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` A L A R M . C O M , I N C O R P O R A T E D
` P e t i t i o n e r ,
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` v .
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` V I V I N T , I N C O R P O R A T E D
` P a t e n t O w n e r .
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` C a s e s : I P R 2 0 1 5 - 0 2 0 0 3
` I P R 2 0 1 5 - 0 2 0 0 4
` I P R 2 0 1 5 - 0 1 9 9 7
` I P R 2 0 1 5 - 0 1 9 9 5
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` T E L E P H O N E C O N F E R E N C E
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` B e f o r e : C H A R L E S B O U D R E A U , P T A B J U D G E
` J A M E S A R P I N , P T A B J U D G E
` M I C H A E L Z E C H E R , P T A B J U D G E
` D a t e : W e d n e s d a y , J a n u a r y 2 7 , 2 0 1 6
` T i m e : 1 1 : 0 0 a . m .
`R e p o r t e d b y : R y a n K . B l a c k , R P R
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` V e r i t e x t L e g a l S o l u t i o n s
` M i d - A t l a n t i c R e g i o n
` 1 2 5 0 E y e S t r e e t N W - S u i t e 1 2 0 1
` W a s h i n g t o n , D . C . 2 0 0 0 5
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`Veritext Legal Solutions
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`Alarm.com v. Vivint
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` S T E R N E K E S S L E R G O L D S T E I N & F O X P . L . L . C .
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` B Y : R O B E R T G . S T E R N E , E S Q U I R E
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` J A S O N D . E I S E N B E R G , E S Q U I R E
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` J O S E P H E . M U T S C H E L K N A U S , E S Q U I R E
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` S u i t e 1 6 0 0
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` 2 0 2 . 3 7 1 . 2 6 0 0
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` r s t e r n e @ s k g f . c o m
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` j a s o n e @ s k g f . c o m
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` R e p r e s e n t i n g P a t e n t O w n e r V i v i n t , I n c .
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` S U G H R U E M I O N , P L L C
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` B Y : B R I A N K . S H E L T O N , E S Q U I R E
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` 2 1 0 0 P e n n s y l v a n i a A v e n u e N W
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` W a s h i n g t o n , D . C . 2 0 0 3 7
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` 2 0 2 . 2 9 3 . 7 0 6 0
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` b s h e l t o n @ s u g h r u e . c o m
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` R e p r e s e n t i n g P e t i t i o n e r A l a r m . c o m , I n c .
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` C R A V A T H , S W A I N E & M O O R E L L P
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` B Y : T E E N A - A N N V . S A N K O O R I K A L , E S Q U I R E
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` R e p r e s e n t i n g P e t i t i o n e r A l a r m . c o m , I n c .
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` JUDGE BOUDREAU: Good morning.
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`This is Judge Charles Boudreau, and I have
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`Judges James Arpin and Michael Zecher on the
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`line with me.
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` Do we have counsel for Alarm.com?
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` MR. SHELTON: Yes, Your Honor. This
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`is Brian Shelton for petitioner. And I'm also
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`joined by co-counsel Teena Sankoorikal.
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` JUDGE BOUDREAU: Thank you.
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` And do we also have counsel for
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`Vivint, Incorporated?
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` MR. STERNE: Yes, Your Honor. This is
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`Robert Sterne for patent owner Vivint. And do
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`you want me to identify who's on the call from
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`our side?
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` We have a court reporter, Your Honor.
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` JUDGE BOUDREAU: Yes, please.
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` MR. STERNE: We have Jason
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`Eisenberg, my partner. Also, my partner Joseph
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`Mutschelknaus on the call. And we have the
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`court reporter. And with your consent, we will,
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`of course, provide a transcript of the call for
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`the record.
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` JUDGE BOUDREAU: Yes. Please do.
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`Thank you.
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` All right. Thank you.
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` We received Mr. Mandir's message
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`regarding procedures that would be followed by
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`the Patent Office for processing patent owner's
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`request for Certificate of Correction. And we
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`-- at the outset, I'd like to mention that,
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`under 37 CFR 42.3, the Board takes exclusive
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`jurisdiction over any involved application of
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`patent during a proceeding. And so, going
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`forward, patent owner shouldn't file any papers,
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`including any requests, to any department
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`outside of the PTAB while the case
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`is pending before the Patent Trial and Appeal
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`Board. And, indeed, under 37 CFR 1.323, if a
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`request for a Certificate of Correction relates
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`to a patent involved in any trial before the
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`Patent Trial and Appeal Board, the request must
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`comply with the requirements of this section and
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`be accompanied by a motion in addition to the
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`request itself.
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` MR. STERNE: Your Honor, this is
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`Robert Sterne speaking. We will absolutely
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`address why we did what we did and why we did
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`not come to the Board first, because we're very
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`aware of what you just cited to us. But I would
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`like to make clear at the beginning of the call
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`that we request that this discussion today be
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`limited to the Certificate of Correction issue
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`before us and not be used as a backdoor to
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`expand the discussion to the preliminary
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`responses or to the petitions. Because our
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`position, Your Honor, is the sole issue here is
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`the propriety of the filing of the Certificates
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`of Correction, and nothing more or less.
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` MR. SHELTON: Your Honor, this is
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`Brian Shelton for the petitioner. I mean,
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`our concern here is that these Certificates
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`of Correction were filed, and there was,
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`previously, an effort by the patent owner
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`to notify the Board and request a call.
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`But they withdrew that request, and then
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`they proceeded to file these Certificates of
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`Correction, and the first time we see them is
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`in the preliminary response. So our concern is
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`that there has been some change to the claim
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`language and we're not given an opportunity to
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`address that.
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` So to that extent, I think it does
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`involve some discussion of the preliminary
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`responses.
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` JUDGE BOUDREAU: This is Judge
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`Boudreau. Before we go down that road too far,
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`let me just find out from petitioner whether you
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`would agree that these are typographical,
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`clerical or errors of a minor nature, such
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`that we may go ahead and enter the Certificate
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`of Correction?
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` MR. SHELTON: Not in all cases, Your
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`Honor. I mean, there are instances where terms
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`are being removed from the claim language, where
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`terms are being materially changed.
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` In our view, these are not the
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`sort of minor typographical changes that are
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`contemplated for a Certification of Correction.
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`That's the issue that we have with this. We
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`looked at the claims as they were written on the
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`face of the patent when we applied our prior
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`art, and now there have been some material
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`changes, in our view. And we're not sure how
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`the Court would like to address that, but we
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`would like the opportunity to do so.
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` MR. STERNE: Your Honor, --
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` JUDGE BOUDREAU: Granted, these are
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`not just spelling mistakes, for instance, but
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`from our preliminary review of the Certificates
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`of Correction, it appears that they were
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`correcting antecedent basis issues and the like.
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` Are there particular corrections that
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`you are pointing to, Mr. Shelton?
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` MR. SHELTON: Yes, Your Honor. One of
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`them would be in IPR2015-2003, which would be
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`the '654 patent, Claims 16 and 24, the claim,
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`as written, was a server message generator and
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`communication, and that has been changed to,
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`removed by the generator. And we had
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`interpreted the claim one way, and they've come
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`in with a different interpretation. And so the
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`concern we have is, now that we've filed a
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`petition addressing, again, as the claim was
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`written, and then we tried to comprehend what
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`the claim should properly mean, but they've come
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`in with a different interpretation, and so now
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`the record's unclear.
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` I mean, that's one example. But there
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`are other instances of, for example, on the one
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`'123 patent, which is the IPR2015-1995. They've
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`changed the message where it used to read, a
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`single message profile, has now been changed
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`to, message profile. Again, we applied our
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`understanding of a single message profile in our
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`application of prior art. And there are other
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`instances. There's another instance where, for
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`example, the limitation of a table was changed
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`to a memory.
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` So our concern, primarily, is that
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`the record at this point is unclear. And if
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`the Board would allow us to, we would like the
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`opportunity to make a submission stating our
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`position as to how the art we applied meets the
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`language that they're trying to change.
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` JUDGE BOUDREAU: Would patent owner
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`have any objection to Mr. Shelton's request?
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` MR. STERNE: Yes, we do, Your Honor.
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`I mean, that's exactly what I said at the
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`beginning of this conversation. This is
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`backdoor, used to change the petition that
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`they filed.
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` I mean, look, let's start at the
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`beginning. First of all, I would like to
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`address the Board's concern, which I think is
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`appropriate. Of course, whether I think it's
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`appropriate or not is irrelevant to the Board.
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`But our position, Your Honor, is we were very
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`careful in what we did here. We're only dealing
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`with typographical and clerical changes, of
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`which, by the way, petitioner was aware of
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`in their petition, because they raised it.
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` Now, I want to bring to the Board's
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`attention why we did not come to you first,
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`and --
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` JUDGE BOUDREAU: Wait. Because,
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`Mr. Sterne, you opened the door here by failing
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`to follow our procedures.
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` MR. STERNE: Well, Your Honor, in
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`all due respect, I would disagree. We carefully
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`reviewed other panel decisions here, as well as
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`the statute. And I would like to point out
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`three panel decisions that we think are relevant
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`here.
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` The first one is International Flavors
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`& Fragrances versus ZoomEssence, Inc., which is
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`IPR2015-01418, and, Your Honors, in Paper Number
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`8 at Page 3, which is an October 21, 2015,
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`ruling from the Board, quote, therefore,
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`the grant and issuance of the Certificate of
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`Correction; i.e., outside of the declared
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`interference for instituted trial, does not
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`require a motion to the Board. And there the
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`panel cited, as you did, 37 CFR, Section 1.323,
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`in its entirety.
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` And in a second case, Your Honors,
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`in Pharmacosmos A/S versus Luitpold
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`Pharmaceuticals, which is IPR2015-01490, Paper
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`Number 8 at Pages 2 to 3, of October 14th of
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`last year, 2015, there is a discussion
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`authorizing for request for a Certificate of
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`Correction and granting a motion for the
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`request, without questioning whether the motion
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`is necessary when trial has not been instituted.
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` And here what is going on is, trial
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`has not been instituted, as these cases point
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`out, and, therefore, the Certificate of
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`Correction is not within the jurisdiction,
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`according to these other panels, of the Board
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`until the trial institution decision is made.
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` I give you another example: ASML
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`Netherlands B.V. versus Energetiq Technology,
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`Inc., which is IPR2015-01375 at Paper 11, Pages
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`1 to 2, on October 14th, 2015. There the Board
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`interpreted an authorization for a request for
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`Certificate of Correction, and, again, it dealt
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`with the issue of the fact that trial had not
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`been instituted.
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` So we did not want to burden this
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`Board with this issue, because, as we said
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`earlier, these only go to typographical and
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`clerical errors. The reality here --
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` JUDGE BOUDREAU: In each of those
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`cases, Mr. Sterne, the patent owner did come to
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`the Board first, didn't they?
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` MR. STERNE: Yes, they did, Your
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`Honor. But in those cases, the Board pointed
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`out that it was not a trial yet, and, therefore,
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`there was no need for this permission to be
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`granted, because --
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` JUDGE BOUDREAU: But we do have
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`jurisdiction under Section 42.3, even before any
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`trial is granted.
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` MR. STERNE: So the trial has not been
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`instituted here. So, therefore, if you look at
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`37.323, it specifically -- I mean, excuse me,
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`37 CFR 1.322, it says, if a request relates to
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`a patent involved in a trial before the Patent
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`Trial and Appeal Board, the request must comply
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`with the requirements of this section and be
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`accompanied by a motion under 42.20 of this
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`title.
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` So what we're saying is, under
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`37 CFR, Section 42.2, it defines a trial to mean
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`a contested case instituted by the Board based
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`on a petition. So our interpretation of these
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`panel decisions, Your Honor, is that until
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`a trial is instituted, this Certificate of
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`Correction is outside of the Board's concern.
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`Because the Patent Office has the necessary
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`provisions in their rules that specifically say
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`that the Certificate of Correction will not be
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`granted and not be issued if the claim scope is
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`changed by the Certificate of Correction.
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` The last thing we are trying to do
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`here is change claim scope. We just want to
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`remove these typographical and clerical errors
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`from the claim, because these claims are
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`in litigation, and we, for very appropriate
`
`reasons, must deal with these issues, but we
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`want to deal with these issues now before the
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`trial is instituted, if it is instituted.
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` So, again, we're not trying to do
`
`anything improper. We're not trying to burden
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`the Board with needless work. We were using
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`the provisions in the Office Rules, as we
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`interpreted them and as supported by other
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`panels. So we would submit, Your Honors,
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`that we've done nothing wrong by filing these
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`Certificate of Corrections, and, that, as I said
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`before, the protection for the process lies
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`in the fact that if they are not granted and
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`issued, because they have expanded the scope of
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`the claims, then everything has been taken care
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`of.
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` JUDGE BOUDREAU: Well, let us hear
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`from petitioner's counsel.
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` MR. SHELTON: Your Honor, first I want
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`to address that we're not asking to supplement
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`anything in our petition. We're not looking to
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`bring in new prior art or expand the arguments.
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`We simply want the opportunity to address the
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`change in the claim language that patent owner
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`has introduced to explain why the art we have
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`applied would cover that change. And, again,
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`we disagree with the patent owner's
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`characterization of these changes as being minor
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`typographical corrections. They have changed
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`the scope. They've taken terms out of the
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`claim. They've changed claim terms from
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`singular to plural. They've made changes. And
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`we simply want to preserve the integrity of the
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`record and have the opportunity to have our
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`position on how these changes affect the art
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`being applied.
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` JUDGE BOUDREAU: All right. Thank
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`you, Mr. Shelton. I'm going to just put you on
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`hold for a minute.
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` MR. SHELTON: Thanks.
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` JUDGE BOUDREAU: I'm going to confer
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`with the panel.
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` (Brief pause in proceeding.)
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` JUDGE BOUDREAU: Okay. This is Judge
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`Boudreau.
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` At the outset, Mr. Sterne, we
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`believe that you're incorrect in your reading.
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`Section 42.3 states that the Board may exercise
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`exclusive jurisdiction within the Office over
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`every involved application and patent during the
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`proceeding, as the Board may order. And Section
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`42.3 defines proceedings to include a proceeding
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`meaning a trial or preliminary proceedings, and
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`preliminary proceedings begins with the filing
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`of the petition for instituting trial.
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` And so we are going to authorize
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`the petitioner to file a sur-reply, no longer
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`than five pages, limited to the issue of
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`consideration of the Certificate of Correction.
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`And, in the meantime, the request for
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`Certificate of Correction will be stayed within
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`the office pending our decision. We conclude
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`that if the changes that are proposed are minor,
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`then there should be no effect on petition.
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`If they're not minor, they may affect the
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`consideration of the petition, and, as
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`petitioner here is likely aware, Inter Partes
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`Review may be based only on patentability
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`challenges under Sections 102 and 103, not
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`Section 112. So to the extent that petitions
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`raise the indefiniteness arguments here, that is
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`not a proper basis for request for Inter Partes
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`Review. And if we determine that we can't
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`construe a particular claim so as to determine
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`what's not anticipated or obvious, then we'll
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`need to consider what that would prevent us from
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`instituting.
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` MR. STERNE: Your Honor, may I make a
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`request of the Board for clarification or for
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`understanding?
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` So, again, to go back to your point
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`about 42.3, again, we are looking at other panel
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`decisions. And, Your Honor, I would suggest
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`that there is ambiguity here on whether the
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`Board assumes jurisdiction over this issue prior
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`to institution of trial. So it would be helpful
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`for all of us for there to be some discussion
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`at the Board level on this issue, because it's
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`not as clear as, perhaps, you think it is based
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`on our research.
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` So, you know, I -- I -- again, I
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`wanted to -- you know, I just wanted to bring
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`to your attention one more case in this regard,
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`which is the ZoomEssence case, which is
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`IPR2015-01418, and, particularly, Paper Number
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`8, Page 3, on October 21 of this past year. I
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`would like you to consider that after the call.
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` Secondly, with regard to the sur-reply
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`that petitioner has skillfully obtained, again,
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`no problem there, but we would suggest to the
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`Board that it only be limited to the language of
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`the Certificate and not be allowed to go beyond
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`that. And, also, the Board should be aware
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`that, in the petition, a lot of these clerical
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`error issues were raised by the petitioner in
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`their petition. They're aware of these. And
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`the point is, they've already addressed these in
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`their petitions. It should not -- the sur-reply
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`should not be a vehicle to expand the petition.
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` So those are the cautions that we
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`would like to propose to the Board about the
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`scope of this sur-reply, not just the issue
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`about 112, but also about re-litigating issues
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`that have already been presented in the
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`petition.
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` We did not, Your Honor, address any of
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`these issues in our POPR. I mean, that was not
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`the basis of our POPR. We were not arguing
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`these claims in the POPR. So, again, we don't
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`think this should be used as a backdoor
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`to expand the record in terms of the second
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`petition.
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` MR. SHELTON: Your Honor, speaking
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`for petitioner, we do not intend to go beyond
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`the specific corrections when we present our
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`discussion in the sur-reply. That's all we've
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`asked to address, and that's all we intend to.
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` JUDGE BOUDREAU: Thank you. And we
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`will make that clear in our order that the
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`petitioner isn't to go beyond the scope of the
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`Certificate of Correction.
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` MR. SHELTON: Your Honor, one other
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`question. Now, these four patents that we're
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`talking about today, there are other petitions
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`that we identified in our e-mail to the Board
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`that I believe patent owner has yet to file
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`their preliminary response, but certainly we'll
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`have the same issues come up. So our question
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`would be, how would the Board like us to proceed
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`with those? Should we file the same sur-reply
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`in those proceedings, as well?
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` That's the question we have for the
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`other patents for which no preliminary response
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`has been filed yet.
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` JUDGE BOUDREAU: Yes, that sounds
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`reasonable.
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` MR. SHELTON: Okay.
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` MR. STERNE: Your Honor,
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`clarification: If they are being permitted
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`to file a five-page sur-reply, do we get a
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`five-page response to that?
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` JUDGE BOUDREAU: No.
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` MR. STERNE: No?
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` JUDGE BOUDREAU: Nothing is authorized
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`at this point, other than the five-page
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`sur-reply.
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` MR. STERNE: Well, how do we defend
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`our side, then?
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` JUDGE BOUDREAU: Well, you've already
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`had your opportunity to present your position in
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`your preliminary response.
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` Mr. Sterne, I'd also ask you, in any
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`of those decisions that you cited earlier, were
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`any of those precedential? Were any of those
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`binding on the Board?
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` MR. STERNE: No, Your Honor. As we
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`all know, there's very, very few of those to
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`date on this. And there's been no precedential
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`decisions on this point of law, to date, that
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`we're aware of. And we did some pretty
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`intensive research on this subject.
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` JUDGE BOUDREAU: All right. Thank
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`you.
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` MR. SHELTON: Lastly, one point from
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`petitioner, Your Honor. In terms of timing,
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`when would the Board want the petitioner to
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`submit the sur-reply?
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` JUDGE BOUDREAU: Within seven days.
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`One week.
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` MR. SHELTON: Okay.
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` JUDGE BOUDREAU: All right. Thank you
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`all.
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` MR. SHELTON: Thank you.
`
` (Proceeding concluded -- 11:28 a.m.)
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` C E R T I F I C A T E
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` I do hereby certify that the aforesaid
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`testimony was taken before me, pursuant to
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`notice, at the time and place indicated; that
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`said deponent was by me duly sworn to tell the
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`truth, the whole truth, and nothing but the
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`truth; that the testimony of said deponent was
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`correctly recorded in machine shorthand by me
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`and thereafter transcribed under my supervision
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`with computer-aided transcription; that the
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`deposition is a true and correct record of the
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`testimony given by the witness; and that I am
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`neither of counsel nor kin to any party in said
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`action, nor interested in the outcome thereof.
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` WITNESS my hand and official seal this
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`26th day of January 2016.
`
` <%Signature%>
`
` Ryan K. Black
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`&
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`affect 14:24 16:4
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`allow 9:7
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`appeal 1:3 5:13,17
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`appears 8:1
`application 5:8 9:1
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`appropriate 9:21,22
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`arguing 18:7
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`arpin 1:17 4:3
`art 7:18 9:1,9 14:11
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`asking 14:9
`asml 11:16
`assumes 16:24
`atlantic 1:23
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`authorize 15:20
`authorized 19:18
`authorizing 11:6
`avenue 2:7,17 3:5
`aware 5:25 10:1
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`b
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`back 16:20
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`basis 8:2 16:11 18:7
`beginning 6:1 9:15
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`believe 15:11 18:25
`beyond 17:16 18:13
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`black 1:21 21:21
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`brian 2:16 4:7 6:11
`brief 15:7
`bring 10:3 14:11
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`burden 11:24 13:19
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`call 4:14,20,22 6:1
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`care 14:4
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`carefully 10:10
`case 5:12 11:1 12:25
`17:7,8
`cases 1:12 7:8 11:11
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`cautions 17:24
`certainly 19:1
`certificate 5:5,15
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`certify 21:3
`cfr 5:7,14 10:24
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`changes 7:13,19
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`clerical 7:5 9:25
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`come 5:24 8:11,16
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`comprehend 8:15
`computer 21:11
`concern 6:12,19
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`conclude 16:1
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`confer 15:5
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`consent 4:21
`consider 16:15
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`construe 16:13
`cont'd 3:1
`contemplated 7:14
`contested 12:25
`conversation 9:15
`correct 21:12
`correcting 8:2
`correction 5:5,15
`6:3,9,13,18 7:7,14
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`8:1 10:21 11:7,13
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`corrections 8:3
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`correctly 21:9
`counsel 4:5,8,10
`14:7 21:14
`course 4:22 9:21
`court 4:16,21 7:20
`cover 14:15
`cravath 3:3
`cravath.com 3:8
`d
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`d 2:5
`d.c. 1:24 2:9,18
`date 1:19 20:7,8
`day 21:18
`days 20:17
`deal 13:15,16
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`decision 11:15 16:1
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`defend 19:21
`defines 12:24 15:16
`department 5:11
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`deposition 21:12
`determine 16:12,13
`different 8:12,17
`disagree 10:10
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`discussion 6:2,5,24
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`door 10:7
`due 10:10
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`e
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`earlier 12:1 20:2
`effect 16:3
`effort 6:14
`eisenberg 2:5 4:19
`energetiq 11:17
`enter 7:6
`entirety 10:25
`error 17:19
`errors 7:5 12:2
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`esquire 2:4,5,6,16
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`example 8:19,20 9:3
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`exclusive 5:7 15:13
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`failing 10:7
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`identify 4:14
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