[00:00:00] Speaker 02:
Morning of 17-1341, Sarona Dental Systems versus Stroman.

[00:00:06] Speaker 02:
Mr. Oliver, we're ready.

[00:00:14] Speaker 04:
Good morning, and may it please the Court, I'd like to reserve three minutes for a bottle of time.

[00:00:20] Speaker 04:
This case exemplifies the type of board action that this Court rejected in Magnum Oil and further admonished against in aqua products.

[00:00:28] Speaker 04:
Namely, the board set aside failures by the petitioners and put the burden on the patent owner to disprove theories of unpatentability.

[00:00:36] Speaker 02:
Well, that likely seems evident with regard to the motions to amend.

[00:00:42] Speaker 02:
But where is it with regard to the main appeal?

[00:00:44] Speaker 04:
With respect to the main appeal, the primary issue with respect to the independent claims is that the petitioner's original theory is that Banisher, the primary reference, described a

[00:00:57] Speaker 04:
a recording sheet, which the petitioner's declarant said was some sort of data structure or algorithm that input surface structure.

[00:01:05] Speaker 04:
The problem is the recording sheet was a mistranslation of the original German reference.

[00:01:10] Speaker 04:
The correct translation is recording bow.

[00:01:13] Speaker 04:
It is undisputed that the translation was incorrect.

[00:01:16] Speaker 04:
It is also undisputed that the correct translation, recording bow, is an instrument that cannot measure visible surface structures or any surface structures.

[00:01:25] Speaker 04:
It is an instrument that measures joint information, namely articulation movements or spatial relationships, not the actual surface structures of the gel.

[00:01:34] Speaker 04:
That is also undisputed.

[00:01:36] Speaker 04:
Once that theory was put aside and what was relied upon in the original petition was found not to be able to perform the actual function of the claim, namely making a three-dimensional optical measurement of the visible surface structures of the jaw and teeth, then the actual ground fails.

[00:01:53] Speaker 04:
The petitioner has not met its burden.

[00:01:56] Speaker 00:
Well, if that's not true, in other cases like in Renovative,

[00:02:00] Speaker 00:
We have held that as long as the patentee has noticed, you can look at other portions of the same reference to find the same disclosure, even if the petition may have gotten the location of the disclosure wrong or written it too narrowly in the petition, so long as there's notice to the patentee.

[00:02:17] Speaker 00:
Are you suggesting you weren't on notice?

[00:02:19] Speaker 04:
That's correct, Your Honor.

[00:02:20] Speaker 04:
We were not on notice for several reasons.

[00:02:22] Speaker 04:
First of all, what was relied upon was a recording bow.

[00:02:26] Speaker 04:
That cannot perform the structure.

[00:02:28] Speaker 04:
The petitioner's own declarant was asked during the deposition what he was relying upon.

[00:02:33] Speaker 04:
And he said he was relying on a recording sheet and stated, the recording sheet would... Yes, he said that.

[00:02:37] Speaker 00:
But then, I guess, Banisher's other disclosure is a 3D model geometry of the jaw input into a computer, right?

[00:02:45] Speaker 04:
Correct, Your Honor.

[00:02:46] Speaker 04:
We do not dispute that.

[00:02:47] Speaker 04:
The issue here is what the 3D model geometry is.

[00:02:50] Speaker 04:
Now, that's not a very good translation.

[00:02:52] Speaker 04:
It's kind of awkward.

[00:02:53] Speaker 04:
But what the 3D model geometry is, a model of the jaw.

[00:02:57] Speaker 04:
And specifically, it says it's a model of the jaw region.

[00:03:01] Speaker 04:
The model of the jaw region is used by the articulator and the recording boat to measure movement.

[00:03:06] Speaker 04:
It is not geometry data.

[00:03:09] Speaker 04:
The actual three-dimensional model geometry described in Bannisher is described as being swiveled, as being arranged, as being mounted.

[00:03:17] Speaker 04:
That is not data.

[00:03:18] Speaker 04:
That is an actual thing.

[00:03:20] Speaker 00:
I don't know.

[00:03:20] Speaker 00:
At column 8, lines 23 to 29 of the patent, the plaster models are formed from impressions.

[00:03:25] Speaker 00:
of the teeth and jaw, and thus are measurements of, and I'm quoting from that section, the visible surface of the jaw and the teeth.

[00:03:32] Speaker 00:
Why isn't that good enough, or at least substantial evidence for the fact-finding?

[00:03:36] Speaker 04:
I'm sorry, you were at column 8 at?

[00:03:39] Speaker 04:
23 to 29.

[00:03:40] Speaker 04:
There is an impression that's taken.

[00:03:45] Speaker 04:
That's always done in the prior art.

[00:03:47] Speaker 04:
When you make one of these models, you take an impression of the teeth.

[00:03:50] Speaker 00:
Yes, but how can I conclude that's not substantial evidence for the board fact-finding that these are measurements of the visible surfaces of the jaw and teeth?

[00:03:58] Speaker 04:
Because it's an impression.

[00:03:59] Speaker 04:
It is a physical impression.

[00:04:00] Speaker 04:
And then if you read down further, it describes how it's being input and what's being input.

[00:04:05] Speaker 04:
It is being input using a recording bow, and a recording bow simply cannot input surface structures.

[00:04:10] Speaker 04:
Furthermore, if we look at Banisher as a whole as to what it's teaching, not just that section,

[00:04:15] Speaker 04:
Banisher makes clear that its invention is directed at this very idea of inputting articulation data.

[00:04:21] Speaker 04:
Specifically, Banisher states when it discusses the method according to the invention, movements of the jaw joint that are known but could not hitherto be simulated, namely articulation movements, can be made visible in three dimensions.

[00:04:35] Speaker 04:
What Banisher describes as a whole is inputting articulation information.

[00:04:40] Speaker 04:
There is a model created, and we can see on pages

[00:04:43] Speaker 04:
18 and 19 are brief, what these articulators and recording bows look like.

[00:04:47] Speaker 04:
There's nothing in those devices that can measure surface structures.

[00:04:51] Speaker 04:
Yes, there is an impression.

[00:04:52] Speaker 04:
Yes, there is a model made.

[00:04:53] Speaker 04:
But the question is then, what is input from that model?

[00:04:57] Speaker 04:
And the only thing Banisher describes as its invention is inputting articulation information.

[00:05:02] Speaker 04:
The only instrument it describes for inputting is a recording bow, which can only input articulation information.

[00:05:08] Speaker 00:
I don't understand.

[00:05:08] Speaker 00:
It describes inputting the three-dimensional plaster models into the computer.

[00:05:13] Speaker 00:
I don't think that's just the articulation data.

[00:05:16] Speaker 04:
Well, it states later what is how that's done.

[00:05:18] Speaker 00:
Even, by the way, whether I think it or not is irrelevant because it's a substantial evidence question for the board.

[00:05:23] Speaker 00:
I mean, if the board found that it did, I don't see how column 8, line 36 to 39, column 8, line 23 to 29 don't support that fact finding, whether I agree with it or not is irrelevant.

[00:05:36] Speaker 04:
Well, Your Honor, I would point you again to that same section.

[00:05:38] Speaker 04:
It says the plaster models thus are transferred from the patient's head into a three-dimensional relationship into a skull-based simulator using a recording sheet.

[00:05:46] Speaker 04:
So the instrument they're describing for inputting the model, it's a model of movement.

[00:05:50] Speaker 04:
It's a model that measures movement, and it is certainly being input, but the question is what data is being input.

[00:05:58] Speaker 04:
You can think about this as a movement model as if you're to watch a sporting event where you have a

[00:06:04] Speaker 04:
a golf ball or a football or a baseball, and they show the path of movement.

[00:06:09] Speaker 04:
There's that little yellow trail behind the ball.

[00:06:11] Speaker 04:
That shows information concerning the ball, but it's the trajectory of the ball, not the surface structure.

[00:06:17] Speaker 01:
What about the sentence that bridges columns eight and nine in the reference that talks about the supporting zones to be replaced are marked by static measuring points or occlusion reliefs of the teeth?

[00:06:31] Speaker 04:
Certainly.

[00:06:31] Speaker 04:
First of all, that wasn't addressed by the Petitioner's

[00:06:34] Speaker 04:
Moreover, when the petitioner's deklarin was asked about that, he specifically said that the supporting zones to be replaced refer to marking done with radio opaque markers and that the supporting zones are for supporting the implant indicating the available vertical bone supply.

[00:06:54] Speaker 04:
What is important about that sentence is it just talks about the supporting zones to be replaced, meaning things to be replaced.

[00:07:01] Speaker 04:
Now, the petitioner's deklarin took the position and that means the bone structure.

[00:07:04] Speaker 04:
Our deklarant took the position that in a recording boat, what you're measuring and what you're trying to do is put in a replacement tooth, a restoration.

[00:07:14] Speaker 04:
And when you do that, you actually have to make a new restoration or false tooth.

[00:07:18] Speaker 04:
And you do have information concerning the replacement tooth.

[00:07:22] Speaker 04:
But that is not a visible surface structure measurement of the actual teeth in the patient.

[00:07:26] Speaker 04:
That is a measurement of the tooth to be replaced.

[00:07:30] Speaker 01:
What you just described, though, sounded like

[00:07:33] Speaker 01:
It was, you know, here's what one expert said, here's what another expert said.

[00:07:37] Speaker 01:
So why would it be unreasonable for a fact finder to rely on the first expert's declaration?

[00:07:44] Speaker 04:
Well, certainly.

[00:07:44] Speaker 04:
And maybe I need to be a little bit more clear.

[00:07:46] Speaker 04:
Neither declarant took the interpretation that the board took.

[00:07:50] Speaker 04:
The petitioner's declarant took the position that that sentence, which says supporting zones to be replaced, was referring to the underlying bone structure.

[00:08:00] Speaker 04:
Underlying bone structure is not a measurement of visible surface structures.

[00:08:04] Speaker 04:
So if we take that petition review, then the supporting zones to be replaced are underlying bone structure.

[00:08:10] Speaker 04:
And according to his statement, they would be marked with radio opaque markers.

[00:08:15] Speaker 04:
And that's in the appendix at 1788 and 1789.

[00:08:17] Speaker 04:
I'm sorry, please finish.

[00:08:21] Speaker 04:
So under one declarance theory, this is measuring underlying bone structure, not a visible surface structure measurement.

[00:08:27] Speaker 04:
Under the other declarant's testimony, it would be the tooth to be replaced.

[00:08:32] Speaker 04:
And that is in the record at 1491 paragraph 141.

[00:08:41] Speaker 04:
So what the board did is take a new theory that this must be a measurement of the other teeth, not the replacement tooth and not of the bone, putting aside both the petitioner's declarant's testimony and our declarant's testimony.

[00:08:53] Speaker 04:
And that is not based on the substantial evidence from either of the parties.

[00:08:57] Speaker 04:
That is a completely new theory, and one of which we had no notice of prior to the final written decision.

[00:09:02] Speaker 00:
OK, that's perfect, because that's where I wanted to segue.

[00:09:05] Speaker 00:
You say you had no notice of it, but the petition itself actually expressly cites column 8, line 36 to 39, as supplying this element.

[00:09:13] Speaker 00:
And that is, unequivocally, the input of the 3D model of the jaw.

[00:09:18] Speaker 00:
So whether substantial evidence supports an understanding of what that model is or not is a different question from whether you had notice of it.

[00:09:26] Speaker 00:
This petition expressly pointed to that exact disclosure in the specification.

[00:09:32] Speaker 00:
Why weren't you on notice?

[00:09:33] Speaker 04:
For two reasons, Your Honor.

[00:09:34] Speaker 04:
First of all, they describe that the way that that is input is using a recording sheet.

[00:09:40] Speaker 04:
Their mistake was they believe the model was being input.

[00:09:43] Speaker 04:
We don't disagree that model information was being input.

[00:09:46] Speaker 04:
The question is what information?

[00:09:48] Speaker 04:
And the instrument they relied on is one that cannot measure surface structure.

[00:09:51] Speaker 04:
We asked the petitioner's declarant during his deposition what he was relying on, and he said it's the recording sheet, and he believed that was an algorithm.

[00:09:58] Speaker 04:
That turned out to be wrong.

[00:10:00] Speaker 04:
So we asked him what his theory was.

[00:10:02] Speaker 04:
He told it was this recording sheet.

[00:10:05] Speaker 04:
We proved that the recording sheet can't possibly do what he says it's doing.

[00:10:09] Speaker 04:
Therefore, despite citing to that section, the actual instrument they're relying on for what information is being input was incorrect.

[00:10:17] Speaker 04:
It's not a question of whether or not information is input.

[00:10:20] Speaker 04:
and whether or not information from the model is input.

[00:10:23] Speaker 04:
The question is what the information was.

[00:10:25] Speaker 04:
And we proved that the information was articulation, not surface structure, based on the actual testimony in the petitioner's declarant and his own testimony during deposition.

[00:10:35] Speaker 04:
Therefore, we relied on what the petitioner's declarant told us.

[00:10:40] Speaker 04:
That turned out to be false.

[00:10:41] Speaker 04:
We proved that it was false.

[00:10:42] Speaker 04:
There's no dispute that it's false.

[00:10:44] Speaker 04:
Now, in the final written decision, there is a new theory that, and I'll point out, the board says,

[00:10:51] Speaker 04:
And I quote, patent owners' argument concerning banishers' use of a recording bow to record articulation movements of a patient's jaw is not relevant to our analysis.

[00:11:01] Speaker 04:
But what the petitioner's own declarant and the petitioner argued as far as the basis for unpatentability must always be relevant to the analysis.

[00:11:10] Speaker 04:
We established why that analysis was incorrect and what they believe was being input was incorrect.

[00:11:15] Speaker 04:
That should end the inquiry, but it didn't.

[00:11:19] Speaker 00:
problem I'm having is with your notice argument.

[00:11:23] Speaker 00:
So I understood the board to say, even if the recording bow inputs only articulation data, even if that's correct and that that portion of the patent, the challenger, the petitioner's challenge is incorrect, they then found that nonetheless, the portion of Vanisher, which inputs the three-dimensional plaster model into the computer, nonetheless applies the element.

[00:11:45] Speaker 00:
They expressly cited column 8, line 36 through 39,

[00:11:48] Speaker 00:
that exact citation is in the petitioner's petition.

[00:11:52] Speaker 00:
Now they may have, they pointed the board to the exact sentence the board says discloses it.

[00:11:58] Speaker 00:
They may have misunderstood how it operated, but the board as a factual matter found it nonetheless disclosed the element.

[00:12:04] Speaker 00:
I'm having trouble concluding why you haven't had APA notice given that it's the exact same sentence in the petition that they pointed to.

[00:12:12] Speaker 00:
They may have made some mistakes in articulating

[00:12:15] Speaker 00:
how it operated, but the board found it, regardless of the mistakes they made, it nonetheless supplies the missing element.

[00:12:21] Speaker 04:
Certainly, Your Honor.

[00:12:22] Speaker 04:
I think the issue here is not what was being cited to.

[00:12:24] Speaker 04:
You can cite to anything in reference.

[00:12:26] Speaker 00:
The question is... This is a single sentence.

[00:12:28] Speaker 04:
Oh, I know it's well.

[00:12:29] Speaker 04:
It's also referring to the recording sheet and how it's input.

[00:12:33] Speaker 04:
The question is how that sentence is interpreted.

[00:12:35] Speaker 04:
And the interpretation that we were looking at is the interpretation that they put forward as far as what is being input and how it's

[00:12:43] Speaker 04:
And the interpretation of that citation is what we proved was incorrect.

[00:12:47] Speaker 04:
Now that there's a new interpretation of, regardless of the actual instrument that's described in this section not being able to perform the function, we believe the function is still being performed.

[00:12:57] Speaker 04:
And the question is, what analysis has been offered by the petitioner that that function is being performed when the very thing they relied on cannot perform the function?

[00:13:05] Speaker 04:
I don't disagree that the citation was made, but it's the analysis of the citation that is incorrect.

[00:13:10] Speaker 04:
and the new interpretation of the citation that we did not have notice of.

[00:13:15] Speaker 02:
Your interior rebuttal.

[00:13:16] Speaker 02:
So why don't we hear from the other side.

[00:13:18] Speaker 04:
Thank you, Your Honor.

[00:13:29] Speaker 03:
Good morning, Your Honor.

[00:13:30] Speaker 03:
May it please the Court.

[00:13:32] Speaker 03:
Substantial evidence supports the decision of the Board that at least claims one through eight

[00:13:38] Speaker 03:
are unpatentable on the basis of banisher.

[00:13:41] Speaker 00:
I'd instead like to turn you though to the substitute claims.

[00:13:45] Speaker 00:
I was surprised when your 28 jail letter bringing aqua products to the court's attention suggested that there was no need to vacate and remand here despite the fact that the board has clearly put the burden on the wrong party.

[00:13:58] Speaker 00:
So I'd like you to explain to me why it is so that we should not vacate and remand as we've done in every other case

[00:14:08] Speaker 00:
where the board has articulated the burden wrong, why this case should be treated as an exception post-Aqua products?

[00:14:15] Speaker 03:
If I may, Your Honor, I would like to at least give that a try.

[00:14:18] Speaker 03:
So, in Aqua products... Your answer recognizes... Well, in Aqua products, the courts left open the question of whether the board may, on its own, sua sponte, raise patentability challenges to substitute claims.

[00:14:37] Speaker 03:
That question was left open.

[00:14:39] Speaker 03:
We submit that there are very good reasons that the board ought to be permitted to review the patentability of such claims when they haven't been.

[00:14:48] Speaker 00:
But that's a separate question.

[00:14:52] Speaker 00:
There's two questions, right?

[00:14:54] Speaker 00:
The first question is, who has the burden?

[00:14:57] Speaker 00:
The second question is, is the board permitted to go beyond the grounds articulated by the petitioner

[00:15:04] Speaker 00:
combined references that were definitely part of the IPR record in whole, but in a manner that wasn't.

[00:15:10] Speaker 00:
That's the question left open in aqua products.

[00:15:12] Speaker 00:
Completely agree with you.

[00:15:13] Speaker 00:
But that's different from my question to you, which is the board put the burden of proving all of this on the wrong person and in multiple places expressed that and said the patentee didn't meet its burden of proving patentability.

[00:15:27] Speaker 00:
Why isn't that a straightforward vacate and remand?

[00:15:31] Speaker 03:
did, as Your Honor suggests, it placed the burden on the patent owner.

[00:15:36] Speaker 03:
But it then went beyond the burdens in finding the very specific facts that rendered Substitute Claim 11 unpatentable.

[00:15:47] Speaker 03:
So once Your Honor adds

[00:16:05] Speaker 03:
The analysis, the entire analysis is at 48 through 55 where the board on its own concludes that the subject matter of substitute claim 11 is obvious based on the combination of banisher and troop in view of Klein and Poirier.

[00:16:26] Speaker 03:
Now to be sure, the board did express that it was the patent owner's burden because that was the law at the time.

[00:16:34] Speaker 03:
And for example, at page 54, the board finds that certain facts are in equipoise, that the patent owner is arguing one contention and the petitioner another.

[00:16:52] Speaker 03:
And the board also identified that it was placing a burden on the patent owner.

[00:16:59] Speaker 03:
But in the end, the board did its own independent review

[00:17:03] Speaker 03:
of the record to make its conclusion that based on the prior art before it... However, we didn't know that.

[00:17:10] Speaker 02:
In every page what's interspersed here is the board shouting out that the patent owner is not satisfied with his burden.

[00:17:19] Speaker 02:
They did that twice on page 54 with the summary of what's going on with these amended claims.

[00:17:28] Speaker 03:
So they did it in the context of the burden being on

[00:17:33] Speaker 03:
the patent owner, but once the facts were ultimately found, the facts had been established that substitute claim 11 was unpatentable.

[00:17:44] Speaker 01:
But where is that?

[00:17:45] Speaker 03:
For example, that is at page 55.

[00:17:52] Speaker 03:
We determined that the combination of banisher and troop in view of client and porier would have rendered the subject matter of substitute claim 11

[00:18:01] Speaker 03:
obvious to oppose at the time the invention was made.

[00:18:04] Speaker 03:
Yeah, that's in conclusion.

[00:18:06] Speaker 02:
But the analysis all is replete with references to the fact that we've analyzed the evidence under the rubric of the patent owner having the burden, and the patent owner is not satisfied as well.

[00:18:17] Speaker 03:
Without question, the analysis was done with the burden of proof being placed on the patent owner.

[00:18:26] Speaker 00:
One additional question I have for you, it's almost independent

[00:18:30] Speaker 00:
of who had the burden.

[00:18:32] Speaker 00:
One other problem, and it is raised in the Blue Brief at page 59, spanning 59 to 60, is I am not suggesting that the board does not have the authority to pick and choose references that are generally in the IPR to bring them together in the first instance, the board, and conclude that they result in obviousness.

[00:18:59] Speaker 00:
But what we have consistently held is every time the board chooses to move beyond the arguments the petitioner made, notice has to be given to the patentee in an opportunity to respond.

[00:19:12] Speaker 00:
Here, let me make sure I have the facts right.

[00:19:16] Speaker 00:
With regard to the amended claims, claims 11 through 18, you argued Mouchabac, Poirier, Willer, and Klein taken together

[00:19:29] Speaker 00:
amounted to 103.

[00:19:31] Speaker 00:
You also argued separately Mushabak, Swalins, and Klein would be a 103 rejection for the amended claims.

[00:19:40] Speaker 00:
Nowhere in your opposition to the amended claims did you ever even mention Vanisher or Truth.

[00:19:46] Speaker 00:
They had absolutely been mentioned in your petition with regard to the original claims.

[00:19:49] Speaker 00:
Just to be clear, I don't misapprehend that, but you never cited them as

[00:19:55] Speaker 00:
as references that ought to be considered by the board in combination with other references to render the amended claims unpatentable.

[00:20:02] Speaker 00:
Is that correct?

[00:20:03] Speaker 03:
That is correct, Your Honor.

[00:20:05] Speaker 00:
So the board, the first time the patentee had any idea that these particular amended claims might be subject to a rejection based on the combination of banisher, troop, and courier incline was when the board rendered a decision rejecting them on the basis of that particular combination of references.

[00:20:25] Speaker 03:
That's correct, Your Honor.

[00:20:26] Speaker 00:
So we have a notice problem.

[00:20:28] Speaker 00:
In addition, I'm not saying the board doesn't have the authority to do what it did, i.e., all these references were of record.

[00:20:35] Speaker 00:
To some extent, the patent team knew they were all in play in the IPR generally, but they clearly never knew that these four were being argued by you all or considered by the board in this particular combination for these particular claims.

[00:20:49] Speaker 00:
So I feel like even if they put the burden on the right person,

[00:20:53] Speaker 00:
We still have a notice problem, because all of our cases have said, patentees have an opportunity to have notice and respond to the specific combination of references before the board invalidates claims.

[00:21:05] Speaker 03:
And this court has never specifically addressed notice in the context of substitute claims.

[00:21:12] Speaker 03:
Again, a situation where it is the patent holder.

[00:21:15] Speaker 00:
But do you think the patentees shouldn't have any notice?

[00:21:17] Speaker 00:
I mean, in normal prosecution, they always have notice, right?

[00:21:20] Speaker 00:
There's a rejection.

[00:21:22] Speaker 00:
An opportunity for the patentee to respond, then a final rejection.

[00:21:25] Speaker 00:
In all of prosecution, there's an opportunity for the patentee to respond to a proposed rejection.

[00:21:30] Speaker 00:
Here, they never had any opportunity to address whether these four references taken together ought to invalidate claim 11, for example.

[00:21:39] Speaker 00:
They never had any clue that the board was even considering those four references taken together.

[00:21:47] Speaker 00:
Look, you didn't do anything wrong.

[00:21:50] Speaker 00:
Just to be clear.

[00:21:52] Speaker 00:
You didn't advocate for the board to do this.

[00:21:53] Speaker 00:
The board did it.

[00:21:54] Speaker 00:
You're stuck here having to defend.

[00:21:56] Speaker 00:
You've got a strong case on the underlying merits.

[00:21:59] Speaker 00:
Don't worry about that on the first set of claims.

[00:22:02] Speaker 00:
But on these amended claims, it just seems to me you've got some procedural problems with what the board has done.

[00:22:08] Speaker 00:
And I appreciate that you're doing your very best, and you're doing a good job of trying to defend what is kind of not really defensible in light of our precedent.

[00:22:17] Speaker 00:
If there's anything else you want to say about it, otherwise I'll let you move on to claim 1 through 8 because you've got a much stronger case there if you want to.

[00:22:23] Speaker 00:
But certainly if you want to say anything more about 11 through 18, feel free.

[00:22:28] Speaker 03:
Your Honor, just one other point on the substitute claims.

[00:22:33] Speaker 03:
And that is the PTO guidance that was recently issued in connection with what the board will be doing or how the board will be handling

[00:22:45] Speaker 03:
motions to amend in light of the Aqua products case.

[00:22:50] Speaker 03:
And according to the PTO guidance, the steps that the board took in connection with substitute claim 11, apart from the problem of assignment of the burden of proof, but the steps that were undertaken in connection with the IPR appear to be at least consistent with the

[00:23:15] Speaker 03:
PTO guidance as to how motions to amend will be treated.

[00:23:18] Speaker 01:
Are you saying, because the guidelines say that no notice need to be provided or consistent with no providing of notice that this court can't find otherwise?

[00:23:32] Speaker 03:
Well, it seems to me, and I appreciate the notice issue, but it seems to me that competing with the notice issue ought to be the patent office's ability

[00:23:43] Speaker 03:
to decide that claims it does not believe are patentable do not need to be issued.

[00:23:52] Speaker 01:
I don't think that that's the underlying issue, as I understand from what Judge Moore is saying, what I saw in the briefing, but rather the issue is notice.

[00:24:03] Speaker 01:
Not that the PTO can't make such decisions, but before they do so, they have to provide notice.

[00:24:08] Speaker 01:
I thought that's what notice was about.

[00:24:12] Speaker 03:
Your Honor, I appreciate that additional guidance from the court could be helpful in the context of motions to amend and in the context of the patent owner needing to come forward in the first instance to submit the motion.

[00:24:31] Speaker 03:
And then the petitioner has one opportunity to respond according to the PTO guidelines after there's briefing on the motion.

[00:24:40] Speaker 03:
the board will consider the entirety of the record, including, for example, if the petitioner files any opposition at all, which is indicative of a procedure to be undertaken that will involve the board making patentability determinations.

[00:25:03] Speaker 03:
Now, I agree that the question of providing appropriate notice

[00:25:09] Speaker 03:
to the patent owner in those circumstances is less than clear from the PTO guidance.

[00:25:15] Speaker 03:
But nonetheless, if we were to follow the guidance as explained by the PTO, because it has indicated that no additional procedural mechanisms will be in place as to... If that was true, then the logical extension of that would be that the PTO was free to go completely outside the IPR record, conduct

[00:25:38] Speaker 00:
what equates to, you and I would understand, to be an examination and do a prior art search, come up with, if we're going to stick purely to those guidelines and say, no, these are the only opportunities for each person to be heard, then I don't think we've ever decided, for example, that the PTO is not permitted to find its own prior art.

[00:25:57] Speaker 00:
And I'm not sure it isn't.

[00:25:59] Speaker 00:
Now, it has never done that in an IPR, to my knowledge.

[00:26:01] Speaker 00:
But I don't know that any statute, especially when we're talking about amended claims, prevents the PTO from doing that.

[00:26:08] Speaker 00:
But if your view of the guidance is correct, the PTO could actually find a new reference neither of you have ever seen before and then conclude that the amended claim is unpatentable on the basis of it without giving either party an opportunity to address it.

[00:26:25] Speaker 03:
Well, I'm not sure it extends that far.

[00:26:28] Speaker 03:
So I may have misspoke what the guidance contemplates.

[00:26:32] Speaker 03:
But I believe it's a consideration and evaluation of the evidence of record.

[00:26:37] Speaker 03:
in connection in the record as enlarged by the scope of the motion to amend.

[00:26:46] Speaker 03:
So I'm not sure that that precise question... So maybe that would be outside the record evidence because it would be a new... It would be outside the record evidence, but I appreciate the question of adequate notice to the patent owner.

[00:26:59] Speaker 00:
And by the way, I know it's adequate notice to the patent owner because clearly

[00:27:02] Speaker 00:
they have the property right that's at stake, right?

[00:27:05] Speaker 00:
They're the ones where due process has to be taken because they have the property right.

[00:27:09] Speaker 00:
But in a situation like this, I don't know why you shouldn't be given an opportunity to be heard as the petitioner as well, because you have the burden, right?

[00:27:20] Speaker 00:
So if you have the burden of coming forward, it would be odd to say you have the burden of coming forward, but don't get to ever be heard when the PTO combines

[00:27:30] Speaker 00:
new references that you never contemplated combining or suggested.

[00:27:34] Speaker 00:
Like for example, you've got to prove there's a motivation to combine these four references.

[00:27:37] Speaker 00:
That's now part of your burden post-op for products.

[00:27:40] Speaker 00:
You need an opportunity to be heard on this too, not just the patentee.

[00:27:44] Speaker 00:
I mean, you may not have the same due process concerns because you don't have a property right at stake, but it seems like it would be odd to have this new claim, amended claim, adjudicated when you have the burden in the absence of you ever getting to be heard on it.

[00:27:59] Speaker 03:
I appreciate your honors comments.

[00:28:04] Speaker 03:
May I just make a quick segue into the cross appeal?

[00:28:09] Speaker 03:
Because that's related or issues related to notice.

[00:28:13] Speaker 03:
And in the cross appeal, we concede that we would not be seeking reversal or remand if the scope of the record

[00:28:28] Speaker 03:
was consistent with the original IPR.

[00:28:32] Speaker 03:
But once the scope of the IPR record was enlarged with respect to the amended claims, we submit that the facts found to establish that the amended claims are obvious ought to also be applied with respect to original claims nine and 10, which are patentably indistinct from the proposed amended claims.

[00:28:59] Speaker 04:
Thank you, Your Honor.

[00:29:20] Speaker 04:
amended claims issue.

[00:29:22] Speaker 04:
It's clear that Serona was not given notice of these issues.

[00:29:26] Speaker 04:
And more importantly, under the guidance or the ruling in Magnum Oil, motivations to combine are not fungible.

[00:29:33] Speaker 04:
You cannot take the alleged motivation to combine of one set of references and simply input it to a different set of references.

[00:29:38] Speaker 00:
But Magnum Oil was not an amendment case.

[00:29:41] Speaker 00:
It was a straight IPR case.

[00:29:43] Speaker 00:
So once we get into an amendment territory, just like you have to be given notice and an opportunity to be heard, if according to Aqua products, they have the burden of proving motivation to combine, and if the PTO is going to look at four references that have never been argued to be combined by somebody else, they have to be given an opportunity to meet their burden.

[00:30:02] Speaker 04:
Your Honor, that's certainly true, but they had notice.

[00:30:04] Speaker 04:
Again, as stated in Aqua products, the burden is not on the patent owner.

[00:30:08] Speaker 04:
Since it is not on the patent owner, the petitioners had the opportunity to raise grounds.

[00:30:13] Speaker 04:
They abandoned Relias on both Bannisher and Troup, and they presented their own grounds.

[00:30:17] Speaker 04:
The board did not agree with those grounds.

[00:30:19] Speaker 00:
But these are amended claims.

[00:30:21] Speaker 00:
Certainly.

[00:30:21] Speaker 00:
No matter what Magnum Oil says, it pertains to the claims that were already issued and that are now back in this IPR.

[00:30:31] Speaker 00:
The patentee has a due process, has a property right to, which is why a lot of these due process issues attach.

[00:30:38] Speaker 00:
You don't have a property right to amended claims.

[00:30:40] Speaker 00:
They were never issued.

[00:30:41] Speaker 00:
You know, there have to be different standards that apply to amended claims, which never went through a re-examination process.

[00:30:49] Speaker 04:
Certainly, Your Honor.

[00:30:50] Speaker 00:
And I agree there is a... An examination process, I should say.

[00:30:53] Speaker 04:
There is a notice issue, but I think the issue is that in this particular case, there was no reason given to combine Bannisher with Poirier or Klein.

[00:31:02] Speaker 00:
You say there's no reason, just because... Well, there's no reason because they didn't have a chance to address that combination any more than you did.

[00:31:08] Speaker 04:
They did, Your Honor, simply because Bannasher was relied upon against the original claims.

[00:31:12] Speaker 04:
Muschebach was relied upon against the original claims.

[00:31:14] Speaker 00:
All of this is predicated on your idea that when amended claims are involved, that the PTO can look at nothing beyond the particular combination of references that they argue in the opposition to amend.

[00:31:28] Speaker 00:
And because we're talking about amended claims, which has never been subject to examination, I'm not sure the PTO should be so limited.

[00:31:35] Speaker 00:
I don't know that that's in the public's best interest.

[00:31:38] Speaker 00:
So if I'm willing to allow the PTO to at least go broad enough to sort of pick and choose from among things that are already of record and don't involve expanding the record, I guess maybe just address that.

[00:31:49] Speaker 00:
It's not a specific question, but you can clearly see where I'm going.

[00:31:52] Speaker 04:
Yes, Your Honor.

[00:31:53] Speaker 04:
I think the issue from our point of view is that with respect to, and the reason I cite magnum oil is simply because that the idea of reasons to combine aren't fungible.

[00:32:02] Speaker 04:
There was no reason to combine badness or untrue.

[00:32:04] Speaker 04:
The petitioner had the opportunity.

[00:32:06] Speaker 04:
It relied on Banisher originally.

[00:32:08] Speaker 04:
It could have applied Banisher.

[00:32:09] Speaker 04:
Once we exposed the problems with Banisher, they abandoned it and they provided no evidence for any reason to comply.

[00:32:16] Speaker 04:
So there's a lack of evidence in the record that would support that combination.

[00:32:20] Speaker 04:
Now, as far as the notice for the petitioners, the petitioners were aware of Banisher, applied Banisher, decided to let go of it.

[00:32:28] Speaker 04:
Once that was done, there's nothing in the record to support the board's decision.

[00:32:32] Speaker 00:
See, the problem is, again, you're thinking of this as an adversarial proceeding.

[00:32:37] Speaker 00:
Once we get into motions to amend, I'm not sure that it's as adversarial as it is hybrid, like the Supreme Court said in quoso, where it's really a quasi-administrative proceeding, deciding should this new claim, never having been examined by anyone, be allowed.

[00:32:51] Speaker 00:
And so that's where everything you're saying resonates with me when we're talking about the original claims, but ceases to resonate with me, quite frankly, when we're in the amended claim territory.

[00:33:02] Speaker 04:
Well, then I'll close, as I see I'm past my time, with the idea that I think we would agree that there is a notice problem.

[00:33:08] Speaker 04:
That the petition, that this serona was not given any opportunity to address this potential, or this combination that was applied.

[00:33:15] Speaker 04:
And therefore, for that reason alone, the decision was improper.

[00:33:19] Speaker 04:
And at that, I'll leave it.

[00:33:20] Speaker 04:
Thank you, Your Honor.

[00:33:21] Speaker 02:
Thank you.

[00:33:22] Speaker 02:
And he didn't address it across the field, so there's no argument.

[00:33:25] Speaker 02:
Thank you.

[00:33:26] Speaker 02:
We thank both sides.

[00:33:27] Speaker 02:
The case is submitted.