Filed on behalf of Patent Owner Gamon Plus, Inc.
`
`By: Andrew L. Tiajoloff, reg. no. 31575
`Tiajoloff & Kelly LLP
`Chrysler Building, 37th Floor
`405 Lexington Avenue
`New York, New York 10174
`Tel.: 212-490-3285
`Fax: 212-490-3295
`Email : atiajoloff@tkiplaw.com
`
`U.S. PATENT & TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Campbell Soup Company, Campbell Sales Company
`and Trinity Manufacturing, LLC.
`Petitioners,
`
`v.
`
`Gamon Plus, Inc.
`Patent Owner
`
`Case No. IPR2017-00094
`Patent D612,646 S
`
`PATENT OWNER’S MOTION FOR RECONSIDERATION AND
`DENIAL OF INSTITUTION OF INTER PARTES REVIEW
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Relief Requested .............................................................................................. 1
`
`Reasons for Granting the Requested Relief .................................................... 1
`
`A. Under Arthrex there has never been a Final Written Decision, or
`even a Decision to Institute, in this IPR that complied with the
`U.S. Constitution. ................................................................................. 1
`
`B.
`
`C.
`
`D.
`
`1.
`
`2.
`
`At this stage, effectively before lawful institution of the IPR and
`before a Final Written Decision, the Board can and should
`reconsider its Decision to Institute ........................................................... 4
`
`In reconsidering its Decision to Institute, the Board should
`consider the later-discovered facts that prohibit the Board from
`hearing testimony that was offered in the Petition under U.S.
`Patent & Trademark Office regulations. ................................................. 6
`
`Under U.S. Patent & Trademark Office regulations, the Board
`cannot receive or hear the testimony of Examiner Gandy
`regarding the preclusive prior-art effect of the Linz patent that
`himself issued. .......................................................................................... 8
`
`Under U.S. Patent & Trademark Office regulations, the
`Board cannot receive expert testimony of an Examiner
` regarding the Examiner’s activities at the Patent Office. .................... 9
`
`Under the regulations, the Board cannot receive or
`consider testimony of Examiner Gandy on the subject of
`the preclusive prior-art effect of the Linz patent that he
` himself issued. ..................................................................................... 11
`
`3.
`
`There can be no waiver of the obligation of the Board to
` disregard Examiner Gandy’s testimony regarding Linz. ................... 13
`
`E.
`
`Reconsideration without the testimony of Examiner Gandy
`regarding the preclusive procedural effect of Linz will require
`denial of institution.. ............................................................................... 14
`
`III. CONCLUSION………………………………………………………..........15
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`
`BioDelivery Scis. Int'l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205
`(Fed. Cir. 2018)…………………………………………………………….14
`
`BioDelivery Scis. Int'l, Inc. v. Aquestive Therapeutics, Inc., 935 F.3d 1362
`(Fed. Cir. 2019), cert. denied, 141 S. Ct. 254, 208 L. Ed. 2d 26 (2020). ....4, 5
`
`Biodelivery Sciences International, Inc., v. Aquestive Therapeutics, Inc.,
`IPR2015-00165 (Paper 91) (PTAB, February 7, 2019), aff’d
`935 F.3d 1362 (Fed. Cir. 2019). ................................................................5, 14
`
`Campbell Soup Co. v. Gamon Plus, Inc., 939 F.3d 1335 (Fed. Cir. 2019).….…...15
`
`Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268 (Fed. Cir. 2021). ...........3, 8
`
`Com. Contractors, Inc. v. United States, 154 F.3d 1357 (Fed. Cir. 1998)…..........13
`
`Friedman v. Lehman, 95-2077(NHJ), 1996 WL 652768 (D.D.C. June 20, 1996). .12
`
`GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir. 2015). ............................6, 13
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d 1382
`(Fed. Cir. 2016)………………………………………………………….. 5, 6
`
`Mobility Workx, LLC v. Unified Pats., LLC, 15 F.4th 1146 (Fed. Cir. 2021)…...2, 3
`
`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 200 L. Ed. 2d 695 (2018) ......................... 5
`
`United States v. Arthrex, Inc., 141 S. Ct. 1970, 210 L. Ed. 2d 268 (2021)..... passim
`
`Western Electric Co. v. Piezo Technology, Inc., 860 F.2d 428
` (Fed. Cir. 1988) .............................................................................................12
`
`ii
`
`

`

`Regulations
`
`15 CFR §§15.11- 15.16 ............................................................................................10
`
`15 CFR §15.16 .........................................................................................................10
`
`37 CFR §104.1 ........................................................................................................... 9
`
`37 CFR §104.21(a) ...................................................................................................10
`
`37 CFR §104.21(b) ........................................................................................... 10, 11
`
`37 CFR §104.22(b) ..............................................................................................9, 10
`
`37 CFR Part 104 .......................................................................................................10
`
`37 CFR Part 104, Subpart C ................................................................................9, 11
`
`Manual of Patent Examining Procedure §1504 .......................................................12
`
`Manual of Patent Examining Procedure §1701.01 ………………………….......... 9
`
`Statutes
`
`35 U.S.C. § 102(b) (1972) .......................................................................................11
`
`35 U.S.C. § 314(a) ..................................................................................................14
`
`35 U.S.C. § 325(a)(1) ...............................................................................................14
`
`U.S. Const. Art. II, § 2, cl. 2 ..................................................................................... 1
`
`iii
`
`

`

`I.
`
`Relief Requested
`
`Patent Owner Gamon Plus, Inc. respectfully requests that the Board:
`
`a. reconsider the Board’s acceptance in the Petition of the testimony of
`
`Examiner James Gandy, the expert for Petitioners, with respect to U.S. Pat.
`
`Des. 404,622 (Ex. 1008, hereinafter “Linz”);
`
`b. reconsider the Board’s now-unconstitutional Decision instituting this IPR
`
`(Paper no. 13), and
`
`c.
`
`issue a new Decision denying institution of inter partes review of U.S. patent
`
`no. D612,646 S (the ‘646 patent).
`
`II.
`
`Reasons for Granting the Requested Relief
`
`Recent rulings from the U.S. Supreme Court and the Federal Circuit have
`
`radically altered the procedural posture of this IPR, and the above-described relief is
`
`therefore respectfully requested for the reasons set out below.
`
`A.
`
`Under Arthrex there has never been a Final Written Decision, or
`even a Decision to Institute, in this IPR that complied with the
`U.S. Constitution.
`
`The U.S. Supreme Court on June 21, 2021 held that the issuance of Final
`
`Written Decisions by the PTAB violated the Appointments Clause of the U.S.
`
`Constitution. See, United States v. Arthrex, Inc., 141 S. Ct. 1970, 1985, 210 L. Ed.
`
`2d 268 (2021); see also, U.S. Const. Art. II, § 2, cl. 2. The rationale was that PTAB
`
`1
`
`

`

`Final Written Decisions were not subject to any review by a Presidential appointee.
`
`Id.
`
`The unconstitutionality of PTAB decisions to institute IPRs was not clearly
`
`resolved in Arthrex. However, the ruling indicated the unconstitutionality of PTAB
`
`Decisions to institute in that the Supreme Court held that the U.S. Constitution
`
`required at the very least, remand to the PTAB for further review of the original
`
`Petition by the Director of the U.S. Patent & Trademark Office. See, id., 141 S. Ct.
`
`at 1987-88. That was more than a remand for merely review of the Final Written
`
`Decision, which had not been altered in Arthrex during the appeal process.
`
`Subsequent Federal Circuit jurisprudence indicates that there is a
`
`constitutional infirmity in PTAB institution decisions, as well. For example, Judge
`
`Newman of the Federal Circuit recently expressed her belief that PTAB institution
`
`decisions were unconstitutional in a concurrence in the recent Federal Circuit
`
`decision Mobility Workx, LLC v. Unified Pats., LLC, 15 F.4th 1146 (Fed. Cir.
`
`2021)(remanded for review of the Final Written Decision by the Director). Judge
`
`Newman observed:
`
`Guided by the Supreme Court's recent decision in Arthrex, the
`procedure of institution appears likely to violate the Appointments
`Clause, for institution, as it is currently conducted by the PTAB, is a
`final decision of an inferior officer, without supervision or control or
`review by a principal officer of the agency.
`
`
`
`
`
`
`
`
` Id.
`
`
`
`
`
`2
`
`

`

`
`
`Based on Arthrex, therefore, the Final Written Decisions (Papers 81 and 113)
`
`and the Decision to Institute (Paper 13) issued in this IPR were all
`
`unconstitutionally issued.
`
`
`
`The remedy for that unconstitutionality in the present IPR, however, must be
`
`different from that in Arthrex and Mobility Workx. In both of those cases, the
`
`constitutionally-infirm Final Written Decision was not altered by the Federal Circuit
`
`or the Supreme Court, and a simple remand for reconsideration by the Director
`
`probably was considered adequate to correct the constitutional defect.
`
`
`
`In contrast, in the present IPR, the Federal Circuit issued a reversal due not to
`
`constitutionality of any aspect of the IPR, but rather based on the Federal Circuit’s
`
`substitution of its own fact finding for that of the Board based on the current record.
`
`See Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1279 (Fed. Cir. 2021).
`
`Consequently, the Federal Circuit decision, on return to the PTAB and absent any
`
`other action by the Board here, would have the Board act to issue a new Final
`
`Written Decision to correct the constitutionally void Final Written Decision of July
`
`29, 2020 (Paper 113, herein “the 2020 Final Written Decision”).
`
`
`
`A major problem exists in that both the 2020 Final Written Decision and the
`
`Decision to Institute in this case did not comply with the U.S. Constitution. It is not
`
`clear that there is even a lawfully convened IPR here, and that is required before a
`
`3
`
`

`

`new Final Written Decision can be issued by the Board to comply with the mandate
`
`of the Federal Circuit.
`
`
`
`The Board, as it now resumes control of this IPR after appeal and for the first
`
`time exercises valid Constitutional authority over the ‘646 patent, must therefore
`
`address where exactly this IPR is procedurally and whether there is in fact an IPR
`
`that has been instituted lawfully.
`
`B. At this stage, effectively before lawful institution of the IPR and
`before a Final Written Decision, the Board can and should
`reconsider its Decision to Institute.
`
`Because the institution of this IPR and the 2020 Final Written Decision were
`
`
`
`not constitutionally issued, the state of the present IPR seems to be the point just
`
`before issuance of a Decision as to whether to institute an IPR. At the very least,
`
`however, the procedural status of this IPR is a point in time prior to the issuance of
`
`a lawful Final Written Decision.
`
`It is well established that the PTAB has inherent authority to reconsider its
`
`decisions, and may fairly freely decide to reconsider an earlier decision to institute,
`
`especially where an IPR is modified on appeal.
`
`For example, in the BioDelivery Sciences case, an IPR was conducted, and a
`
`Final Written Decision was issued only for some of the challenges in a petition,
`
`finding all claims valid. See, BioDelivery Scis. Int'l, Inc. v. Aquestive Therapeutics,
`
`Inc., 935 F.3d 1362, 1364 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 254, 208 L. Ed.
`
`4
`
`

`

`2d 26 (2020). During appeal, the U.S. Supreme Court issued its decision in SAS
`
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 200 L. Ed. 2d 695 (2018) and the Federal
`
`Circuit remanded the appeal to the PTAB on motion to address all challenges of the
`
`petitioner under SAS. See, BioDelivery, 935 F.3d at 1364.
`
`On remand, the PTAB sua sponte reconsidered its original decision to
`
`institute the IPR, and denied review of all the challenges presented in the Petition,
`
`including those that it had addressed previously in the IPR trial. See, Biodelivery
`
`Sciences International, Inc., v. Aquestive Therapeutics, Inc., IPR2015-00165 (Paper
`
`91) at *7, *13 (PTAB, February 7, 2019), aff’d 935 F.3d 1362 (Fed. Cir. 2019). The
`
`decision was affirmed as not subject to appeal. See,935 F.3d at 1367.
`
`In other cases, findings after institution that impact on the Decision to
`
`Institute can also trigger reconsideration and denial of the decision to institute.
`
`In Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d 1382,
`
`(Fed. Cir. 2016), the PTAB instituted an IPR, but then during discovery it was
`
`learned that the petitioners had failed to include a real party in interest as required
`
`by 35 U.S.C. § 312(a)(2). Id. at 1383. The PTAB on motion vacated the institution
`
`decisions and terminated the proceedings. Id. On appeal, the Federal Circuit held
`
`that the PTAB has inherent authority to reconsider institution decisions that was
`
`consistent with both the relevant statutes and regulations. See, Id. at 1385-86.
`
`5
`
`

`

`Under the current circumstances, where there has never been a valid Final
`
`Written Decision or even institution decision, the Board clearly has authority to
`
`reconsider its Decision to Institute the present IPR. Given the constitutional
`
`infirmities of the IPR procedure, Patent Owner therefore respectfully requests that
`
`the Board reconsider its Decision to Institute on March 30, 2017 (Paper 13).
`
`C.
`
`In reconsidering its Decision to Institute, the Board should
`consider the later-discovered facts that prohibit the Board from
`hearing testimony that was offered in the Petition under U.S.
`Patent & Trademark Office regulations.
`
`
`
`
`In the present case, the Board, in reconsidering its Decision to Institute this
`
`IPR, should take notice of facts that were discovered after its Decision that would
`
`have impacted on that Decision. See, Medtronic, 839 F.3d at 1385 (affirming
`
`PTAB’s reconsideration and denial of institution on later discovery of absence of an
`
`indispensable party); see also, GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1310,
`
`1313 (Fed. Cir. 2015) (affirming PTAB’s reconsideration and denial of institution
`
`on later discovery that petitioner had filed a civil action challenging the validity of a
`
`claim of the patent).
`
`
`
`In the present case, the Petition relied primarily on the testimony of its expert,
`
`James Gandy, regarding Linz. See, e.g., Declaration of James Gandy, Ex. 1002,
`
`para. 36 and 42 to 47.
`
`
`
`A later-discovered fact in this case, however, was that James Gandy had been
`
`the Primary Examiner that issued the Linz patent. See Ex. 2019 at 29:8-30:13.
`
`6
`
`

`

`Examiner Gandy’s involvement with the Linz patent prosecution was left
`
`unmentioned in his Declaration and in the Petition, and a subsequent Gandy
`
`declaration even misleadingly concealed it, with Gandy stating:
`
`It is further my opinion that the Linz patent examiner
`understood this [“that Linz is directed to a gravity feed
`dispenser for dispensing and displaying cylindrical articles”]
`given that 6 of the 7 patent references cited on the first page of
`Linz are directed to dispensers for cylindrical articles.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Ex. 1018, para. 39 [emphasis added].
`
`In later deposition, Examiner Gandy admitted that the “Linz patent examiner,” was,
`
`in fact, Assistant Examiner Linda Brooks, whom he supervised. See, Ex. 2019,
`
`29:8-30:13.1
`
`
`
`Another later-discovered “fact” also is the prejudice resulting from Examiner
`
`Gandy’s testimony, in that the Federal Circuit, relying on that testimony, ruled that
`
`the evidentiary record including Examiner Gandy’s Linz testimony establishes
`
`invalidity of the ‘646 patent based on the challenges based on Linz. See Campbell
`
`Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1279 (Fed. Cir. 2021). 2
`
`
`1 The deceptive concealment of the impropriety of the testimony of Examiner
`Gandy by Petitioners can also give rise to the imposition of sanctions for
`Petitioners’ failure to comply with their duty of candor. See, 37 CFR § 42.11, and
`42.12, generally. At this stage of the proceedings, request for sanctions is not being
`made, but if the Board deems it appropriate, sanctions directed to the Petitioners
`misconduct definitely seem warranted and should be considered, including an order
`precluding Petitioners from asserting any challenges based on Linz. See, 37 CFR
`§42.12(b)(3).
`2 It should be noted that the Federal Circuit reversal decision only applies to the
`
`7
`
`

`

`
`
`These new facts that were discovered after the Decision to Institute give rise
`
`to the unavoidable conclusion that, under the U.S. Patent & Trademark Office
`
`regulations under which the Board operates, the Board could not lawfully receive or
`
`consider the testimony of Examiner regarding Linz in support of the Petition.3
`
`
`
`With the evidentiary record corrected and the Board refusing to entertain or
`
`consider the testimony of Examiner Gandy regarding the preclusive prior-art effect
`
`of Linz on the ‘646 patent, institution of review of the ‘646 patent should clearly not
`
`be instituted.
`
`D.
`
`Under U.S. Patent & Trademark Office regulations, the Board
`cannot receive or hear the testimony of Examiner Gandy
`regarding the preclusive prior-art effect of the Linz patent that
`he himself issued.
`
`In reconsidering the Decision to Institute, the Board must of course comply
`
`
`
`with all applicable U.S. Patent & Trademark Office regulations. That includes the
`
`U.S. Patent & Trademark Office regulations that prohibit the Board from
`
`
`extent that the record before the Board after return remains unchanged.
`
` 3
`
` Patent Owner did file a motion to exclude the portions of the Declaration of
`Examiner Gandy regarding Linz (See, Paper 102), and that motion was
`subsequently denied. See, Paper 111, at 7-10. However, consideration of that
`motion only occurred after the unconstitutional institution of the IPR procedure
`here, and the requested excluded testimony has never been addressed in a
`constitutionally permissible Final Written Decision. That motion therefore should
`have no effect on reconsideration of the Decision to Institute here, which should be
`addressed as nunc pro tunc. But, if the Board believes that the decision denying the
`exclusion of the testimony of Examiner Gandy regarding Linz should have force at
`this point after Arthrex, then reconsideration of that decision is requested as well for
`the reason set out herein.
`
`8
`
`

`

`entertaining the testimony of Examiner Gandy regarding the preclusive prior-art
`
`effect of the Linz patent that he issued as its Primary Examiner.
`
`1. Under U.S. Patent & Trademark Office regulations, the Board
` cannot receive expert testimony of an Examiner regarding the
` Examiner’s activities at the Patent Office.
`
`
`
`U.S. Patent & Trademark Office regulations generally do not allow testimony
`
`by an Examiner. See Manual of Patent Examining Procedure (“MPEP”) §1701.01
`
`(“It is the policy of the United States Patent and Trademark Office (USPTO) that its
`
`employees, including patent examiners, will not appear as witnesses or give
`
`testimony in legal proceedings, except under the conditions specified in 37 CFR
`
`Part 104, Subpart C.”).
`
`The conditions specified in 37 CFR Part 104, Subpart C, provide that “[a]n
`
`employee may not give testimony … without the approval of the General Counsel.”
`
`CFR §104.22(b). Furthermore, employees “shall not provide expert testimony in
`
`any legal proceedings regarding Office information, subjects, or activities except on
`
`behalf of the United States or a party represented by the United States Department
`
`of Justice.” CFR §104.22(b).
`
`The term “employee” means any current or former officer or employee of the
`
`Office. See 37 CFR §104.1. The term “legal proceedings” means any stages of
`
`“judicial or administrative actions, hearings, investigations, or similar proceedings
`
`9
`
`

`

`before courts, commissions, boards or other tribunals, foreign or domestic”, which
`
`certainly includes the PTAB. Id.
`
`The provisions regarding employee testimony set out “the policies and
`
`procedures of the Office regarding the testimony of employees as witnesses in legal
`
`proceedings”, 37 CFR §104.21(a), and, as such, the restrictions on testimony are
`
`clearly not just controlling of the employee action. They also restrict the Board so
`
`that it cannot allow a former employee to testify in legal proceedings before it
`
`without violating the U.S. Patent & Trademark Office regulations of 37 CFR Part
`
`104.4
`
`There are two exceptions to this prohibition that would allow the Board to
`
`receive and consider against Examiner testimony, and those are set out at section
`
`104.21(b):
`
`(b) Exceptions. This subpart does not apply to any legal proceeding in
`which:
`
`(1) An employee is to testify regarding facts or events that are
`unrelated to official business; or
`
`(2) A former employee is to testify as an expert in connection with
`
`a particular matter in which the former employee did not participate
`personally while at the Office.
`
`
`
`
`
`
`
`
`
`
`
`37 CFR §104.21(b) [emphasis added].
`
`
`4 It may also be noted that similar regulations of the Department of Commerce, the
`agency of which the U.S. Patent & Trademark Office is a part, also apply. See 15
`CFR §§15.11- 15.16. In particular, §15.16 restricts expert testimony by former
`employees in a manner similar to that in 37 CFR §104.22(b).
`
`
`10
`
`

`

`Applying these regulations to Examiner Gandy’s testimony, it is clear that the
`
`Board cannot receive or consider in this legal proceeding.
`
`
`
`
`
`2. Under the regulations, the Board cannot receive or consider
` the testimony of Examiner Gandy on the subject of the
`
` preclusive prior-art effect of the Linz patent that he himself
` issued.
`
`
`
`
`
`
`The testimony of Examiner Gandy was that of an employee, as defined in the
`
`regulations, and his testimony regarding Linz did not come under either of the
`
`permissible exceptions to the prohibition of his testimony.
`
`Examiner Gandy’s expert testimony was about Linz, which was asserted as
`
`prior art under pre-AIA 35 U.S.C. § 102(b), which states that “A person shall be
`
`entitled to a patent unless … (b) the invention was patented or described in a
`
`printed publication in this or a foreign country … more than one year prior to the
`
`date of the application for patent in the United States”. 35 U.S.C. § 102(b) (1972).
`
`Examiner Gandy’s testimony was clearly prohibited by the blanket restriction
`
`to all U.S. Patent & Trademark Office employee expert testimony of the MPEP and
`
`37 CFR Part 104, Subpart C. It also cannot be said that Examiner Gandy’s
`
`testimony regarding Linz falls under either of the exceptions of 37 CFR §104.21(b)
`
`that would permit its consideration by the Board.
`
`As to the first exception (“unrelated to official business”), as an official
`
`patent publication of the Office, Linz was clearly not “unrelated to official
`
`business” of the U.S. Patent & Trademark Office.
`
`11
`
`

`

`As to the second exception (“former employee did not participate
`
`personally”), Examiner Gandy’s expert testimony was to what was “patented or
`
`described” in Linz, as well as how the patent disclosure would be understood, even
`
`going so far as to provide a hindsight-guided drawing of Linz modified to show
`
`what article the Linz disclosure would suggest. See, e.g., Ex. 1002, paras. 42- 47.
`
`Because Linz was a design patent, what was patented and what was described
`
`in the patent were exactly the subject matter, i.e., the scope of a design patent
`
`disclosure, that was unavoidably addressed in the examination and grant of Linz,
`
`and in which Examiner Gandy participated personally while at the Office. See,
`
`generally, MPEP, sec. 1504 (issues raised in examination of design patents), see
`
`also, Friedman v. Lehman, 95-2077(NHJ), 1996 WL 652768, at *4 (D.D.C. June
`
`20, 1996) (primary examiner who performed very short (5 minutes) review of
`
`subordinate examiner's recommendations “personally participated” in the
`
`application process).
`
`In addition, Examiner Gandy’s hindsight-guided fantasy of a hypothetical
`
`article that could be placed in the Linz dispenser was impermissible examiner
`
`testimony because, even when authorized to testify, an examiner cannot provide
`
`testimony delving into “hypothetical and speculative areas”. See Western Electric
`
`Co. v. Piezo Technology, Inc., 860 F.2d 428, 432 (Fed. Cir. 1988).
`
`12
`
`

`

`Accordingly, under the U.S. Patent & Trademark Office regulations, the
`
`Board could not receive testimony from Examiner Gandy regarding the preclusive
`
`prior-art effect of the Linz patent that he himself issued.
`
`The portions of the Petition and Exhibit 1002 that should be disregarded, and
`
`preferably expunged, are Ex. 1002, paras. 36, 42-56 and 65-79, and Petition, pages
`
`12-13, 27-37, and 42-51.
`
`When the institution is reconsidered with those portions absent, it is clear that
`
`institution here is not appropriate and should be denied.
`
`
`
`3. There can be no waiver of the obligation of the Board to
` disregard Examiner Gandy’s testimony regarding Linz.
`
`
`
`
`As point out above, the Board’s earlier decision refusing to exclude the
`
`improper testimony of Examiner Gandy is not applicable here in a nunc pro tunc
`
`reconsideration (or first constitutionally valid consideration) of whether to institute
`
`this IPR. However, the decision on the motion to exclude did focus on waiver of the
`
`right to exclude Examiner Gandy’s testimony.
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`In issues of evidentiary deficiency, like hearsay or relevance, waiver arises if
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`no timely objection is raised, and the deficiency of the evidence is waived. See, e.g.,
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`Com. Contractors, Inc. v. United States, 154 F.3d 1357, 1367 (Fed. Cir.
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`1998)(hearsay objections waived).
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`In contrast, requirements of conduct of the tribunal, notably jurisdiction, are
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`not waived by mere delay or inaction. See, GTTX, INC., 789 F.3d at 1313 (no
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`waiver for invoking the “jurisdictional limit” of 35 U.S.C. 325(a)(1) late); see also,
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`BioDelivery Scis. Int'l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205, 1209
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`(Fed. Cir. 2018)(no waiver of expanded IPR under SAS by late assertion).
`
`The Patent Office regulations that prohibit the Board from hearing the Gandy
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`Linz testimony go directly to the conduct of the tribunal, defining the subject matter
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`that the PTAB can hear. They therefore are “jurisdictional” in nature, not
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`permissible evidentiary defects, and waiver of the tribunal’s compliance with those
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`regulations by inaction or delay is not possible.
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`Reconsideration without the testimony of Examiner Gandy
`regarding the preclusive procedural effect of Linz will require
`denial of institution.
`
`E.
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`
`
`
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`Generally, an inter partes review may be instituted only if the information
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`presented in the Petition and Preliminary Response shows that there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least one of the claims
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`challenged in the Petition. See 35 U.S.C. § 314(a).
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`In this case, the reconsideration of the decision to institute should be based on
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`only the information presented in the Petition, except without the unreviewable
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`testimony of Examiner Gandy and associated portions of the Petition. See,
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`BioDelivery Sciences, IPR2015-00165 (Paper 91) at *7. An additional limitation on
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`the reconsideration of the Decision to Institute is that, in the recent appeal of this
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`IPR, the Federal Circuit held that the record currently before the Board, including
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`the improper Examiner Gandy testimony, was sufficient to show obviousness of the
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`‘646 patent based on Linz.
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`Without that Gandy testimony, however, the Federal Circuit decision is not
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`controlling, and all the challenges based on Linz have no likelihood of prevailing.
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`No evidence except Gandy’s testimony shows how the designer of ordinary skill in
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`the art would understand or use Linz or combine it with other references, and the
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`determination that Linz was a primary reference does not control, since that was
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`also based on the improperly considered Linz drawings of Examiner Gandy, as well
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`as his testimony regarding the Linz prosecution. See, Campbell Soup Co. v. Gamon
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`Plus, Inc., 939 F.3d 1335, 1340-41 (Fed. Cir. 2019)
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`Apart from the challenges based on Linz, all other challenges were dismissed
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`or withdrawn at various stages for reasons that can readily serve to deny institution
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`for those challenges on reconsideration here.
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`III. CONCLUSION
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`
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`For the foregoing reasons, Patent Owner requests that the Board reconsider
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`the Decision to Institute this IPR without the testimony of Examiner Gandy
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`regarding Linz, and deny institution of this IPR.
`
`October 29, 2021
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`
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`Respectfully submitted,
`
`
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`
`
`/Andrew L. Tiajoloff/
`Andrew L. Tiajoloff
`Attorney for Patent Owner
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IPR2017-00094
`
`March 30, 2010
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`
`
`Case No.:
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`U.S. Patent No.: D612,646
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`Issue Date:
`
`Title:
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`
`
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`
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`GRAVITY FEED DISPENSER DISPLAY
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`
`
`
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`CERTIFICATE OF COMPLIANCE
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`
`
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`Pursuant to 37 C.F.R. § 42.24, I hereby certify that the foregoing PATENT
`
`OWNER’S MOTION FOR RECONSIDERATION AND DENIAL OF
`
`INSTITUTION OF INTER PARTES REVIEW complies with the relevant type-
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`volume limitations of 37 C.F.R. §§ 42.6 and 42.24.
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`This brief is typed in Times New Roman (14-point) and is 15 pages in
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`length.
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`
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`Dated: October 29, 2021
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`
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`By: /Andrew L. Tiajoloff/
` Andrew L. Tiajoloff
`Reg. No. 31,575
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`
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`1
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`6
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Case No.:
`
`U.S. Patent No.: D612,646
`
`Issue Date:
`
`Title:
`
`
`
`
`
`
`
`
`IPR2017-00094
`
`March 30, 2010
`
`GRAVITY FEED DISPENSER DISPLAY
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
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`service was made on the Petitioners as detailed below.
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`Date of Service:
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`Manner of service: email to:
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`
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`
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`
`
`Dated: October 29, 2021
`
`tracy.quinn@hklaw.com,
`steven.jedlinski@hklaw.com,
`mpavane@davisfirm.com,
`
`
`
`
`
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`Document served:
`
`
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`
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`PATENT OWNER’S MOTION FOR
`RECONSIDERATION AND DENIAL OF
`INSTITUTION OF INTER PARTES REVIEW
`
`
`Persons served: Tracy Quinn, Steven Jedlinski, Martin Pavane,
`
`
` October 29, 2021 /Andrew L. Tiajoloff/
` Andrew L. Tiajoloff
`
`
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`4
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`7
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