[00:00:11] Speaker 02:
Our next case today, 2017-1101, Dell versus Acceleron.

[00:00:56] Speaker 02:
All right.

[00:00:57] Speaker 02:
Mr. Meek, am I saying that right?

[00:01:00] Speaker 03:
Yes.

[00:01:00] Speaker 02:
Very good.

[00:01:01] Speaker 02:
Please proceed.

[00:01:02] Speaker 03:
Thank you, Your Honor.

[00:01:03] Speaker 03:
May it please the Court.

[00:01:05] Speaker 03:
I'm Kevin Meek, and I represent Dell here today.

[00:01:07] Speaker 03:
I'd first like to address Dell's contention that the PTAB committed an error when it used a flawed procedure on remand from a decision of this Court and the first time through Dell v. Excellenon.

[00:01:20] Speaker 03:
We contend that it was an error for the PTAB to refuse to substantively address

[00:01:25] Speaker 03:
the merits of the evidence that it relied on in its first final written decision to invalidate the one claim at issue today, claim three of the 021 patent.

[00:01:35] Speaker 03:
This court instructed in its first Dell opinion that the PTAP should conduct further appropriate proceedings on remand, but we don't believe that ignoring previously considered evidence was an appropriate proceeding.

[00:01:48] Speaker 00:
But doesn't that remand order pretty much leave it up to the board as to how they're going to handle the proceeding?

[00:01:54] Speaker 00:
We're not telling them take evidence from this particular side or I mean basically the court said Conduct the proceeding not inconsistent with this.

[00:02:05] Speaker 03:
Yes.

[00:02:06] Speaker 03:
Yes, your honor I do believe that the the Dell versus Excel on first opinion gives the p-tab wide latitude however Since that time that opinion has been cited at least eight times to my knowledge And we do have some clarification and we believe that those cases have gone further

[00:02:23] Speaker 03:
than giving any sort of latitude.

[00:02:25] Speaker 02:
But I didn't see, along with Judge Reyna's question, I didn't see the board, and show me if I'm wrong, as having understood our prior decision to limit them, to not allow them to reconsider HIP if they wanted to.

[00:02:41] Speaker 02:
Do you believe that the board was under the misinterpretation that we were limiting them on remand and not allowing them to consider it?

[00:02:49] Speaker 03:
No, Your Honor.

[00:02:49] Speaker 03:
I am not saying that the opinion from this court

[00:02:53] Speaker 03:
gave an express limitation.

[00:02:55] Speaker 02:
What we are saying is... Or that the board understood themselves to be limited.

[00:02:58] Speaker 03:
Correct, Your Honor.

[00:02:59] Speaker 03:
I am not saying that the board was instructed or directed or compelled in any way by this court, this court's order to do that.

[00:03:07] Speaker 03:
What I am saying, though, is that the later decisions that have reacted to your opinion in Dell vs. Acceleron 1 have gone farther and said that it is good public policy, it is the correct procedure

[00:03:21] Speaker 03:
to not ignore evidence that is already before the board, and to go further and take additional evidence.

[00:03:26] Speaker 03:
So, Your Honor, no, I'm not saying that that opinion, by citing Ariosa, the permissive language in the last two columns of the opinion, it was very clear that the board had latitude.

[00:03:36] Speaker 03:
And it is our position that the board should have that latitude.

[00:03:40] Speaker 03:
The cases, though, I believe, divide into two groups.

[00:03:43] Speaker 03:
If the board

[00:03:44] Speaker 03:
decides to not consider new elements.

[00:03:47] Speaker 03:
So for example, a petitioner tries to put in new evidence or a new theory of patentability.

[00:03:53] Speaker 03:
We believe the board is fine ignoring that and going forward on a final written decision, which does not take into that in consideration.

[00:04:00] Speaker 03:
But in other cases, for example, the SAS case or the in-ray nuvasive cases, the board was able to take in new information.

[00:04:08] Speaker 03:
For example, in nuvasive, they pivoted to a new figure in one of the existing references.

[00:04:13] Speaker 03:
And in the SAS case,

[00:04:14] Speaker 03:
the board adopted a new claim construction on final written decisions.

[00:04:19] Speaker 03:
In those cases, this court said that the Dell versus Acceleron opinion, the first opinion, requires the board to go further and to take additional evidence.

[00:04:29] Speaker 01:
In SAS, the court had a situation in which it was the board adopting its own claim construction in its final written description, neither party arguing it.

[00:04:44] Speaker 01:
The general rules, the quite strict, you've got one shot at this each side, rules of the board weren't in play.

[00:04:55] Speaker 01:
We have a case here in which the rules that say you can't, even in the reply, let alone at the oral argument by inference or by implication, introduce some new fact.

[00:05:12] Speaker 01:
So we the board would have to do something that in SAS we wouldn't have to do, which is something like waive our normal rules.

[00:05:21] Speaker 01:
What did we say in NUVASIV?

[00:05:26] Speaker 03:
The reason I bring up SAS in NUVASIV is because I believe that we are on all fours with both the law, the policy and the law, but also on the facts.

[00:05:41] Speaker 03:
SAS Institute versus Compliments Soft, it's exactly what you said.

[00:05:44] Speaker 03:
There was very closely related constructions.

[00:05:46] Speaker 03:
They were different by just a few words.

[00:05:49] Speaker 03:
And then the board, in its final written decision, adopted something that was sort of down the middle.

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This court, by the way, said, in its opinion, that that was fine.

[00:05:58] Speaker 03:
There was nothing wrong for them to do that, and they should do that.

[00:06:01] Speaker 03:
So an in-ray nuvasive, somewhat different situation, but it's very similar to what happened in Dell versus Acceleron at the PTAB.

[00:06:08] Speaker 03:
In in-ray nuvasive,

[00:06:10] Speaker 03:
There was a reference, the Mickelson reference, was before.

[00:06:13] Speaker 03:
It was in evidence and record.

[00:06:15] Speaker 01:
Figures 18.

[00:06:16] Speaker 03:
Exactly.

[00:06:16] Speaker 03:
And they pivoted to figure 18.

[00:06:18] Speaker 03:
And they said, this is a better example.

[00:06:21] Speaker 03:
This happened very late in the game.

[00:06:23] Speaker 03:
But once again, this court said the PTAB should do that.

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They should explore that evidence.

[00:06:28] Speaker 03:
They should take their own materials.

[00:06:30] Speaker 03:
In the Dell versus Excelleron PTAB hearing.

[00:06:33] Speaker 01:
What was the language in Nubasive?

[00:06:36] Speaker 01:
Did it go beyond saying,

[00:06:40] Speaker 01:
What you cannot do is rely on that without adequate notice to new base of, I guess it was.

[00:06:48] Speaker 01:
And we therefore order you now to consider that with adequate notice or did on a matter that is obviously a balance of policies, efficiency versus completeness, as to which we don't get to make that choice, the agency,

[00:07:10] Speaker 01:
gets to make the choice, whether it's the PTO or individual board panels.

[00:07:15] Speaker 01:
What was the language at the end of it?

[00:07:18] Speaker 03:
I have one moment, Your Honor.

[00:07:24] Speaker 03:
There's actually we must, well, the board must, as you say, timely inform the pat note of the matters.

[00:07:38] Speaker 03:
And it must give the patent owner an opportunity for the submission to consider evasion of facts and arguments.

[00:07:43] Speaker 03:
And in doing that, they actually say.

[00:07:44] Speaker 02:
Where are you reading from, please?

[00:07:46] Speaker 02:
I have the MRA evasive opinion in front of me.

[00:07:48] Speaker 03:
Let me find the exact quote.

[00:07:52] Speaker 02:
That wasn't a quote you were reading?

[00:07:55] Speaker 03:
I need to.

[00:07:56] Speaker 03:
It is quoting the Dell versus Acceleron opinion.

[00:07:59] Speaker 03:
So it actually quotes the language

[00:08:04] Speaker 03:
The agency must timely inform the patent owner of the matters of fact and law asserted, must provide all interested parties opportunity for the submission and consideration of facts and arguments, and hearing and decision on notice, and must allow a party to submit rebuttal evidence as may be required for a full and true disclosure of the facts.

[00:08:24] Speaker 01:
But that's all the description of what went wrong, not a prescription for what must be done on remand.

[00:08:33] Speaker 01:
What went wrong is, and if you don't do that and you rely on stuff, that decision can't stand.

[00:08:41] Speaker 01:
Did it go further and say?

[00:08:43] Speaker 03:
No, you're wrong.

[00:08:45] Speaker 03:
I want to be fully upfront.

[00:08:47] Speaker 03:
I do not have a case.

[00:08:49] Speaker 01:
I get the policy point, but tell me why it's wrong to think

[00:08:55] Speaker 01:
It is obvious that there is an efficiency and expedition versus completeness trade-off.

[00:09:04] Speaker 01:
That's a trade-off that we don't get to make, that the PTO, whether it's the director or individual board panels, get to make.

[00:09:13] Speaker 01:
And so that's where this stands.

[00:09:16] Speaker 01:
The board made that choice here.

[00:09:19] Speaker 03:
Yep.

[00:09:21] Speaker 03:
Roughly agree with your characterization.

[00:09:23] Speaker 03:
And I am not here to say that this court has ever adopted a rule that prescribes any sort of weight waiting within that choice.

[00:09:32] Speaker 03:
I am here to ask you today.

[00:09:33] Speaker 03:
I think Dell versus Excelleron 1 was an interesting vanguard of the case in the sense that it was one of the first to come out and go back on remand.

[00:09:42] Speaker 03:
Since Dell versus Excelleron 1 has come out, I think that when the context is that the board is exploring new material,

[00:09:49] Speaker 03:
the right procedure in that balance that you're speaking of is to take additional material.

[00:09:54] Speaker 03:
I don't have any language of a case that this court has issued that says that they must.

[00:09:58] Speaker 03:
The closest comes is the SAS case when it instructs on page 97.

[00:10:03] Speaker 03:
Excuse me.

[00:10:04] Speaker 02:
But you started by saying when the board is considering new material, they must take evidence.

[00:10:09] Speaker 02:
But doesn't the board have the right to decide in the first instance whether it should consider new material at all?

[00:10:15] Speaker 03:
Yes, Your Honor.

[00:10:16] Speaker 03:
If I said must, I didn't.

[00:10:17] Speaker 02:
They aired in

[00:10:19] Speaker 02:
in considering new material in the last time this case was up in front of us, they aired, they considered a portion of the reference that had not been cited or ever articulated as disclosing caddies.

[00:10:32] Speaker 02:
It's up to them.

[00:10:32] Speaker 02:
If they had gone back and decided we're going to have a do over here and let you cite it, I probably would have been fine with that.

[00:10:40] Speaker 02:
They decided we're not going to let you have a do over.

[00:10:42] Speaker 02:
Why am I not probably fine with that also?

[00:10:44] Speaker 02:
Why would I ever put myself in the mess of

[00:10:48] Speaker 02:
taking over the lower tribunal's discretion to conduct its proceedings how it sees fit?

[00:10:55] Speaker 03:
Your Honour, I think that Judge Toronto said it correctly.

[00:10:59] Speaker 03:
I think there is a balance here.

[00:11:01] Speaker 02:
Why would I be the person to decide that balance as an appellate tribunal?

[00:11:06] Speaker 02:
Aren't I limited to did they abuse their discretion?

[00:11:09] Speaker 02:
Did they act arbitrarily and capriciously, which is an incredibly deferential standard?

[00:11:13] Speaker 02:
Isn't that the review standard I apply?

[00:11:16] Speaker 03:
Yes.

[00:11:16] Speaker 03:
Under the APA, it is an abuse of discretion standard.

[00:11:19] Speaker 03:
But in each of the cases that have cited Dell, the problems with the procedures that you've identified have been remanded.

[00:11:27] Speaker 03:
And so there has been guidance from the court on what to do.

[00:11:30] Speaker 03:
They have never said must, but they have said in the SAS decision that it was free to adopt a new construction.

[00:11:37] Speaker 03:
It was not error to adopt a new construction.

[00:11:39] Speaker 03:
And in the Ray Newvasive, this court specifically said that pivoting to the new portion of Mickelson was not error.

[00:11:46] Speaker 03:
And in the Genzyme versus BioMarin case, it said this court said at page.

[00:11:51] Speaker 02:
The fact that it wouldn't be erroneous for them to do something doesn't mean that we have the right to order them to do it in all circumstances.

[00:11:59] Speaker 03:
Your Honor, I don't.

[00:12:00] Speaker 03:
I think that that is an appropriate deference.

[00:12:05] Speaker 03:
But I believe that in the case where there has been a finding of invalidity, the claim was found invalid, a finding that has never been shown to be wrong, the public policy warrants a remand that adds to the record, that examines that information, to benefit the public in getting rid of invalid patents.

[00:12:26] Speaker 03:
I don't believe that this incumbents on the deference

[00:12:30] Speaker 03:
the processes of the PTAB are a problem.

[00:12:33] Speaker 03:
Otherwise, why is it in the case of SAS, this court said the board was free to adopt it, and in the remand, it said,

[00:12:45] Speaker 03:
take evidence on the new construction.

[00:12:47] Speaker 02:
Suppose that when I was on this case last time, I thought you should lose on the caddies point.

[00:12:51] Speaker 02:
Suppose that I evaluated the merits and thought you should lose.

[00:12:54] Speaker 02:
But at the end of the day, I ended up going along with an opinion that instead said it wasn't reached below.

[00:12:59] Speaker 02:
Why in the world would I want to force the board to go through a whole new additional process of evaluating this case on the merits?

[00:13:08] Speaker 02:
Why would I want to force them to do that when in fact it might've been wrong on the merits?

[00:13:12] Speaker 02:
Why would I force them as a matter of process?

[00:13:15] Speaker 02:
You're acting as though we have allowed an invalid claim.

[00:13:19] Speaker 02:
We rendered no decision on the validity of that claim.

[00:13:22] Speaker 02:
So you're acting as though we must tell them to do this because the claim has been adjudicated invalid, yet it actually hasn't been.

[00:13:29] Speaker 02:
So why in the world would I interfere with trial practice for the policy reason you're suggesting?

[00:13:34] Speaker 02:
And can't you just bring another IPR or anyone else bring another IPR and properly cite this portion of the reference?

[00:13:42] Speaker 03:
Your Honor.

[00:13:43] Speaker 02:
Couldn't the board even re-examine of its own accord?

[00:13:46] Speaker 02:
Sue Espante, the PTO could re-examine this patent on the basis of these records.

[00:13:51] Speaker 02:
Aren't there a million possible remedies short of me ordering the PTO to conduct its practice the way I think fit based on your belief that this claim is invalid?

[00:14:01] Speaker 03:
Your Honor.

[00:14:02] Speaker 03:
I don't disagree with any of that.

[00:14:05] Speaker 03:
I am arguing for a policy distinction where I believe that once evidence is in, and there has been a final written decision based on that evidence, that it makes more sense for the board to conduct a remand proceeding that takes that into account and makes the determination that you've asked for.

[00:14:24] Speaker 02:
It makes more sense, doesn't rise to the level of an abusive discretion.

[00:14:28] Speaker 02:
Even the way you frame it under the best of circumstances for you,

[00:14:31] Speaker 03:
You don't meet the standard that you have to face on appeal.

[00:14:49] Speaker 03:
fairly close to directions.

[00:14:51] Speaker 03:
And those were exactly the same facts in the sense that we had a new construction and we have a pivot to a new reference.

[00:14:57] Speaker 02:
I guess I just don't interpret those cases the way you do.

[00:15:00] Speaker 02:
I interpret those cases of providing the PTO with the options that it has available to it, but not any sort of mandate.

[00:15:07] Speaker 02:
And certainly, if they did provide a mandate, we would absolutely have an inconsistency here between the cases.

[00:15:12] Speaker 03:
I understand.

[00:15:13] Speaker 03:
I'm going to reserve some time.

[00:15:14] Speaker 02:
Thank you.

[00:15:15] Speaker 02:
Good plan.

[00:15:17] Speaker 02:
Mr. Crane?

[00:15:27] Speaker 04:
Thank you.

[00:15:27] Speaker 04:
May it please the court.

[00:15:29] Speaker 04:
I don't know that I can really add much to the discussion that has already ensued.

[00:15:35] Speaker 04:
I think that the court's opinion in the first instance, back to the PTAB, was absolutely correct, giving pinpoint precision to this court's Ariosa decision, that it was not directing the PTAB to take any new evidence or to conduct any additional briefing recognizing- But certainly it could have, correct?

[00:15:56] Speaker 02:
It could have.

[00:15:56] Speaker 02:
The PTO, the other cases, SAS and Nubasive, clearly allow the agency to go back and do that.

[00:16:03] Speaker 02:
So is there any reason to think the PTAB couldn't have done that?

[00:16:08] Speaker 04:
No, that's a great point.

[00:16:09] Speaker 04:
In fact, if the PTAB was going to continue to rely upon the evidence that was introduced for the first time at the oral argument, then I understand this court's first opinion to say that Acceleron was entitled to the opportunity to respond.

[00:16:23] Speaker 04:
So had the PTAB chosen

[00:16:25] Speaker 04:
to waive its rules.

[00:16:26] Speaker 04:
And it would have to go through a procedure for that, to waive its rules that say that you cannot bring new arguments at the new arguments in the oral argument, or even in the reply.

[00:16:37] Speaker 01:
Go through a procedure?

[00:16:40] Speaker 04:
Sorry?

[00:16:40] Speaker 01:
Go through a procedure?

[00:16:41] Speaker 01:
Couldn't it have said in the May remand order, we are going to waive our rules.

[00:16:50] Speaker 01:
Please address that little slide thing in the hip figure.

[00:16:54] Speaker 04:
And that's what I mean.

[00:16:55] Speaker 04:
It would have had to have given notice to Acceleron.

[00:16:57] Speaker 04:
They're just going to waive this rule.

[00:16:59] Speaker 04:
So the extent that Acceleron wants to take issue with that, it would at least have opportunity to raise that point just from a procedural basis.

[00:17:06] Speaker 04:
So Judge Moore, to answer your question, I believe the PTAP absolutely could have chosen to waive its rule, consider that information, and consistent with this court's first opinion,

[00:17:16] Speaker 02:
uh... it would have given excellent opportunity to respond and even if i believe that he has all of the policy exactly right that in a case like this where a cloud has been cast over this patent and its claims because there is at least an initial decision vacated not on the merits but only on procedural grounds an initial decision which invalidated these claims so there's clearly a cat cloud that will now follow this patent because you have a tribunal that invalidated them which was reversed

[00:17:44] Speaker 02:
not on the merits, but only on procedural grounds.

[00:17:47] Speaker 02:
So in light of that, isn't it in everyone's best interest, both the public's to know if this is in fact technology that's freely available, as well as even the patentee, so you don't end up in a walker process fraud claim, asserting claims you know to be invalid.

[00:18:02] Speaker 02:
What happens then?

[00:18:02] Speaker 02:
You're going to end up in a world hurt.

[00:18:05] Speaker 02:
Don't you want this resolved?

[00:18:07] Speaker 02:
I mean, isn't that in everybody's best interest?

[00:18:09] Speaker 02:
I know it's technically not.

[00:18:11] Speaker 02:
I get why your client wouldn't want it.

[00:18:14] Speaker 02:
But it's kind of hard for you to stand there and say that part, because it doesn't sound good.

[00:18:18] Speaker 02:
So isn't it in everybody's best interest from a policy perspective that the PTO, when they have actually invalidated something on the merits, and it's only a procedural issue like this, that they go back and open it back up?

[00:18:29] Speaker 04:
Well, I'm not sure that's the only policy involved here.

[00:18:31] Speaker 04:
I mean, to the extent that there is a procedural issue, we did address the substance of that when we were here the first time.

[00:18:38] Speaker 04:
So we do clearly disagree with the merits of that.

[00:18:42] Speaker 04:
But there's a competing policy too.

[00:18:43] Speaker 04:
Is it appropriate for a party to keep bringing up arguments after time and for them to continue to be considered?

[00:18:50] Speaker 04:
If that's the case, and if I'm a petitioner, I might continue to bring up arguments in my reply and even an oral argument in hopes that perhaps those arguments may be considered.

[00:19:00] Speaker 04:
And if they possibly have merit, if I didn't get it right in the petition, then maybe I'll bring it later.

[00:19:07] Speaker 04:
And if I have success, then there is an incentive to do that.

[00:19:10] Speaker 04:
And I think this court's

[00:19:12] Speaker 04:
I won't pronounce this right, Wasika case that came out the day after our brief was filed, I think speaks to this, that shifting arguments that come out.

[00:19:20] Speaker 04:
You know, there's a policy issue there that, you know, you shouldn't be a moving target.

[00:19:24] Speaker 04:
So I appreciate the concern.

[00:19:27] Speaker 04:
I mean, on the merits, Acceleron strongly disagrees with the merits of that issue and doesn't believe that there is, in fact, a cloud.

[00:19:35] Speaker 04:
And if that issue ever comes up, it will be addressed if this court sends it back, and then we'll certainly address it.

[00:19:40] Speaker 04:
But I do believe that there are valid, strong, competing policy concerns on the flip side of that.

[00:19:46] Speaker 02:
And couldn't it also be that perhaps when you alluded to this but didn't say it explicitly, couldn't the PTO have made a judgment in this case?

[00:19:54] Speaker 02:
They would have had access to your briefs.

[00:19:55] Speaker 02:
You did argue the Caddy's point on appeal on the merits in addition to arguing the procedural and propriety point of no notice.

[00:20:02] Speaker 02:
Couldn't the PTO have looked at all of that material and made an assessment?

[00:20:06] Speaker 02:
Well, we don't want to reopen this one for new evidence.

[00:20:09] Speaker 02:
You know what, we're not sure we got it right the first time in light of your response.

[00:20:13] Speaker 02:
Isn't it possible that they could have done something along those lines and that that would really be a reason why we should leave it to them to exercise the discretion?

[00:20:20] Speaker 04:
I think that's absolutely correct.

[00:20:21] Speaker 04:
I think they certainly could have done that.

[00:20:23] Speaker 04:
So I think that this court did not issue a mandate to really get involved.

[00:20:28] Speaker 04:
And I wrote it down.

[00:20:30] Speaker 04:
I think that there was a question from the court that essentially getting involved and this court putting itself in the shoes of the lower tribunal

[00:20:38] Speaker 04:
to direct his procedure.

[00:20:40] Speaker 04:
I think it makes more sense for that tribunal that knows its policies and is under its statutes and its goals to effectuate those to the best of its understanding of them.

[00:20:49] Speaker 04:
And if it gets them incorrect, well, then they come here.

[00:20:52] Speaker 04:
But that's not the role of this court to get involved in that.

[00:20:55] Speaker 04:
And otherwise telling it that, well, if there was an error that needs to be reversed or there was abuse of discretion, then in that instance, they would go back to the understanding of the

[00:21:05] Speaker 04:
or to the correctness of that court's understanding of its own procedures and rules.

[00:21:10] Speaker 04:
So I think we're in agreement on that.

[00:21:14] Speaker 04:
I think this court's area is a decision.

[00:21:16] Speaker 04:
It gives great guidance there as well.

[00:21:18] Speaker 04:
What this court said, we've talked about that.

[00:21:21] Speaker 04:
We've talked about the waiver.

[00:21:23] Speaker 04:
To that point, unless there's any further questions, I think that's... Okay.

[00:21:26] Speaker 02:
Thank you, Mr. Crane.

[00:21:27] Speaker 02:
Mr. Meek has some more bottle time.

[00:21:32] Speaker 02:
He only has 48 seconds left.

[00:21:33] Speaker 02:
Give me a few minutes.

[00:21:35] Speaker 03:
Thank you, Your Honor.

[00:21:38] Speaker 03:
I do think that it is true that this court has not given a compulsory direction to the PTAB in the past in this context.

[00:21:50] Speaker 03:
But I do think that it is inconsistent with the deference that is being argued by Acceleron, the language of the SAS case when this court stated

[00:22:02] Speaker 03:
the board to examine the construction in the first instance after hearing from the parties on the new construction.

[00:22:09] Speaker 03:
Does the PTAB have the ability, in view of that language, to not hear from the parties?

[00:22:16] Speaker 03:
Another example, the Rovalmo versus Bowler-Edstahl case, where it says at 1029, give the patent owner an opportunity for the submission and consideration of facts and arguments, and permit the patent owner to submit rebuttal evidence.

[00:22:30] Speaker 03:
Is that permissive?

[00:22:31] Speaker 03:
Yes.

[00:22:31] Speaker 03:
I think you probably could read it that way.

[00:22:33] Speaker 03:
But is it consistent that the PTAB would go forth and say, I am taking my authority and not giving the patent owner that opportunity?

[00:22:42] Speaker 03:
Finally, the context of the colloquy at the PTAB hearing involved me, Mr. Crane, and the panel.

[00:22:50] Speaker 03:
It was not a submission of new material, as in Waseca.

[00:22:53] Speaker 03:
Waseca was the attempt to provide new evidence.

[00:22:56] Speaker 03:
The submission, the colloquy involved

[00:22:59] Speaker 03:
one of the PTAB judges becoming uncomfortable with the application of a construction, it was his own idea.

[00:23:06] Speaker 01:
This was the original oral hearing?

[00:23:08] Speaker 03:
Yes, the original hearing, the original oral hearing.

[00:23:10] Speaker 03:
Judge Gianetti became uncomfortable with the construction of one of the terms and pivoted to a new portion of the reference because of his discomfort with the construction.

[00:23:19] Speaker 03:
We resisted that effort, but that was the basis of the first written decision.

[00:23:25] Speaker 03:
So it was not a public, the public policy of

[00:23:28] Speaker 03:
Making sure that I don't try to sneak something in was not in play.

[00:23:31] Speaker 01:
It was the public policy is not to prevent sneakiness.

[00:23:37] Speaker 01:
It's to prevent adverse results from lack of notice.

[00:23:39] Speaker 01:
It's focused on him, not on you.

[00:23:41] Speaker 03:
It is.

[00:23:42] Speaker 03:
And, but there, but I do believe the cases can be divided into Wasika where the petitioner tries to, after the, during the reply and after the reply, put in a new grounds of obviousness.

[00:23:51] Speaker 03:
versus allowing Judge Giannetti to do his job and pivot if he wants to, which this court in in re novasis said is OK.

[00:23:59] Speaker 03:
You said in in re novasis that that is permitted.

[00:24:01] Speaker 03:
And in the Genzyme case, you said the introduction of new material and new ideas and new evidence during the course of a trial is to be expected.

[00:24:09] Speaker 03:
So yes, the PTAB has not been ordered by this court to do it, but the language that you've given these

[00:24:15] Speaker 03:
these remands is pretty strong, and it would be unusual for them to ignore it.

[00:24:19] Speaker 03:
Thank you for your time today.

[00:24:20] Speaker 03:
I appreciate it.

[00:24:20] Speaker 02:
I thank both counsel.

[00:24:21] Speaker 02:
The case is taken under submission.