40] Speaker 01:
I mean, on a rehearing petition, especially in view of the rule 42.104b5,

[00:22:49] Speaker 01:
That's just asking way too much.

[00:22:52] Speaker 01:
They take pages of technical analysis as to why even the argument that was highlighted failed.

[00:22:58] Speaker 01:
And I think that was just a true attempt by the board to make sure that they felt like they were getting a fair shake.

[00:23:05] Speaker 01:
Look, we don't think the law changed.

[00:23:07] Speaker 01:
Everyone's responsible for knowing what the statutes mean.

[00:23:12] Speaker 01:
Just because an issue hasn't been directly addressed by this court doesn't mean people aren't responsible for knowing what the statute means.

[00:23:19] Speaker 01:
And we're going to look, nevertheless, at what you've highlighted as your example, which you've included with the petition, and see if it's meritorious.

[00:23:30] Speaker 01:
And we find that it's not.

[00:23:31] Speaker 01:
We're not going to go dig through and see if other ones might be.

[00:23:34] Speaker 01:
I think on discretionary motion, like the motion for reconsideration, that's more than adequate to carry the day in this appellate review court.

[00:23:47] Speaker 01:
the primary argument, as I understood it.

[00:23:49] Speaker 01:
There's an argument regarding the burden.

[00:23:53] Speaker 01:
And here, really, two main thrusts.

[00:23:58] Speaker 01:
It's been a long morning for you.

[00:24:00] Speaker 01:
I don't want to protract it.

[00:24:01] Speaker 01:
And if at any point I'm sort of doing that, let me know.

[00:24:04] Speaker 01:
But the first point is the petition was incredibly superficial in terms of what the theory of prior art was.

[00:24:13] Speaker 01:
I mean, incredibly.

[00:24:15] Speaker 01:
They listed five prior art references

[00:24:17] Speaker 01:
And then they said, these are prior out into 102A, 102B, and or 102E.

[00:24:23] Speaker 01:
And didn't specify any subsection with any of the five references.

[00:24:27] Speaker 01:
And their argument now is that they intended to say the 946 filing date was the effective filing date for purposes of their prior reference.

[00:24:36] Speaker 01:
They didn't mention the date.

[00:24:38] Speaker 01:
And again, that violates, I think, 42104b5.

[00:24:42] Speaker 01:
You have to say what's relevant for what.

[00:24:45] Speaker 01:
We had to respond.

[00:24:46] Speaker 01:
You're limited in pages.

[00:24:48] Speaker 01:
And it's like, they're arguing, like, five different references.

[00:24:52] Speaker 01:
So they didn't carry the day.

[00:24:54] Speaker 01:
But lest there be any question about it.

[00:24:57] Speaker 01:
Because in just going back through, it's one of those things you read back through and you think, is there a real clear way to demonstrate this in a very short time span to a tentative audience?

[00:25:09] Speaker 01:
The appendix at 741, the judge at the trial said, is there anything on the part of petitioner that petitioners tried to show what the effective filing date is?

[00:25:23] Speaker 01:
And the answer was, there's a longer answer up front.

[00:25:26] Speaker 01:
They basically said, well, our effective filing date's the 810 application, which is February 2000.

[00:25:32] Speaker 01:
That really was their position.

[00:25:34] Speaker 01:
It's a revisionist history that it was the 946 later filing date.

[00:25:39] Speaker 01:
And it states in simple terms, so our position is that we are well ahead of the earliest filing date of the 794 patent by reference to the priority date of the 810.

[00:25:51] Speaker 01:
The judge said, so what's your position on the earliest filing date?

[00:25:54] Speaker 01:
And it said, we're going with the earliest filing date of the 810, which would have required a dynamic drinkware.

[00:26:01] Speaker 01:
Amgen proof to get them back.

[00:26:04] Speaker 01:
It wasn't that they were relying on the 946 and that we'd somehow failed to predate it by virtue of showing our entitlement to priority.

[00:26:12] Speaker 01:
And then this went on because the board was interested and the board basically said things at 743.

[00:26:19] Speaker 01:
You acknowledged that date and you never challenged any of the claims not entitled to that date.

[00:26:24] Speaker 01:
So you acknowledged the early date.

[00:26:26] Speaker 03:
Now, which date?

[00:26:28] Speaker 01:
The early date

[00:26:30] Speaker 01:
of the 794, the patent that's being challenged.

[00:26:34] Speaker 03:
The September 2000?

[00:26:35] Speaker 03:
Right.

[00:26:36] Speaker 01:
Right, OK.

[00:26:37] Speaker 03:
Exactly.

[00:26:37] Speaker 03:
All right.

[00:26:38] Speaker 01:
You acknowledge that date, you never challenge it.

[00:26:40] Speaker 01:
And Mr. Gunther answered, and it's long, and I don't mean to consider the whole thing, but it sums up with, I mean, at one point he said, I think it's fair to say that in the anticipation section of the petition.

[00:26:53] Speaker 01:
We didn't make that argument.

[00:26:54] Speaker 01:
But then at the bottom of 744, at lines 20 through 24,

[00:26:59] Speaker 01:
And our position is that we don't have to do that at all, which has challenged the date of our priority to September 2000 as a result of the incorporation by reference.

[00:27:10] Speaker 03:
Because they have February 2000.

[00:27:13] Speaker 01:
Right.

[00:27:13] Speaker 01:
They don't as a result of the incorporation by reference.

[00:27:16] Speaker 01:
That's not

[00:27:18] Speaker 01:
Right.

[00:27:19] Speaker 02:
But that's the argument, is they don't have to worry about September.

[00:27:23] Speaker 02:
Right.

[00:27:23] Speaker 01:
The 810 disclosure in its entirety becomes part of the 946, and we can rely on that as the February 2000 priority date.

[00:27:31] Speaker 01:
The judge is asking them, what's your position on this priority date question?

[00:27:35] Speaker 01:
And then at page 780, because the board's been challenged here in a way that I'm not sure doesn't deserve a response,

[00:27:48] Speaker 01:
Page 780, Judge Yang says at lines 21 through 23, again, if I understood counsel for petitioner correctly, I thought he was saying that he didn't need to, except for the four claims.

[00:28:01] Speaker 01:
They didn't need to do all that because they could trace back to the 810 application.

[00:28:06] Speaker 01:
And then counsel for the petitioner stood up and had a rebuttal, and they didn't mention it.

[00:28:14] Speaker 01:
They didn't correct the impression of the board.

[00:28:17] Speaker 01:
which they led them to the first place, they were just sitting on the A-10 earlier application.

[00:28:22] Speaker 01:
So they confirmed, not only was the petition didn't specify any challenge to 794 patent.

[00:28:30] Speaker 01:
That's, and I'm sure having reviewed the record, you're aware of this, but they were just describing the state of the art and they're using the effective filing date of the 794 this September 2000 as the relevant priority because they were embracing it in the petition.

[00:28:44] Speaker 01:
But they confirmed the trial upon questioning of the judges that that was their theory.

[00:28:49] Speaker 01:
How could we fault that board for then accepting that that was the theory that they were being presented with?

[00:28:55] Speaker 01:
In terms of what our response was, we didn't hear the waiver argument, I don't believe, here today, but that we somehow waived.

[00:29:02] Speaker 01:
We were very specific in the patent owner's response that they did nothing to challenge our earlier priority date.

[00:29:10] Speaker 01:
And they just had no viable 102E theory.

[00:29:15] Speaker 01:
We didn't waive anything.

[00:29:17] Speaker 01:
And that was point blank.

[00:29:20] Speaker 01:
So the burden shifting, I think that's a deferential standard.

[00:29:26] Speaker 01:
But clearly, the board had good reason for what they did.

[00:29:29] Speaker 01:
And I think faulting them is shirking work, or whatever it is.

[00:29:32] Speaker 01:
It's not well taken.

[00:29:34] Speaker 01:
On termination, unless there's any questions on the 794 final written decision,

[00:29:44] Speaker 01:
I'll move to that.

[00:29:46] Speaker 01:
On the termination, the question as to what's the exact flaw, it's actually an interesting question.

[00:29:52] Speaker 01:
I think it's both lack of what we would call cause of action, or one might think of as standing, and the jurisdictional question.

[00:30:00] Speaker 01:
I think what's interesting about this, actually, is that under 325D, 325D doesn't say, as part of an IPR, you may consider

[00:30:15] Speaker 01:
what you want to do with other applications.

[00:30:17] Speaker 01:
It's a far broader and more flexible allowance of authority.

[00:30:23] Speaker 01:
What it says is the director can figure out how to handle all of this.

[00:30:29] Speaker 01:
So it's not, I don't think, per se, part of the petition.

[00:30:34] Speaker 01:
It gets into sort of a little nebulous, admittedly.

[00:30:39] Speaker 01:
But I don't think it's part of the actual IPR proceeding itself, per se.

[00:30:46] Speaker 01:
because the director could identify someone else, a different component of the PTO, to make this decision.

[00:30:55] Speaker 01:
It's, OK, we've got the inventors challenging their own patent, and they've challenged it six different times in three different audiences.

[00:31:03] Speaker 01:
How do we deal with this?

[00:31:04] Speaker 01:
Which is the question presented.

[00:31:06] Speaker 01:
And what they did is the director said, we'll have the PTAB do it.

[00:31:13] Speaker 01:
Now, here that makes sense.

[00:31:15] Speaker 01:
The PTAB just went through a full trial, all this briefing.

[00:31:19] Speaker 01:
We went through that already.

[00:31:21] Speaker 01:
For them to determine whether subsequent reexamination is duplicative and is fair, given the time lapse and everything else, they were the right buy.

[00:31:33] Speaker 01:
Just I'm saying, if I was making the decision, I would say, yeah, that PTAB should make that decision.

[00:31:36] Speaker 01:
And they did.

[00:31:37] Speaker 01:
That doesn't make it part of the IPR proceeding per se.

[00:31:42] Speaker 01:
So I think when you look at it that way, that clarifies that there's not appellate jurisdiction, because the only appellate jurisdiction coming out of the IPR is rather narrowly drawn, as this panel knows better than me, which is under 319, that it's just the final written decision.

[00:32:01] Speaker 01:
Well, that hardly would go to something like this, which, adding legal buzzwords, might be considered collateral or a separate authority.

[00:32:11] Speaker 01:
which is the 325D authority.

[00:32:15] Speaker 01:
In terms of the merits of the termination of the ex parte, well, on behalf of my client, I couldn't think it was more deserved.

[00:32:25] Speaker 01:
I mean, we still have them.

[00:32:29] Speaker 01:
We're going to trial.

[00:32:29] Speaker 01:
It's always interesting to have the full context.

[00:32:32] Speaker 01:
We're going to trial in a few weeks on this case.

[00:32:36] Speaker 01:
So they have their counterclaims.

[00:32:39] Speaker 01:
And this is the case where there was a really narrow estoppel, like an incredibly narrow estoppel.

[00:32:42] Speaker 01:
We saw the petition from that, and that was denied as well.

[00:32:46] Speaker 01:
We can deal with it later.

[00:32:47] Speaker 01:
We don't need the mandamus.

[00:32:50] Speaker 01:
But with respect to that, they have the invalidity claim based on prior art that they're still going to be pursuing.

[00:32:58] Speaker 01:
And they had the opportunity in the petition.

[00:33:03] Speaker 01:
So they've had more than ample opportunity.

[00:33:06] Speaker 01:
And with that, we'd ask.

[00:33:08] Speaker 01:
I wouldn't be fair if I didn't say.

[00:33:11] Speaker 01:
I think that asking or estoppel not applying to PTEP proceedings is a problem that just analytically is hard for me to support.

[00:33:24] Speaker 01:
And so I think that you should consider that as appropriate in the course of these proceedings.

[00:33:29] Speaker 01:
Thank you.

[00:33:29] Speaker 05:
Okay.

[00:33:30] Speaker 05:
Mr. Saunders, you have some rebuttal time.

[00:33:37] Speaker 04:
I'd like to start with the question of not reopening the record.

[00:33:42] Speaker 04:
The number one I would dispute, we cited the Hatch case from the DC Circuit.

[00:33:49] Speaker 04:
But if you look at the underlying cases that are collected in there, not everyone in those cases is dealing with the controlling standard, the true binding precedent that can't be gotten around.

[00:34:02] Speaker 04:
But even if that were the standard,

[00:34:06] Speaker 04:
The point we were making is that the PTO itself had said that the logic here doesn't carry over to publish patent applications.

[00:34:16] Speaker 04:
It said that in its Robbins decision, and it said that in its Yamaguchi decision, which was a precedential decision of the BPAI.

[00:34:24] Speaker 04:
BPAI is still precedent for the board.

[00:34:27] Speaker 04:
If you go on the board's website today, you'll see that they list this as a precedential decision.

[00:34:33] Speaker 04:
And in Yamaguchi, they went through an extended analysis as to why the logic of Wertheim wouldn't extend to a situation in which Congress has made the prior art reference a published patent application.

[00:34:50] Speaker 04:
So the logic of Wertheim talking about needing to be a butt for the delays of the patent office, you'd have a patent issue, just doesn't map on to

[00:35:01] Speaker 04:
prior art where there doesn't have to be issuance.

[00:35:04] Speaker 04:
We're talking about the unexamined claims of that reference.

[00:35:07] Speaker 04:
And so Yamaguchi had gone on in this presidential decision for page after page saying that the statutory requirement of Title 35 to publish 18 months after the filing date displaces in most cases applying the secret prior art rationale in Henry Wertheim.

[00:35:26] Speaker 04:
Even assuming that Wertheim's but for task remains viable for the narrow class

[00:35:31] Speaker 04:
of unpublished applications analogous to those at issue.

[00:35:34] Speaker 04:
In that case, applying more time to all other applications requires a strained reading of the statute in precedent to address a misplaced concern about secret prior art, a concern that simply no longer applies to these publicly available applications.

[00:35:51] Speaker 04:
So when dynamic drinkware was decided after the record had closed in this case, and when Illumina had never once, the entire time before the record,

[00:36:01] Speaker 04:
was arguing our position as to what had to be supported.

[00:36:05] Speaker 04:
You can see this in appendix 352 and 353.

[00:36:10] Speaker 04:
At that point, it's decided we have supplemental briefing on dynamic drinkware.

[00:36:16] Speaker 04:
And we make the point that under Yamaguchi and the board's other cases, it doesn't extend to this new contact.

[00:36:27] Speaker 04:
And then in addition, we point out this is not what they've been arguing the whole time.

[00:36:32] Speaker 04:
And we say specifically in there that had they argued it, we could have made this showing of support.

[00:36:40] Speaker 04:
The board then goes ahead in its final written decision and the first decision ever saying that notwithstanding Yamaguchi, notwithstanding Robbins, notwithstanding Senator Kyle's understanding of this, that we are going to

[00:36:57] Speaker 04:
say that the unexamined claims of a published patent application are the critical thing that needs to be supported here, even if the relevant disclosure, invalidating disclosure, has been carried over.

[00:37:13] Speaker 04:
Once they do that, we then come back to the board and say that, well, normally in these circumstances, when you have a new standard applied against you, you wouldn't have anything to point to, right?

[00:37:25] Speaker 04:
You'd be able to say, okay, you've applied a new

[00:37:27] Speaker 04:
reopen the record because we'd like to build a record under that new standard.

[00:37:34] Speaker 04:
In this case, it happened to be that some of the information from the reexaminations had been put into the record.

[00:37:40] Speaker 04:
And so on page 903 of the appendix, we asked the board to consider all of them.

[00:37:47] Speaker 04:
We said, as described in exhibits 2050 and 2053, all of the claims of FAN are supported under section 112

[00:37:56] Speaker 04:
by the 810 application, the board in fairness should consider that evidence.

[00:38:03] Speaker 04:
And then it was reiterated coming back in our reply in support of rehearing to say as well there that every claim of fan has section 112 support in the 810 application.

[00:38:18] Speaker 04:
Now within the limited pages of the rehearing petition, one example is plucked out of the

[00:38:25] Speaker 04:
The thrust of our argument was not we want you to consider one example.

[00:38:30] Speaker 04:
The thrust of our argument is, well, now that we have a rule that requires this trial within a trial, now that we're not talking about does the prior anticipate their claims, but we're talking about whether these entirely different unprosecuted claims in FAN are supported, we want you to reopen the record and consider the evidence with respect to all of those claims.

[00:38:53] Speaker 04:
because it would take just one of those claims being supported for that to be prior art for all that it teaches, as of its earliest effective priority date, which would include all it teaches, of course, what was incorporated by reference here.

[00:39:09] Speaker 04:
And so the board, even under an abusive discretion standard, it's an abuse of discretion to fail to address a critical argument like this.

[00:39:20] Speaker 04:
And so for the board not addressing that,

[00:39:22] Speaker 04:
We think that needs to be remanded.

[00:39:25] Speaker 04:
And if the way it was addressing it was by saying, no, no, this wasn't a new legal rule, then as we said, that bends back on Illumina.

[00:39:36] Speaker 04:
And I don't think that the nature of our argument was saying we're incorporating arguments by reference.

[00:39:43] Speaker 04:
We're saying there's evidence out there.

[00:39:45] Speaker 04:
We want you to reopen the record to consider that.

[00:39:49] Speaker 04:
I don't think that's a circumstance.

[00:39:51] Speaker 03:
And the evidence in question was exhibits 2050 and 2053?

[00:39:55] Speaker 03:
Correct.

[00:39:56] Speaker 03:
That's the body of evidence that pertains to this issue.

[00:39:59] Speaker 04:
That was the body of evidence that was already in the record that pertained to this issue.

[00:40:04] Speaker 04:
And certainly, the board, you have no ruling from the board.

[00:40:07] Speaker 04:
Amanda Channery, I don't think it's appropriate for this court to be substituting considerations about incorporation of arguments into rehearing petitions.

[00:40:17] Speaker 04:
That's not what the board said.

[00:40:18] Speaker 04:
It just addressed claim one and was silent.

[00:40:21] Speaker 04:
on all the others.

[00:40:23] Speaker 04:
As for the burden shifting, I think that there was discussion about the oral argument before the board.

[00:40:34] Speaker 04:
And it was pointing to appendix page 741.

[00:40:38] Speaker 04:
But if you look at that passage, that was the argument and the alternative.

[00:40:42] Speaker 04:
It says, even if they are entitled to these earlier dates,

[00:40:47] Speaker 04:
We have it earlier.

[00:40:48] Speaker 04:
But that doesn't wash away the arguments that have been made before in the papers and doesn't mean that it's open season to shift the burden of production on to us.

[00:41:00] Speaker 04:
We didn't need to say anything at all about their priority date in our petition for them to have to carry the burden of production if they wanted to show an earlier priority date.

[00:41:12] Speaker 03:
But at what point, if at all, did you challenge the September 2000 priority date?

[00:41:18] Speaker 04:
The September 2000 priority, once they said in their response that not doing an element by element analysis, but that they seem to be indicating that they were reaching back.

[00:41:32] Speaker 04:
Now, they never said reaching back to September 2000, but we're reaching back to a February 2001 application.

[00:41:41] Speaker 04:
Then we, in our reply to that, once the

[00:41:46] Speaker 04:
said, no, the disclosures that you're pointing to, you can only get back to August 2001 for that.

[00:41:55] Speaker 04:
And so we didn't have to say in our upfront paper, you're not entitled to the earliest thing you might claim until they had come forward and staked that earlier claim.

[00:42:08] Speaker 05:
OK.

[00:42:08] Speaker 05:
I thank all counsel for their arguments.

[00:42:10] Speaker 05:
The case is taken under submission.