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 REQUEST FOR DIRECTOR REVIEW
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`BACKGROUND ............................................................................................. 1
`
`I.
`
` First Final Written Decision and Federal Circuit Reversal ............................ 2
`
`Second Final Written Decision and Federal Circuit Reversal ......................... 3
`
`Relief requested ............................................................................................... 4
`
`II.
`
`Legal Standard ................................................................................................ 4
`
`III. The Board violated U.S. Patent & Trademark Office regulations in
`receiving or considering the testimony of Examiner Gandy regarding
`the preclusive prior-art effect of the Linz patent that Examiner Gandy
`himself issued. ................................................................................................. 5
`
` A. U.S. Patent & Trademark Office regulations prohibit the PTAB
`from receiving expert testimony from an Examiner, unless it is
`about a matter in which the Examiner did not participate
`personally. ............................................................................................ 5
`
`B. Under the U.S. Patent & Trademark Office regulations, the
`Board could not 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. ................................................................... 7
`
`C.
`
`There could be no waiver of the prohibition of the Board
`receiving Examiner Gandy’s testimony regarding Linz.. ..................... 10
`
`IV. Petitioners’ submission of Examiner Gandy’s testimony regarding
`
`Linz without any assertion that Examiner Gandy himself had been the
`
`Primary Examiner that issued Linz was inequitable conduct that should
`
`be addressed on review by the Director……………………………............11
`
`V.
`
`
`
`VI. CONCLUSION……………………………………………………….........15
`
`
`
`The Board erred in use of Examiner Gandy’s testimony regarding Linz
`because it recognized that the testimony was guided purely by
`impermissible hindsight.……………………………………………...........13
`
`i
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`

`

`TABLE OF AUTHORITIES
`
`
`Page
`
`Cases
`
`Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308 (Fed. Cir. 1999)………………….12
`
`BioDelivery Scis. Int'l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205
`
`(Fed. Cir. 2018)…………………………………………………………….11
`
`Campbell Soup Co. v. Gamon Plus, Inc., 939 F.3d 1335 (Fed. Cir. 2019).……3, 14
`
`Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268 (Fed. Cir. 2021). ...........1, 3
`
`Com. Contractors, Inc. v. United States, 154 F.3d 1357 (Fed. Cir. 1998)…..........10
`
`Friedman v. Lehman, 95-2077(NHJ), 1996 WL 652768 (D.D.C. June 20, 1996). ... 9
`
`GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir. 2015). ................................10
`
`Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012)…………….….....14
`
`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) ............................................................................................... 9
`
`
`
`
`Statutes
`
`35 U.S.C. § 102(b) (1972) ......................................................................................... 8
`
`35 U.S.C. § 282 .......................................................................................................12
`
`35 U.S.C. § 325(a)(1) ...............................................................................................11
`
`U.S. Const. Art. II, § 2, cl. 2 ..................................................................................... 4
`
`
`
`
`
`ii
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`

`

`
`
`Regulations
`
`15 CFR §§15.11- 15.16 .............................................................................................. 7
`
`15 CFR §15.16 ........................................................................................................... 7
`
`37 CFR §104.1 ........................................................................................................... 6
`
`37 CFR §104.21(a) ..................................................................................................... 6
`
`37 CFR §104.21(b) ................................................................................................7, 8
`
`37 CFR §104.22(b) ................................................................................................6, 7
`
`37 CFR § 42.11 ................................................................................................. 11, 13
`
`37 CFR § 42.12 ........................................................................................................10
`
`37 CFR §42.12(b)(3) ................................................................................................13
`
`37 CFR Part 104, Subpart C ............................................................................ passim
`
`Manual of Patent Examining Procedure §1504 ......................................................... 9
`
`Manual of Patent Examining Procedure §1701.01 ………………………….......... 5
`
`
`
`
`
`
`
`
`
`
`
`
`iii
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`

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`Patent Owner Gamon Plus, Inc. requests rehearing under the ruling in United
`
`States v. Arthrex, Inc., 141 S. Ct. 1970 (2021) and under the USPTO rules
`
`implementing that decision.
`
`This decision is being filed within the 30-day deadline after the mandate on
`
`October 29, 2021 of the Federal Circuit ruling in Campbell Soup Co. v. Gamon
`
`Plus, Inc., 10 F.4th 1268 (Fed. Cir. 2021), which reversed the Final Written
`
`Decision dated July 29, 2020 (Paper 113, herein “the 2020 Final Written
`
`Decision”), which had found that the sole claim U.S. Patent D612,646 (“the ‘646
`
`patent”) was nonobvious and valid.
`
`
`
`I.
`
`BACKGROUND
`
`This proceeding derives from a petition filed in October 2016. A number of
`
`challenges to the claim of the ‘646 patent were presented, including challenges
`
`based on Linz (Ex. 1008, U.S. Patent Des. 404,622), a reference that had been cited
`
`in the original prosecution of the ‘646 patent. The petition relied for its challenges
`
`based on Linz on the expert testimony of James Gandy, whose declaration posited
`
`an expanded understanding of the teachings of Linz that one of skill in the art would
`
`have, which went substantially beyond what was taught on the face of the Linz
`
`patent. See Ex. 1002, paras. 36, 42-58 and 65, 67-79, and Petition, pages 12-13, 27-
`
`37, and 42-51.
`
`1
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`

`

`Based on the declaration of Mr. Gandy with the Petition, the Board instituted
`
`trial of some of the challenges based on Linz. See Institution Decision, Paper 13, at
`
`35.
`
`First Final Written Decision and Federal Circuit Reversal
`
`More than a year after the initial filing of the Gandy declaration (Ex. 1002)
`
`and a second declaration of Mr. Gandy (Ex. 1018), Mr. Gandy was deposed, and he
`
`stated for the first time that he had been the Primary Examiner that issued Linz.
`
`Ex. 2019, at 11. That fact was reported to the Board by Patent Owner in a motion
`
`for observations. See Paper 50 at 1. Prior to that, however, Petitioners had nowhere
`
`mentioned in the petition or in Mr. Gandy’s declaration that Examiner Gandy had
`
`been the Primary Examiner that issued Linz.
`
`The Board subsequently issued a first Final Written Decision that referred to
`
`the declaration of Examiner Gandy, but held the ‘646 patent valid over all
`
`challenges, including Linz, which was held to not be a suitable primary reference.
`
`See Paper 81, 2018 Final Written Decision at 33-34.
`
`On a first appeal, however, the Federal Circuit, echoing the testimony of
`
`Examiner Gandy regarding Linz, including a direct reference to the significance of
`
`the prosecution of Linz, reversed the Board finding that Linz was not a primary
`
`reference, and remanded to the Board for consideration of all challenges based on
`
`2
`
`

`

`Linz and all other non-instituted challenges under pursuant to the SAS decision.
`
`Campbell Soup Co. v. Gamon Plus, Inc., 939 F.3d 1335, 1342 (Fed. Cir. 2019).
`
`Second Final Written Decision and Federal Circuit Reversal
`
`On remand, Patent Owner filed a motion to exclude the testimony of
`
`Examiner Gandy regarding Linz, but the Board denied that motion on a theory of
`
`waiver. See Patent Owner Motion to Exclude, Paper 102; Decision, Paper 111, at 7-
`
`10.
`
`held:
`
`The Board then issued its 2020 Final Written Decision in which the Board
`
` that Petitioners had made out a weak case for obviousness guided by
`
`hindsight based on Linz, but
`
` that the Patent Owner’s strong showing of secondary considerations of
`
`commercial success, widespread copying, and praise of the patented
`
`displays overcame that weak, hindsight-guided showing.
`
`See 2020 Final Written Decision at 60-66.
`
`On appeal the Federal Circuit refused to disturb the Board’s finding that there
`
`had been a weak showing of obviousness based on Linz. See, Campbell Soup Co. v.
`
`Gamon Plus, Inc., 10 F.4th at 1276. At the same time, however, the Federal Circuit
`
`reversed the Board’s findings of commercial success by rejecting the Board’s
`
`3
`
`

`

`factual finding of nexus to the patented design, and held that the ‘646 patent claim
`
`was obvious. Id. at 1276-79.
`
`The Federal Circuit mandate issued on October 29, 2021. 1
`
`Relief requested
`
`For the reasons set out here, Patent Owner requests that the Director review
`
`this IPR under Arthrex and associated rules of the USPTO, reconsider the
`
`acceptance of and expunge the testimony to the Board of Examiner Gandy
`
`regarding the Linz patent that he himself issued and Petitioners’ argument
`
`incorporating that testimony2. Based on the corrected record, the Director is asked
`
`to vacate the Board’s finding that Petitioners had made a weak showing of
`
`obviousness based on Linz, and rehear the petition without the improperly received
`
`Examiner testimony, by trial or as to decision to institute.
`
`II.
`
`Legal Standard
`
`In Arthrex, the U.S. Supreme Court held that the U.S. Constitution required at
`
`the very least, a Final Written Decision be remanded after appeal to the Federal
`
`Circuit for the Director “to decide whether to rehear the petition”. See, id., 141 S.
`
`Ct. at 1987-88, U.S. Const. Art. II, § 2, cl. 2.
`
`
`1 All other challenges except those based on Linz have been withdrawn or were held
`to have failed, and are no longer in issue.
`2 The matter to be expunged is Ex. 1002, paras. 36, 42-58 and 65, 67-79, and
`Petition, pages 12-13, 27-37, and 42-51, and Ex. 1018, paras. 39-57, and footnotes 3
`and 4, as well as referential inclusions of Examiner Gandy’s testimony in other
`documents. See, e.g., Ex. 1020, Reply Declaration of Steven Visser para. 32.
`
`4
`
`

`

`The Director’s review may address any issue, including issues of fact and
`
`issues of law, and will be de novo. Arthrex FAQ, Question A1, www.uspto.gov/
`
`patents/ patent-trial-and-appeal-board/procedures/arthrex-qas.
`
`In this IPR, the Board erred by accepting the testimony of Examiner Gandy
`
`regarding Linz, and by relying on admitted hindsight. Furthermore, the submission
`
`of Examiner Gandy’s testimony constituted inequitable conduct by Petitioners.
`
`
`
`
`
`Review and rehearing of the petition should therefore be granted here.
`
`III.
`
`The Board violated U.S. Patent & Trademark Office
`regulations in receiving or considering the testimony of
`Examiner Gandy regarding the preclusive prior-art effect of the
`Linz patent that Examiner Gandy himself issued.
`
`In an IPR proceeding, 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 prohibited the Board from entertaining the
`
`testimony of Examiner Gandy regarding the preclusive prior-art effect of Linz, a
`
`patent that he himself issued as its Primary Examiner.
`
`A. U.S. Patent & Trademark Office regulations prohibit the PTAB
`from receiving expert testimony from an Examiner, unless it is
`about a matter in which the Examiner did not participate
`personally.
`
`
`
`As a general U.S. Patent & Trademark Office regulations prohibit 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
`
`5
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`

`

`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.” 37 CFR §104.22(b).
`
`Furthermore, the regulation states that 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) [emphasis supplied].
`
`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
`
`before courts, commissions, boards or other tribunals, foreign or domestic”, which
`
`certainly includes the PTAB. Id.
`
`The regulatory 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). As such, the restrictions on employee
`
`testimony are not just controlling of the action of an employee, but also restrict the
`
`conduct of PTAB proceedings so that the PTAB cannot allow a former employee to
`
`6
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`

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`testify in legal proceedings before it without violating the U.S. Patent & Trademark
`
`Office regulations of 37 CFR Part 104, Part C.3
`
`There are only two exceptions to this prohibition that would have allowed 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].
`
`
`Applying these regulations to Examiner Gandy’s testimony regarding Linz, it
`
`is clear that the Board could not properly receive or consider that testimony in this
`
`legal proceeding.
`
`B. Under the U.S. Patent & Trademark Office regulations, the Board
`could not 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.
`
`
`Examiner Gandy was and is an employee, as defined in the regulations, and
`
`Examiner Gandy’s expert testimony on any subject was prohibited under the
`
`3 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).
`
`
`7
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`

`

`blanket prohibition of all Patent Office employee expert testimony expressed in,
`
`e.g., MPEP and 37 CFR Part 104, Subpart C, unless the testimony were to fall under
`
`one of the exceptions of 37 CFR §104.21(b). Neither of those exceptions applies
`
`here, however.
`
`Examiner Gandy expressed his expert opinion as to Linz 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).
`
`
`
`The first exception of §104.21(b) (“unrelated to official business”) cannot
`
`possibly apply to Examiner Gandy’s testimony because the Linz patent was an
`
`official patent publication of the Office, and, as such, was clearly not “unrelated to
`
`official business” of the U.S. Patent & Trademark Office.
`
`As to the second exception of §104.21(b) (“former employee did not
`
`participate personally”), Examiner Gandy testified as an expert as to what was
`
`“patented or described” in Linz, as well as how the patent disclosure would be
`
`understood by one of ordinary skill in the art, 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.
`
`8
`
`

`

`Especially because Linz was a design patent where the claims and the
`
`disclosure are closely linked, what was patented and what was described in Linz
`
`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 guess 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). That prohibition
`
`would especially apply to patents that he himself had issued.
`
`Accordingly, under the U.S. Patent & Trademark Office regulations and
`
`applicable law, the Board could not receive the proffered testimony from Examiner
`
`Gandy regarding the preclusive prior-art effect of the Linz patent, and those
`
`portions of his declarations, as well as the related portions of the Petition, should be
`
`expunged from the record, specifically Ex. 1002, paras. 36, 42-58 and 65, 68-72,
`
`9
`
`

`

`75, 77-79, Petition, pages 12-13, 27-37, and 42-51, and Ex. 1018, paras. 39-57, and
`
`footnotes 3 and 4, as well as referential inclusions of Examiner Gandy’s testimony
`
`in other documents. See Ex. 1020, Reply Declaration of Steven Visser, para. 32.
`
`
`C. There could be no waiver of the prohibition of the Board
`receiving Examiner Gandy’s testimony regarding Linz.
`
`
`During the remand of this IPR, the Board denied Patent Owner’s motion to
`
`exclude the improper testimony of Examiner Gandy. See, Patent Owner Motion to
`
`Exclude, Paper 102, and Decision, Paper 111, at 7-10. That decision was not legally
`
`correct, and should be reviewed by the Director de novo.
`
`The Board’s decision on the motion to exclude was clearly based on a
`
`misapprehension of the issue as a purely evidentiary defect in Examiner Gandy’s
`
`testimony, and for that reason the Board incorrectly relied on a theory of waiver to
`
`deny the motion. In fact, the issue was one of permissible procedure at the level of
`
`jurisdiction of the Board to hear a matter, and waiver could not apply.
`
`In issues of evidentiary deficiency, such as hearsay or relevance, waiver
`
`arises if no timely objection is raised, and the deficiency of the evidence is waived.
`
`See, e.g., Com. Contractors, Inc. v. United States, 154 F.3d 1357, 1367 (Fed. Cir.
`
`1998)(hearsay objections waived).
`
`In contrast, requirements of conduct of the tribunal, notably jurisdiction, are
`
`not waived by mere delay or inaction. See, GTNX, Inc. v. INTTRA, Inc., 789 F.3d
`
`10
`
`

`

`1309, 1313 (Fed. Cir. 2015) (no waiver for late invocation of the “jurisdictional
`
`limit” of 35 U.S.C. 325(a)(1)); see also, BioDelivery Scis. Int'l, Inc. v. Aquestive
`
`Therapeutics, Inc., 898 F.3d 1205, 1209 (Fed. Cir. 2018)(late assertion of demand
`
`for an expanded IPR under SAS not waived).
`
`The Patent Office regulations that prohibit the Board from hearing Examiner
`
`Gandy’s Linz testimony similarly go directly to the conduct of the tribunal, because
`
`they define the subject matter that the PTAB can hear. Those regulations
`
`consequently are “jurisdictional” in nature, not merely permissible evidentiary
`
`defects that can be waived by inaction or delay. Waiver of the Board’s compliance
`
`with those regulations was therefore not possible.
`
`The Director’s review and rehearing of the petition in this IPR with the
`
`impermissible Gandy testimony regarding Linz expunged is therefore appropriate
`
`here.
`
`IV.
`
`Petitioners’ submission of Examiner Gandy’s testimony
`regarding Linz without any assertion that Examiner Gandy
`himself had been the Primary Examiner that issued Linz was
`inequitable conduct that should be addressed on review by the
`Director.
`
`Under 37 CFR § 42.11, in an IPR proceeding “[p]arties and individuals
`
`
`
`involved in the proceeding have a duty of candor and good faith to the Office
`
`during the course of a proceeding.”
`
`
`
`In the Petition here, the challenges to the ‘646 patent based on Linz were
`
`11
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`

`

`based exclusively on the testimony of Examiner Gandy regarding Linz. However,
`
`nowhere in the declaration of Examiner Gandy does it give the slightest suggestion
`
`that he was involved in the examination of the application that issued as Linz.
`
`
`
`That silence was a violation of Petitioners’ duty of candor and good faith to
`
`the Board, and it had the deleterious and prejudicial effect of causing the Board to
`
`institute this IPR, which stripped the ‘646 patent of its presumption of validity
`
`under 35 U.S.C. § 282. That presumption was particularly strong for the ‘646
`
`patent, because Linz was before the PTO examiner during prosecution of the
`
`application that issued as the ‘646 patent. See, e.g., Al-Site Corp. v. VSI Int'l, Inc.,
`
`174 F.3d 1308, 1323 (Fed. Cir. 1999); Ex. 1001, at 2.
`
`
`
`Examiner Gandy’s involvement with the Linz patent prosecution was not
`
`only left unmentioned in his first declaration and in the Petition, but a subsequent
`
`Gandy declaration even more misleadingly concealed it. In that second declaration,
`
`Examiner Gandy stated that:
`
`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. 41 [emphasis added].
`
`12
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`

`

`That statement is a clear deceptive misdirection that cloaks the fact that Examiner
`
`Gandy was himself a “Linz patent examiner”, and this submission was a further
`
`violation of Petitioners’ duty of candor and good faith to the Board.
`
`
`
`It was only in a later deposition by Patent Owner that Examiner Gandy
`
`admitted that he was the Primary Examiner that issued Linz, and that “the Linz
`
`patent examiner,” that he referenced was, in fact, Assistant Examiner Linda Brooks,
`
`whom he had supervised. See, Ex. 2019, 29:8-30:13.
`
`
`
`In view of this inequitable conduct by Petitioners, the Director is asked to
`
`also consider, in reviewing this IPR de novo and deciding whether to rehear the
`
`Petition, whether there should be sanctions for Petitioners’ deceptive concealment
`
`of the personal involvement of Examiner Gandy in the issuance of the Linz patent,
`
`giving rise to a prohibition of his expert testimony regarding Linz. See, 37 CFR §
`
`42.11, and 42.12, generally. Those sanctions would properly warrant an order
`
`precluding Petitioners’ challenges based on Linz. See, 37 CFR §42.12(b)(3).
`
`V.
`
`The Board erred in use of Examiner Gandy’s testimony
`regarding Linz because it recognized that the testimony was
`guided purely by impermissible hindsight.
`
`In its 2020 Final Written Decision, the Board noted that the appearance of
`
`Linz with a cylindrical article as posited by Examiner Gandy was “a guess guided
`
`by hindsight” and an analysis “guided by hindsight reconstruction that uses the
`
`disclosure of the ‘646 patent as a roadmap”. See, Final Written Decision at 62, 66.
`
`13
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`

`

`The Board nonetheless concluded that Linz suggested the appearance of the
`
`patented design of the ‘646 patent based on the presumption that the can allegedly
`
`suggested by Linz “is somewhat similar” to the hindsight-created can added by
`
`Examiner Gandy to the Linz design. Id. at 61.
`
`Reliance on hindsight is prohibited in an obviousness analysis. See, e.g.,
`
`Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012). Accordingly,
`
`the finding of the Board that Linz suggested the claimed design should be reheard,
`
`with the proper legal standard that excludes any hindsight, even if the improper
`
`Gandy testimony regarding Linz were to be left in the record.
`
`It was clear that the Board’s rationale for accepting the hindsight in deference
`
`to the appellate ruling in Campbell Soup Co. v. Gamon Plus, Inc., 939 F.3d 1335
`
`(Fed. Cir. 2019), where the Federal Circuit, clearly being misled by the hindsight-
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`guided extrapolation of Linz by Examiner Gandy, commented that the differences
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`in design between Linz and the patented design were “ever-so-slight.” See, id. at
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`1340-41, 2020 Final Written Decision at 60, 62.
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`Fortunately, the Director’s decision as to whether to rehear a petition under
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`Arthrex need not comply with an earlier Federal Circuit decision on appeal, because
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`in Arthrex the U.S. Supreme Court remanded for Director review after the Federal
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`Circuit affirmed a PTAB ruling the patent was anticipated. If the Director were to
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`be bound by that previous ruling, the remand to the Director would be an empty
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`exercise that would not resolve the constitutional defect that Arthrex sought to cure.
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`That is even more the case here, where the Federal Circuit, based on hindsight,
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`reversed a PTAB finding of validity.
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`CONCLUSION
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`VI.
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`The Director is respectfully asked to order a rehearing of the present IPR with
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`the improper Gandy testimony regarding Linz expunged, either as a trial or new
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`decision whether to institute an IPR, and with a directive that the rehearing avoid
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`any reliance on hindsight.
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`The alternative to rehearing the petition would be that the PTO would now
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`have to hold the ‘646 patent obvious in view of Linz based on the testimony of
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`Examiner Gandy, the Examiner that issued Linz, in violation of USPTO regulations
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`regarding Examiner testimony, and based on what was determined by the Board to
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`be a hindsight-based interpretation of Linz. It also would be turning a blind eye to
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`Petitioners’ inequitable conduct in its petition and throughout this IPR in concealing
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`the fact that Examiner Gandy was the Primary Examiner in Linz.
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`Review and rehearing of the petition is therefore respectfully requested.
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`November 29, 2021
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`Tiajoloff & Kelly LLP
`Chrysler Building, 37th floor
`405 Lexington Avenue
`New York, NY 10174
`tel. 212-490-3285
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`Respectfully submitted,
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` /Andrew L. Tiajoloff/
`Andrew L. Tiajoloff
`Registration No. 31,575
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`Patent Owner’s Request for Director Review: IPR2017-00094
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, a copy of this Patent Owner’s Request for
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`Director Review has been served in its entirety on November 29, 2021, by
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`electronic mail to:
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`Tracy Quinn, Esq. at
`Steven Jedlinski, Esq. at
`Martin Pavane, Esq. at
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` November 29, 2021 /Andrew L. Tiajoloff/
` Andrew L. Tiajoloff
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`tracy.quinn@hklaw.com,
`steven.jedlinski@hklaw.com, and
`mpavane@davisfirm.com,
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