[00:00:18] Speaker ?:
Oh

[00:00:58] Speaker 05:
Next case is Luminaro Worldwide versus Yanku, 2017-16-29, Ms.

[00:01:06] Speaker 01:
Pelletier.

[00:01:11] Speaker 01:
I'd like to start with the 315B issue, if I may.

[00:01:14] Speaker 01:
315B contains no gap or ambiguity with respect to what triggers

[00:01:22] Speaker 03:
Doesn't your position create a real opportunity for manipulation by the patent holder who could file in the district court an infringement case and dismiss it without prejudice, which they're entitled to do under Rule 41, wait a year and file it again with the result that the accused infringer wouldn't be able to initiate an IPR?

[00:01:52] Speaker 01:
Your Honor, I think the legislative history shows that there was a balancing of interest.

[00:01:58] Speaker 03:
No, no, no, no, no.

[00:02:00] Speaker 03:
This is my question, not the legislature's.

[00:02:02] Speaker 03:
It's my question.

[00:02:03] Speaker 03:
Doesn't that create an opportunity for abuse?

[00:02:09] Speaker 01:
It could, Your Honor, create an opportunity for abuse.

[00:02:13] Speaker 01:
But the appropriate way to address such an abuse would be to bring it to the attention of Congress and allow Congress to decide whether or not 315 be as written

[00:02:22] Speaker 01:
needs to be amended in some way.

[00:02:26] Speaker 01:
As written, Your Honor, I think it reflects a balancing of the public, private, as well as institutional interests that Congress took into account when coming up with the precise language that was chosen.

[00:02:36] Speaker 01:
And the precise language that I think is most important here is the fact that Congress chose to trigger the bar off service of the complaint, not based on any downstream event in the litigation or contingency in the litigation.

[00:02:53] Speaker 01:
knowing that.

[00:02:54] Speaker 03:
How do you deal with the long line of cases that suggest that a dismissal without prejudice has the consequences as though the action were never commenced in the first place?

[00:03:06] Speaker 01:
I think the nullity line of cases depends on what purpose the nullity is.

[00:03:16] Speaker 01:
So in the case of

[00:03:18] Speaker 01:
the Graves and Bonneville decisions that I think the office has cited as support for this proposition, the question was whether it renders it a nullity for purposes of appellate jurisdiction or something else.

[00:03:30] Speaker 01:
Here, the complaint is not rendered a nullity for the purpose of service, which is the term that Congress used in 315B.

[00:03:37] Speaker 00:
Do I understand right at least the two cases of this court that used the nullity language

[00:03:45] Speaker 00:
If not all, then most of the other cases that are cited involve at least the following factual difference.

[00:03:52] Speaker 00:
And there's a question, obviously, whether there's a relevant difference.

[00:03:56] Speaker 00:
Our two cases and the others involve the situation where what is deemed a nullity is the filing of the piece of paper that initiates the tribunal proceeding.

[00:04:10] Speaker 00:
And if you drop that, then it just doesn't count and time may run out.

[00:04:15] Speaker 00:
We don't have that.

[00:04:16] Speaker 00:
We don't have a voluntarily dismissed IPR petition to initiate an IPR.

[00:04:23] Speaker 00:
We have a voluntarily dismissed triggering event that starts the clock.

[00:04:32] Speaker 00:
I don't recall that anybody has cited a case like that.

[00:04:39] Speaker 01:
I don't think so, Your Honor.

[00:04:40] Speaker 01:
What has been cited are cases where the legal fiction of whether

[00:04:45] Speaker 01:
It's as if the suit was never filed have either resulted in the clock not being triggered, but nothing that goes to whether service of the complaint, which would serve the notice function, would be negated by some later event in the course of the later proceeding.

[00:05:09] Speaker 01:
So to answer your question, I don't think there's been a case cited that sits squarely

[00:05:14] Speaker 01:
the fact pattern that you just mentioned.

[00:05:16] Speaker 00:
Well, what we have here, as I say, is not the withdrawal of a notice of appeal, the withdrawal of something that is required to take place within a certain period of time.

[00:05:26] Speaker 00:
It's some action that eliminates what the statute says is the clock starting event.

[00:05:33] Speaker 00:
And I don't think I've seen a case cited to us that involves

[00:05:40] Speaker 00:
nullification of a clock starting event.

[00:05:45] Speaker 01:
I agree.

[00:05:45] Speaker 03:
I don't think the office has cited a case that... I think there are cases about statute of limitations that address a clock starting event and hold that the filing of a complaint which is dismissed without prejudice doesn't have any effect on the statute of limitations.

[00:06:06] Speaker 01:
Whatever I think a lot of this goes to the existing legal backdrop against which Congress has legislated and what I what I would know because I do understand that to be the office's position.

[00:06:17] Speaker 01:
The canon of statutory construction that Congress legislated against a particular backdrop can't be used to.

[00:06:25] Speaker 01:
impose conditions or limits where the statute is clearly spoken to what those limits are.

[00:06:30] Speaker 00:
But if there were a general background legal understanding that in a situation like this, then probably that could easily be incorporated into it.

[00:06:44] Speaker 00:
I guess what I keep focusing on is whether there is such a general legal background principle for a situation like this.

[00:06:54] Speaker 01:
Your Honor, we would disagree that there's such a settled, universal, existing legal background in this situation.

[00:07:01] Speaker 01:
We explained in our brief that the cases relied upon by the officer are too attenuated in terms of their fact patterns to sit squarely to inform that.

[00:07:11] Speaker 01:
And we have also cited cases, including the Flowers decision, where it's not a nullity for purposes of triggering a statutory bar.

[00:07:18] Speaker 01:
So given sort of the diversity of fact patterns and consequences,

[00:07:23] Speaker 01:
It isn't reasonable to use these two cases as the basic backdrop against which Congress was.

[00:07:31] Speaker 00:
Besides the answer that you gave to Judge Dyke's question about the possibility of abuse, the answer, go to Congress.

[00:07:38] Speaker 00:
Is there any other comfort that you can offer about that?

[00:07:44] Speaker 01:
One comfort, perhaps, would be that it's

[00:07:48] Speaker 01:
There isn't a record here from the office or otherwise based on investigation that would tend to show that these types of abuses are either prevalent or a major policy concern.

[00:07:57] Speaker 01:
At this point, they remain on the record we have here to be hypothetical.

[00:08:02] Speaker 00:
In this case, the voluntary dismissal didn't occur, as I understand it, until the one-year period had actually run.

[00:08:11] Speaker 00:
That's correct.

[00:08:11] Speaker 00:
Between early December of 2012 to slightly more than a year December.

[00:08:17] Speaker 00:
2013, do you think that makes any difference?

[00:08:21] Speaker 00:
And by that time, presumably, whatever congressional purpose of making sure that the defendant understood what you were really claiming and therefore could shape an appropriate IPR petition, one year had elapsed and presumably that had been satisfied.

[00:08:38] Speaker 00:
Does that matter to this at all?

[00:08:40] Speaker 01:
I don't think it necessarily governs the statutory interpretation of the text itself, but as background to this case,

[00:08:47] Speaker 01:
That's correct, Your Honor.

[00:08:48] Speaker 01:
The district court litigation had been pending for over a year before the petitioner turned around and decided to exercise the IPR option.

[00:08:57] Speaker 00:
No, no, no.

[00:08:59] Speaker 00:
I think it was three years.

[00:09:02] Speaker 00:
They didn't do the IPR until 2015.

[00:09:04] Speaker 00:
Right, right.

[00:09:04] Speaker 00:
My point was there was service, and I'm going to make these up.

[00:09:07] Speaker 00:
December 5, 2012, voluntary dismissal wasn't until December 15, 2013.

[00:09:13] Speaker 00:
More than a year.

[00:09:14] Speaker 00:
The one-year clock of 315B had run.

[00:09:17] Speaker 01:
That's right.

[00:09:17] Speaker 00:
Does it matter for purposes of deciding this case, whether the one-year clock had run?

[00:09:22] Speaker 01:
I think it's important to ensure that the letter of the statute had been satisfied.

[00:09:32] Speaker 01:
And in this case, there's no dispute of fact that the petitioner, Leon, was served effectively and properly with a complaint alleging infringement over two years before deciding to

[00:09:44] Speaker 01:
and filing its petition for inter-parties review.

[00:09:47] Speaker 01:
So I think what is important is that there is no dispute in this case that the letter of 315B was satisfied.

[00:09:55] Speaker 05:
The question is before your time runs, why don't you talk about the obviousness issue?

[00:10:01] Speaker 01:
The merits, Your Honor?

[00:10:03] Speaker 01:
The merits.

[00:10:03] Speaker 01:
I'll turn to the merits.

[00:10:04] Speaker 01:
I'll spend about a minute or two just going over them briefly.

[00:10:08] Speaker 01:
Regarding claim four of the 319 patent, the hourglass shape

[00:10:12] Speaker 01:
pendulum is functional.

[00:10:13] Speaker 01:
It's not a mere design choice.

[00:10:15] Speaker 01:
And even if it was, the board's aesthetic rationale for modifying the base reference is unsupported and makes no sense.

[00:10:23] Speaker 05:
It's not a big difference, the hourglass shape from the prior op.

[00:10:28] Speaker 01:
But it is a difference, Your Honor.

[00:10:30] Speaker 01:
And it would require.

[00:10:31] Speaker 05:
Is it functional?

[00:10:33] Speaker 01:
It certainly is functional, Your Honor.

[00:10:34] Speaker 01:
The specification describes that the purpose of the shape is to control air resistance.

[00:10:41] Speaker 01:
that would otherwise damp the motion of the pendulum.

[00:10:43] Speaker 01:
So it is decidedly functional, Your Honor.

[00:10:46] Speaker 01:
And so to go from one shape in the prior art to a shape that's not in the prior art for functional reasons would not be a design choice.

[00:10:52] Speaker 01:
Regarding claim 14 of the 166 patent, this dependent claim requires more than a fitted whole support having only a single axis of rotation.

[00:11:02] Speaker 01:
As distinct from the independent claim 13, this requires an enlarged whole

[00:11:08] Speaker 01:
having a loose suspension, and that allows for additional types of motion, including non-rotational motion.

[00:11:14] Speaker 01:
And then finally, with respect to claim 34 of the 869 patent, the petitioner, Leon, never specified in its petition that the proposed combination was to remove the entire gimbal.

[00:11:26] Speaker 01:
And quite the opposite.

[00:11:28] Speaker 01:
Leon relied on the gimbal to teach an element in the very same claim.

[00:11:32] Speaker 01:
And that's element number C at appendix 1424,

[00:11:36] Speaker 01:
Failure to specify how the priority is being modified is a basic legal deficiency.

[00:11:42] Speaker 01:
The argument is not waived.

[00:11:43] Speaker 01:
Luminar raised it in its patent owner response.

[00:11:45] Speaker 01:
Leon replied to it in its petitioner reply, and the board decided that issue incorrectly in its final written decision at appendix 144 footnote 9.

[00:11:54] Speaker 01:
I see I'm into my rebuttal.

[00:11:55] Speaker 01:
I'd like to reserve it if I can.

[00:11:57] Speaker 04:
I will say before you, on this cell phone,

[00:12:07] Speaker 02:
May it please the court?

[00:12:10] Speaker 02:
In instituting inter-parties review of the 319 patent, the PTEP followed the approach of the courts that dismissal without prejudice leaves the parties in the situation they had been in had the complaint never been served.

[00:12:23] Speaker 00:
And I'd like to- Can I ask you, I mean, I think you understood from listening to my questions before, the cases that we decided and at least the other ones cited when there were a few that I think are completely irrelevant.

[00:12:37] Speaker 00:
They're all about the dismissal of the filing of the piece of paper that initiates the proceeding that is then later attempted to be re initiated where the filing of the piece of paper has to be within a clock.

[00:12:52] Speaker 00:
And the standard rule is you just ignore that.

[00:12:55] Speaker 00:
in deciding whether the later filing comes within the time.

[00:12:59] Speaker 00:
We don't have that.

[00:13:00] Speaker 00:
We don't have a voluntarily withdrawn IPR petition.

[00:13:04] Speaker 00:
We have a voluntary act that the issue is, does it eliminate the clock starting event?

[00:13:15] Speaker 00:
And I guess my question is, do you have any cases that involve that?

[00:13:19] Speaker 00:
I haven't seen any.

[00:13:21] Speaker 02:
So the cases that were cited, the cases that we cited

[00:13:25] Speaker 02:
were about the, like you said, the tolling of a statute of limitations.

[00:13:34] Speaker 02:
But they more broadly say that it renders that whole proceeding a nullity.

[00:13:41] Speaker 02:
And there are other cases.

[00:13:43] Speaker 02:
We cited one that talks about things that happened in that proceeding, like I think in that case it was a waiver of sovereign immunity.

[00:13:52] Speaker 00:
That was another case.

[00:13:54] Speaker 00:
What's that?

[00:13:56] Speaker 02:
I forget, but I know it involved sovereign immunity waiver by the government.

[00:14:03] Speaker 02:
And so the court held that what happened in that proceeding doesn't carry over.

[00:14:08] Speaker 02:
And there are other cases from other circuit courts that talk about, for example, issue preclusion can't apply because

[00:14:17] Speaker 00:
Nothing happened.

[00:14:18] Speaker 00:
There was no... Right, but that seems to me again a different kind of context because the question is what does without prejudice mean and without prejudice is connected to matters of preclusion.

[00:14:31] Speaker 00:
Right.

[00:14:31] Speaker 00:
I'm not sure how you get out of Rule 41 the idea that for purposes of a statute that says the following event starts a clock for you to do something, that event

[00:14:45] Speaker 00:
has occurred or has not occurred, but I don't see how Rule 41 erases the event for purposes of starting the clock logically.

[00:14:55] Speaker 00:
And that's not what's happening in the, as you say, the cases that involve something different that used language that may be broader than what they involve.

[00:15:06] Speaker 02:
Well, the statute of limitations is not dissimilar from that, where the starting of the clock is the

[00:15:14] Speaker 02:
event that happened, and then the clock stops when the initial complaint is filed.

[00:15:22] Speaker 02:
And then that is dismissed without prejudice, that the clock then is considered to have been going the entire time.

[00:15:32] Speaker 00:
And so it still- Because the starting event has not altered.

[00:15:37] Speaker 02:
The starting event, right.

[00:15:39] Speaker 02:
Because the case that was filed that was dismissed without prejudice has no effect.

[00:15:44] Speaker 02:
And so it's about that case having no effect.

[00:15:47] Speaker 02:
And that's where the only exceptions that Luminara has pointed to, and I point out that some of the cases that Luminara cites don't involve dismissal without prejudice.

[00:15:57] Speaker 02:
The only ones that involve dismissal without prejudice are either the situation where the particular statute or rule at issue explicitly talks about dismissal without prejudice, or

[00:16:11] Speaker 02:
where it's the court reopening the case itself to, for example, deal with Rule 11 sanctions or something that happened in that particular case.

[00:16:21] Speaker 02:
And that is very dissimilar from what's from any of these clock starting type cases, including the statutes of limitation and including a case like this, which I agree is not identical.

[00:16:35] Speaker 00:
The statute of limitations cases are not clock starting cases.

[00:16:39] Speaker 00:
They are clock stopping.

[00:16:42] Speaker 02:
Well, but they're but they're still about whether that case has any effect for the purposes of the clock and so that's the where there is this background principle and We haven't found any cases either that involve clock starting Precisely like this but that doesn't mean that the principle isn't broader than just stop that I mean you have

[00:17:09] Speaker 00:
quite extraordinarily plain and unambiguous statutory language.

[00:17:13] Speaker 00:
It seems to me to, to overcome that, you need to be able to point to, you know, reasonably strong, um, on point legal background to say, um, this is like that.

[00:17:27] Speaker 00:
And therefore you really ought to depart from the statutory language.

[00:17:30] Speaker 00:
And I guess I'm having trouble seeing the strength of that background when there's doesn't seem to be cited a situation

[00:17:37] Speaker 00:
that really maps onto this, just some broader language from different situations?

[00:17:42] Speaker 02:
Well, it's broader language that has been echoed by nearly all of the courts of appeals.

[00:17:48] Speaker 02:
So it's broad in one form of its scope.

[00:17:54] Speaker 02:
And the language is broad.

[00:17:57] Speaker 02:
And it is still about whether there is an effect to the earlier case that was filed or what happened in that earlier case, including

[00:18:08] Speaker 02:
whether there was service of process, including whether there was a waiver of sovereign immunity or things.

[00:18:14] Speaker 02:
There was another one involving the legal relationships between the parties for prevailing party purposes.

[00:18:22] Speaker 03:
I wonder if this situation has anything to do with the purpose of the one-year bar.

[00:18:28] Speaker 03:
Because typically, a dismissal without prejudice occurs very early.

[00:18:35] Speaker 03:
in the case and indeed under Rule 41 you only have a right to dismiss without prejudice before the answer is filed.

[00:18:44] Speaker 03:
And I would have thought that the purpose of the one year bar was to say that in situations where a lot of effort and energy and money had been expended in the original case that before the IPR petition was filed that we're not going to allow people to

[00:19:04] Speaker 03:
file the IPR when there's been such an investment in the district court case.

[00:19:08] Speaker 03:
That seems a rather unlikely scenario, a dismissal without prejudice, doesn't it?

[00:19:14] Speaker 02:
I think that's exactly right.

[00:19:15] Speaker 02:
That the purpose of the one-year bar is to make the accused infringer, at some point along the way, after they know the sort of lay of the land, pick a venue, and it's either

[00:19:34] Speaker 02:
in the district court to challenge the validity or in the IPR proceeding.

[00:19:39] Speaker 02:
And I fully agree with you, Judge Dyke, in the questions you were asking earlier about there is certainly room for gamesmanship if the rule is the opposite, where the patentee can go out and sue many possible infringers, drop all of those suits so nobody has to spend any money.

[00:20:02] Speaker 02:
and then start everybody's clock.

[00:20:06] Speaker 02:
And then once they're back in the position, as any other member of the public would be, they now have this clock running that nobody else has running.

[00:20:16] Speaker 02:
And that seems like a very viable way to game the system under the opposite interpretation.

[00:20:22] Speaker 05:
Ms.

[00:20:22] Speaker 05:
Silverman, let's get to obviousness.

[00:20:24] Speaker 05:
Looking at Claim 4, recites hourglass, and Schnuckel does not disclose an hourglass.

[00:20:34] Speaker 02:
Well, Your Honor, it recites an hourglass, particularly with a wider top and bottom and narrower middle.

[00:20:41] Speaker 02:
And Schnuckel does have a wider top and bottom and narrower middle.

[00:20:47] Speaker 02:
But to the extent that it requires tapering,

[00:20:51] Speaker 02:
as Luminara argues, that certainly would be an obvious design choice.

[00:20:56] Speaker 02:
And there's no question that the shape of an hourglass was known.

[00:21:03] Speaker 02:
And there's nothing also to show.

[00:21:09] Speaker 02:
So Luminara argues that it affects the air resistance.

[00:21:13] Speaker 02:
There's nothing about how it affects the air resistance.

[00:21:16] Speaker 05:
All that the specification says is... You don't have to know the mechanism.

[00:21:20] Speaker 05:
It is different.

[00:21:21] Speaker 02:
Well, it may.

[00:21:22] Speaker 05:
The opposing council has said it's functional.

[00:21:26] Speaker 05:
It makes a difference.

[00:21:27] Speaker 02:
Well, there's a chance that it affects the air resistance differently depending on whether the shape is tapered or not.

[00:21:34] Speaker 02:
But there's certainly nothing to indicate how that would be or why that would be.

[00:21:39] Speaker 03:
Was there any evidence about that in the record?

[00:21:42] Speaker 02:
No, there is no evidence about that in the record.

[00:21:45] Speaker 02:
And all that the patent

[00:21:51] Speaker 02:
specification says is that an irregular shape affects the air resistance beneficially.

[00:21:57] Speaker 02:
And so any irregular shape, including an hourglass or some other irregular shape, could be said to affect the air resistance beneficially.

[00:22:05] Speaker 02:
But there's just nothing that makes this particular shape that's drawn in one drawing limiting or the only one that can have this beneficial effect.

[00:22:21] Speaker 00:
I'm happy to talk about... Can I ask you a question back on 315?

[00:22:28] Speaker 00:
Does it or could it matter that in this case, unlike probably, as Judge Sykes says, the normal 41A voluntary dismissal, that more than a year elapsed and presumably at least some serious work was done in the litigation before the voluntary dismissal of this stipulation?

[00:22:51] Speaker 02:
It doesn't matter, because the way the statute is written, the board is looking at the situation at the moment it is deciding whether or not to institute.

[00:23:02] Speaker 02:
And at that moment, the board knows whether or not a complaint has been dismissed without prejudice or not.

[00:23:11] Speaker 02:
So what happened before, if that proceeding has now been effectively wiped out,

[00:23:20] Speaker 02:
It doesn't matter how long that proceeding was pending before.

[00:23:25] Speaker 03:
What happened in this case in the district court before the dismissal of charges?

[00:23:31] Speaker 02:
It was not a lot.

[00:23:32] Speaker 02:
Right before the dismissal, I think it was a few months, maybe two months or something before the dismissal without prejudice, there was an amended complaint filed.

[00:23:42] Speaker 02:
No amended response or no amended answer had been filed.

[00:23:47] Speaker 02:
And none of the discovery deadlines or

[00:23:51] Speaker 02:
motions deadlines had even come close.

[00:23:55] Speaker 00:
So it was pending for... There was a motion to dismiss for lack of jurisdiction.

[00:24:00] Speaker 02:
I forget that... In July of 2013?

[00:24:04] Speaker 02:
In July of 2013.

[00:24:05] Speaker 00:
I forget the precise... A couple of answers and a couple of amended complaints.

[00:24:10] Speaker 02:
There were.

[00:24:10] Speaker 02:
And then after an amended complaint, and there was still a pretty long calendar before anything substantive was due,

[00:24:21] Speaker 02:
was when the dismissal happened.

[00:24:23] Speaker 02:
And it was slightly more than a year after it had been filed.

[00:24:28] Speaker 02:
But like I said, it sort of gets washed out regardless of how long it was pending, because it was dismissed without prejudice.

[00:24:36] Speaker 02:
And everybody is then back in the position of, so the alleged infringer is back in the position of potentially being on the hook for infringement, but potentially not, just like any other member of the public who could also file

[00:24:50] Speaker 02:
an IPR petition.

[00:24:52] Speaker 00:
What do you do with one line of Supreme Court cases?

[00:24:57] Speaker 00:
This is kind of general statutory interpretation of which a recent one is the cyan decision that says, when the language of the statute is quite clear, we just are not going to look at broader arguments about what the purpose really must be.

[00:25:14] Speaker 02:
I mean, we think that the statute is actually clear that it

[00:25:20] Speaker 02:
It includes, because Congress legislates against the backdrop of existing case law, and there is this existing case law, the statute is actually intended to include that backdrop, which says that the dismissed without prejudice proceeding is null.

[00:25:42] Speaker 02:
So even if the word seems clear on its face, given this backdrop, it then is interpreted

[00:25:50] Speaker 02:
in light of that.

[00:25:52] Speaker 02:
And so certainly, if it were clear and there were no case law, then there's no ambiguity to decipher.

[00:26:04] Speaker 02:
But it seems like here, it's either clear or to the extent that there's any ambiguity, it was certainly reasonable to interpret the statute that way.

[00:26:16] Speaker 05:
Thank you, counsel.

[00:26:18] Speaker 02:
Thank you.

[00:26:18] Speaker 05:
Ms.

[00:26:19] Speaker 05:
Pelletier has some rebuttal time.

[00:26:26] Speaker 01:
Thank you.

[00:26:27] Speaker 01:
Your Honors, just to pick up on what Judge Toronto just said in terms of the statute being clear, it's not reasonable to infer that Congress overlooked or simply forgot to address the effect of dismissal in 315B because if we look to the context of 315 as a whole,

[00:26:44] Speaker 01:
we see that Congress expressly dealt with the effect of dismissal in 315A2C.

[00:26:48] Speaker 01:
3152A2 involves the effect of a co-pending declaratory judgment action and the automatic stay thereof.

[00:27:01] Speaker 01:
And in subsection C, Congress said the effect of dismissal will be to lift the automatic stay.

[00:27:06] Speaker 01:
So read in context, it's not reasonable to infer that Congress was simply overlooked

[00:27:12] Speaker 01:
the contingency of dismissal in the context of 315b, it spoke clearly to what would trigger the bar.

[00:27:18] Speaker 01:
And as a secondary point to that, the existing law canon can't be used to place additional conditions or exceptions on clear statutory text that would effectively allow the office to arrogate to itself the authority to conduct inter-parties review, where Congress has expressly limited

[00:27:40] Speaker 01:
the availability of inter-parties review.

[00:27:42] Speaker 00:
But you don't deny the possibility of the scenario that Ms.

[00:27:47] Speaker 00:
Silfin recited of a patent owner filing, let me say, against all likely challengers, suits and then voluntarily dismissing them and forcing them to go to the board with an IPR within a year, even if it doesn't at that moment seem remotely worth it.

[00:28:10] Speaker 01:
Your Honor, I don't dispute that that is a possible scenario, but there are counterfactual scenarios that cut the other way against patent owners, one of which we mentioned in our brief at page 25 of our opening brief.

[00:28:23] Speaker 01:
A petition that's denied institution is time barred under 315B because the petitioner filed more than one year after being served with a complaint in an ongoing infringement action.

[00:28:32] Speaker 01:
That suit gets dismissed, and then the petitioner is able to circumvent the statute by refiling their petition using

[00:28:39] Speaker 01:
voluntary dismissal as a tool to turn 315B off and on.

[00:28:45] Speaker 01:
The ability to circumvent the statute cuts both ways and Congress has... Can you say that again?

[00:28:50] Speaker 00:
What's the problematic scenario?

[00:28:52] Speaker 01:
The problematic scenario would be that a barred petitioner, where one year has already elapsed, files a petition, the petition is denied, and then the suit that would have triggered the time bar is subsequently dismissed.

[00:29:08] Speaker 01:
That would allow the petitioner to treat the existing suit as a nullity and then go back and file the petition again, even though they would have been barred by statute otherwise.

[00:29:20] Speaker 01:
There are other scenarios.

[00:29:22] Speaker 01:
There's possibility for gameship, but it only underscores the fact that Congress did balance a number of interests on either sides of the equation and arrived at the language that they decided on.

[00:29:34] Speaker 01:
To go back to the merits, Judge Laurie, there is evidence in the record, both in the specification, that the pendulum shape is functional.

[00:29:43] Speaker 01:
That's in the specification in column, which appears at appendix 213, column 8, lines 40 to 46.

[00:29:53] Speaker 01:
And I think there has been some discussion about it already.

[00:29:56] Speaker 01:
But air resistance is controlled using a more irregular shape.

[00:30:00] Speaker 01:
such as an hourglass shape.

[00:30:02] Speaker 01:
An hourglass shape is specifically identified as a shape that would have the functional advantage of controlling air resistance.

[00:30:09] Speaker 01:
And there is also evidence in the record from the patent owner's expert at appendix 3505 to 3506 addressing why the shapes and schnuckle would not have the same functional advantages as the claimed pendulum.

[00:30:29] Speaker 01:
unless there are further questions.

[00:30:33] Speaker 05:
Thank you, counsel.

[00:30:33] Speaker 05:
We'll take the case under advisement.