UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
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`INSTRUMENTATION LABORATORY COMPANY,
`Petitioner,
`
`v.
`
`HEMOSONICS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)
`____________
`
`Record of Oral Hearing
`Held: August 14, 2018
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`Before: JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and JEFFREY
`W. ABRAHAM, Administrative Patent Judges.
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`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`INSTRUMENTATION LABORATORY COMPANY,
`Petitioner,
`
`v.
`
`HEMOSONICS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)
`____________
`
`Record of Oral Hearing
`Held: August 14, 2018
`____________
`
`
`
`
`
`
`
`
`
`
`Before: JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and JEFFREY
`W. ABRAHAM, Administrative Patent Judges.
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`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)1
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`STEPHEN Y. CHOW, ESQUIRE
`Hsuanyeh Law Group, P.C.
`11 Beacon Street
`Suite 900
`Boston, Massachusetts 02108
`
`
`ON BEHALF OF PATENT OWNER:
`BRIAN W. NOLAN, ESQUIRE
`YING-ZI YANG, ESQUIRE
`Mayer Brown, LLP
`1221 Avenue of the Americas
`New York, New York 10020-1001
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
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`August 14, 2018, commencing at 1:00 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)1
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`P R O C E E D I N G S
`- - - - -
`JUDGE ABRAHAM: Good afternoon. We are here for the
`supplemental hearing in cases IPR2017-00852 regarding U.S. patent number
`9,272,280 and IPR2017-00855 regarding U.S. patent number 9,410,971. I
`am Judge Abraham. Joining with me in the hearing room is Judge Kokoski.
`And Judge Kalan should be joining us.
`Judge Kalan, are you there? We are having technical difficulties.
`There we go. Can you hear us now, Judge Kalan? They are still having
`trouble hearing us.
`(Pause in the proceedings.)
`JUDGE ABRAHAM: Thanks for your patience. As you can tell,
`it's going to be very important with Judge Kalan joining us from the Denver
`office to make sure you are in front of a microphone when you are speaking
`so that she can hear us. There's microphones at the desk and also at the
`podium.
`Also, if you have slides today, she can't see the screen, but she has
`a copy of the slide decks that you provided to us. So while you're doing
`your arguments, make sure you refer to the slide numbers so that she can
`follow along.
`Let's begin by having appearances from counsel, starting with
`Petitioner.
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`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)1
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`MR. CHOW: Stephen Chow from Hsuanyeh Law Group for
`Petitioner. With me are Gabriel Goldman and Ronda Moore of Burns &
`Levinson.
`JUDGE ABRAHAM: Welcome. Patent owner?
`MR. NOLAN: Good afternoon, Your Honor. Brian Nolan on
`behalf of Patent Owner, Hemosonics, from the firm of Mayer Brown in New
`York, with my colleague, Ying-Zi Yang, also from Mayer Brown, our New
`York office.
`JUDGE ABRAHAM: Good afternoon. Before we get started with
`the arguments, I wanted to address the objections to the slides. We received
`the objections from both parties. For the most part, I'm going to overrule the
`objections with a few exceptions which I'll talk about. Patent Owner, you
`objected to slide 14 of Petitioner's deck because it wasn't in the original set
`of slides that they sent you. But I didn't gather that there was any objection
`to the substance of the slide; is that accurate?
`MR. NOLAN: Well, Your Honor, we didn't really look at the
`substance for objections because it was more that they were able to respond
`to our slide deck to put this in. But I think that the arguments are going to
`speak for themselves. So if it's easier for the Board for us to withdraw that
`objection, I have no problem.
`JUDGE ABRAHAM: I was going to overrule it anyway because
`the substance seemed acceptable. Either way, I'm going to allow the
`arguments to be made based on the slide.
`MR. NOLAN: Thank you, Your Honor.
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`JUDGE ABRAHAM: Just to reiterate, the demonstratives are not
`coming in as evidence. They are just here to guide your argument. So that's
`part of the reason why I'm overruling them -- overruling the objections. I
`think the objection that you made to the slides 12 and 21 sort of contingent
`on their objecting to your slide, I think it was, 15, I'm going to allow you to
`use slide 15. So that moots your objections to slides 12 and 21.
`MR. NOLAN: You are correct, Your Honor. If slide 15 is
`considered allowable, then it would alleviate any rationale for our objection
`with respect to those slides.
`JUDGE ABRAHAM: I'm going to allow them to use slide 15
`because from what I can tell, they are citing to case law, and I'm not going to
`limit the cases that they can refer to because they haven't referred to them
`before. They have made those arguments before us in conversations we've
`had on the phone, so I'm going to allow them to refer to that case law. I
`don't want to limit them to what specific cases they can and can't cite. That's
`my rationale for that.
`Petitioner, you've raised several arguments or several objections
`that there's new arguments in the slides from Patent Owner. And there were
`lots of little bits and pieces here and there that you have raised. So what I'm
`going to do is, because it's going to be hard to say you can't use a certain
`bullet point, what I'm going to say is for Patent Owner I'm going to caution
`you that if you are making arguments that have not been raised before in a
`brief or in some other time on the record, you need to be careful about that.
`We offered you a chance to file a supplemental Patent Owner response,
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`Case IPR2017-00852 (Patent 9,727,280 B2)
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`which you declined. So now is not the time to raise new arguments. The
`slides that come to mind are slide 8 and slide 11, which I think you are
`towing the line there with the arguments. I'm not going to limit you up front
`as to what you want to argue, but to the extent that we, the panel, see
`something that we consider to be a new argument, we may ask you where
`the support is for that argument in your papers.
`Petitioner, if you think that they have crossed the line as well,
`bring it to our attention during your time, whether it's your opening or your
`rebuttal, but don't stand up and interrupt them during their argument time.
`We are aware of your concern. And you can also raise it to us during your
`time, and then we can flesh that out as we read the transcript as we move
`forward in the case. Does everybody understand how we are coming out on
`the objections to the slides?
`MR. NOLAN: Yes, Your Honor.
`MR. CHOW: Yes, Your Honor.
`JUDGE ABRAHAM: So with that, based on the hearing order that
`we submitted, each side will have 30 minutes total to argue. Petitioner, you
`go first. You can reserve up to half your time for rebuttal if you want. So
`whenever you are ready, please approach the podium. Just let me know how
`much time you would like to reserve.
`MR. CHOW: Good afternoon, Judge Abraham, Judge Kokoski
`and Judge Kalan. We will reserve 12 minutes for rebuttal.
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`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)1
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`
`This panel complied with SAS by instituting trial of the previously
`uninstituted grounds 2 of anticipation by Schubert in both the 852 and 855
`IPRs and grounds 3 to 14 of obviousness in the 855 IPR.
`Patent Owner declined Petitioner's proposal to add neutrally to the
`record of the newly instituted trial of the 14 grounds, and when asked by this
`panel declined to supplement its pre-institution responses. Petitioners did
`claim its right to reply to Patent Owner's responses and submitted
`supplemental replies based on both rebuttal and on previously made
`arguments and on the existing record made part of the trial. This included
`the declarations of Petitioner's expert, Dr. Mize.
`After Petitioner's replies, this panel allowed into evidence as 852
`IPR Exhibits 1065 and 1066, and 855 IPR Exhibits 1070 and 1071, the
`Patent Owner's characterizations of the Schubert disclosure in both the 950
`IPR petition and 950 IPR declaration of Dr. Diamond. The panel acted at
`least in part because the characterizations contradict Patent Owner's position
`here.
`
`The new evidence corroborates Petitioner's evidence and proves
`Petitioner's position and disproves Patent Owner's position as to an alleged
`gap in anticipation grounds 2 which the panel previously accepted in
`denying review of these grounds.
`Now, the Petitioners themselves quoted in the claim charts, for
`example, in the 852 petition and 23 and the 855 at 19 for Elements 1C
`language from Schubert paragraph 83, among other teachings, to support the
`argument that Schubert discloses embodiments e.g., where a first
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`measurement cavity can include intrinsic or extrinsic activators as would be
`used in INTEM and EXTEM assays respectively, while a second
`measurement assay -- second measurement cavity can include extrinsic
`activator in combination with cytochalasin D reagents as would be used in
`the FIBTEM assay.
`So referring to slide 6, the quoted part of paragraph 83 teaches that
`there are different reagents available which activate or suppress different
`parts of the coagulation cascade. Pentapharm GmbH, Munich, Germany, for
`example, amongst others, provide tests for intrinsic and extrinsic activation
`of a blood sample INTEM or EXTEM respectively, and also a test for
`extrinsic evidence activation in which the thrombocyte function is
`suppressed by administration of cytochalasin D, FIBTEM.
`Patent Owner argued that the quotations from and citations to
`Schubert did not explicitly teach the use of coagulation activators as reagents
`and thus left a gap that is allegedly the use of activators as a reagents in a
`missing element. But there is no gap if, as here, a POSA understands the
`Schubert language to disclose the use of coagulation activation reagents in
`the recited text. Petitioner quoted and cited specific teachings for the panel's
`evaluation in the petitions as to what a POSA would understand.
`Petitioner also identified Dr. Mize's opinion testimony. Now, an
`expert may testify as to a POSA's understanding of teachings in a reference.
`For example, in slide 8, we've noted some of the cases that support that
`proposition. And also an expert may also testify as to a POSA's technical
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`Case IPR2017-00852 (Patent 9,727,280 B2)
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`descriptions and as to the meaning of technical terms of art. And this is
`slide 9.
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`JUDGE ABRAHAM: Counsel, aren't a lot of the cases you cite in
`the context of claim construction?
`MR. CHOW: Yes. The point is that the claim construction is also
`applicable to what is shown -- what a POSA would understand, and that's the
`point. The opposing citation from the Patent Owner related to something
`that was a missing element. Here we are not talking about a missing
`element. But I think again, the evidence of in an anticipation case is a
`question of fact. To some extent the Board may view itself as a person of
`ordinary skill in the art. But once there is testimony of a person of ordinary
`skill in the art, what they would understand, we feel that that's something
`that is supported by these cases.
`JUDGE ABRAHAM: What evidence is there in the record that a
`person of ordinary skill in the art would understand that these tests have --
`MR. CHOW: We'll get to this in a minute. It is in the declaration
`of Dr. Mize, for example. He specifically talks about that. In the first
`instance, in every case the Board itself may look at the actual language and
`determine that for itself. But in this case, Dr. Mize did testify specifically as
`to what a person of ordinary skill in the art would recognize.
`So may I continue?
`JUDGE ABRAHAM: Yes.
`MR. CHOW: Okay. So Dr. Mize's testimony about a POSA's
`understanding supported by his experience in managing development of
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`various clinical tests as summarized in Exhibits 1004. And the Patent
`Owner has not questioned his competence to testify on this issue.
`So the first sentence, turning back to slide 6, the first sentence of
`the Schubert paragraph 83 recites different reagents which are available
`which activate or suppress parts of the coagulation cascade. The second
`sentence recites test for intrinsic and extrinsic activation. Now, the petitions
`themselves quoted in the claim charts these very two sentences for the plain
`association of these sentences that the coagulation activation reagents of the
`first sentence are related to the test for activation in the very next sentence.
`Now, Dr. Mize testified that a person of ordinary skill in the art
`would understand this association between the referenced coagulation
`reagents and the recited tests. And this is in slide 10. Now, Patent Owner
`itself in its 950 petition reads the same association in the same language of
`the '671 patent column 9 through -- lines 18 through 25. And that's slide 14.
`Now, indeed, as Dr. Mize testified, a person of ordinary skill in the
`art would understand that each of the tests recited in Schubert, INTEM,
`EXTEM and FIBTEM, as technical terms in the art, is defined by the use of
`particular coagulation activation reagents. Look at slide number 11.
`Now, the 852 petition and the 855 petition at 6 argue that the
`POSA typically would be familiar with the current landscape of tests citing
`Mize declaration, Exhibits 1003, paragraphs 14 through 16, where the state
`of the art expressly included at paragraph 39 INTEM, EXTEM and
`FIBTEM.
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`Dr. Diamond, Patent Owner's expert, testified to the same effect,
`EXTEM is an extrinsic activator of coagulation. INTEM is an intrinsic
`activator of coagulation. EXTEM along with FIBTEM activate clotting. In
`doing so, Dr. Diamond relied on the same language quoted from Schubert
`paragraph 83 and carried over at columns 9 at lines 18 through 25 of the '671
`patent. This is set forth in slide 16, but also at 852, Exhibit 1066,
`paragraph 91 and the corresponding 855, Exhibit 1071 at paragraph 91.
`All the evidence, the paragraph 83 language and its context in
`Schubert, the testimony of the experts, of both experts and Patent Owner's
`own assertion in its 950 petition show that there is no gap. There is no
`contrary evidence. Not even a suggestion that a POSA would understand
`paragraph 83 to disclose -- to not disclose the use of coagulation activation
`reagents with each of the INTEM, EXTEM and FIBTEM tests.
`Now, without any further showing by the Patent Owner, the
`preponderance of the evidence tips clearly for sustaining grounds 2, and
`claims 1 and 2 of the '280 patent and claims 1, 2, 6 to 8, 15 and 16 of the
`'971 patent should be rejected and cancelled.
`Let's turn to grounds 3 through 14. For each ground of the 855
`petition, Petitioner first made an argument of obviousness of combining
`references to disclose each and every element of the claim arranged as
`claimed in a manner enabling a POSA. So slide 19. Second, each -- the
`petition for each claim recited evidence in the claim chart for each claim
`element identified and in many cases quoting from the references in the --
`from the relevant references, the relevant teachings. And third, cited
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`Case IPR2017-00852 (Patent 9,727,280 B2)
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`additional evidence in specific paragraphs of the Mize declaration in specific
`support for the petition argument that the references teach in each and every
`claim element in a manner enabling a POSA.
`JUDGE ABRAHAM: What does that mean, arranged as claimed
`in a manner enabling a person of ordinary skill in the art?
`MR. CHOW: Well, I think it's -- well, it's a combination of how
`it's addressed for each claim element, that it's arranged as such and that put
`together, it's also the reader of a -- a POSA reading it would understand that
`these terms and pieces would be put together that enables the POSA to do --
`to fill in the claim element, to meet the claim element. That's really -- it's a
`broad definition, but it embraces the various types of showings under
`obviousness that is recognized under KSR, that is we don't need to have a
`specific teaching, suggestion or motivation. The fact finder and ultimately
`the deciding, as a matter of law, the decision-maker can take these pieces
`that are there and if it's as a matter of law, then put it together. We've laid
`this out in what we thought was something that the Board would understand,
`but we also referred to the testimony of Dr. Mize to put these together.
`And if I can finish this part, the cited paragraphs recite Dr. Mize's
`opinion as to the motivations of a POSA. Again, these opinions are
`supported by Dr. Mize's experience in managing development of various
`clinical tests. They are evidence to be countered, if at all, by evidence.
`In its preliminary and only response on grounds 3 to 14, the Patent
`Owner argued that Petitioner failed to make its arguments in the petition but
`under the streamlined IPR regulations impermissibly incorporated by
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`reference arguments of POSA motivation. This panel agreed, denying
`institution of trial of grounds 3 to 14.
`Petitioner maintains that the relevant arguments were made in the
`petition. And even though not required after KSR to prove obviousness,
`evidence of the POSA's motivation to combine was provided by the opinion
`testimony of Dr. Mize. Not mere argument.
`JUDGE ABRAHAM: Where in the petition is the evidence of
`motivation to combine?
`MR. CHOW: It's, as we've said, we set forth in the claim charts
`certainly the pieces that we think a POSA would combine. I think the
`question we have a dispute on is whether or not the additional evidence
`that's in the Dr. Mize declaration as to motivation needs to be considered or
`not. We believe it does need to be considered for reasons separate from the
`institution procedure.
`JUDGE ABRAHAM: Right. So my question is, your evidence of
`a motivation to combine, that's in the Mize declaration? Not in the petition
`itself?
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`MR. CHOW: Yes, that's correct. It's cited to in the petition.
`JUDGE ABRAHAM: You cite some paragraph numbers in the
`petition, but you don't ever say the words "motivation to combine" or
`anything to that effect in the petition?
`MR. CHOW: That's correct. We believe that there are multiple
`ways to combine as a part of obviousness. But, yes, that's correct.
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`JUDGE KALAN: So are you saying on slide 21 that SAS has
`lowered Petitioner's burden to make its case in the petition?
`MR. CHOW: No, I'm not saying that. I'm saying that the decision
`to -- on the petition was something as part of a streamlined schedule that
`works for pre SAS. In other words, in order to operate in a streamlined
`fashion, the Patent Office promulgated certain rules that made it easy that
`said you couldn't do things -- and different panels have viewed this
`somewhat differently, incorporate by reference arguments. Now, the statute
`itself talks about a petition only identifying evidence and identifying
`grounds. Now, where you draw the line between grounds and arguments, I
`mean, I understand certainly that in practice we can say certain things are
`argument.
`But in any case, what we are saying is that if -- the idea that if the
`Board has decided on grounds 3 to 14 that there is no argument of
`obviousness because it didn't mention specifically motivation in the petition,
`it was perfectly correct for it to reject the petition. But on the other hand,
`once the -- this is the Supreme Court decided that these grounds should be
`instituted anyway. So it would be against the idea of what SAS did to simply
`say, well, we decided against this in the petition, therefore, we've decided
`against it on the merits, because it's not decided on the merits. That's what
`I'm saying. It's not lowering the burden of the petition. The petition was
`there. The Supreme Court changed the effect of the petition even though
`that was not part of the regulations, but it changed certainly the practice of
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`many people, this panel, myself included. SAS changed some things
`drastically.
`So I can't say there's a case that says that, but if you read things,
`the idea is that if these things are supposed to be looked at on the merits,
`then one would consider what is stated in the Dr. Mize declaration. And
`that's what we really come down to. By commencing trial, the panel
`received evidence entered into the record as exhibits. And these included
`the Mize declaration in full. Patent Owner might have objected to these
`exhibits upon the original institution or upon the full institution, but it did
`not do so. It could have.
`Petitioner recited the duty of an administrative tribunal to consider
`all the evidence before it, and this is the evidence that's before it under Aqua
`Products, et cetera. And this panel has already assured that any final
`decision will be based on the full record developed during the trial, and that
`record includes the evidence in the Mize declarations.
`So Petitioner relies on obviousness grounds 3 to 14, on the
`arguments and evidence filed with the 855 petition and the evidence in the
`supporting declaration of Dr. Mize or summarized in Petitioner's
`supplemental reply. Patent Owner submitted no substantive evidence on
`grounds 3 to 14, even had to file a response after institution of trial. Under
`the rules it would not have had a right to sur-reply to Petitioner's reply. It
`should not be allowed to do so now to make a rebuttal argument that it
`waived by declining to file a response after institution when -- to which
`Petitioner could have replied.
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`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)1
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`Each of grounds 3 to 14 should be considered as presented in the
`855 petition and declaration reviewed by supplemental reply. Unless the
`record evidence itself to this panel, not the impermissible new argument or
`sur-reply, unless that evidence shows why a POSA would not combine the
`art as evidenced by the record for each particular ground, the preponderance
`of the evidence weighs in favor of sustaining that ground and thus, claims 3
`to 5, 8 to 14 and 17 through 20 should be rejected and cancelled.
`JUDGE ABRAHAM: Any questions, Judge Kalan?
`JUDGE KALAN: No, thank you.
`JUDGE ABRAHAM: Thank you.
`MR. NOLAN: Thank you, Your Honor. Brian Nolan on behalf of
`Patent Owner.
`With respect to grounds 3 through 14 that we just heard, Petitioner
`is asserting that somehow SAS has altered the landscape as before this
`tribunal. If you look at what SAS was about, SAS was about whether if a
`claim were challenged, whether the full institution had to be looked at. And
`they cite -- with respect to SAS, they talk about the question of whether there
`should be a judicial review. And that aspect of SAS was with respect to
`arguments that said we previously had said that we can't look at the
`substance of an institution decision because that's not appealable. So when
`they got to this concept of full judicial review in SAS, it was with respect to
`the concept of whether they could even look at the institution decision
`process as a whole.
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`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)1
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`They also cite Oil States. And when you look at Oil States, Oil
`States didn't talk about the full judicial review. All Oil States says is we are
`looking at constitutionality of IPRs and whether it's a public or a private
`right. And in it they talked in the background about Cuozzo and what an
`IPR is a second look at the patents.
`And if you look at their other citations, they really do not support
`the proposition, because Petitioner has a concern here and has an issue. The
`problem is their petition was deficient. KSR did not change the obviousness
`assessment. It may have made it easier to show motivation where you didn't
`have to be expressly taught, but teaching suggestion and motivation and then
`the requirement of showing a motivation to combine coupled with the
`reasonable expectation of success is still there, including showing that all of
`the elements in the patent exist in the prior art.
`And what is telling when you look at Petitioner's brief and citation,
`they talk about the statute. They said all 312 tells us to do, 35 U.S.C. 312, is
`to look at some parts -- it says what the petition has to include. Now, if you
`look at the actual full statute, which they didn't cite, they left out the last
`part. What's also required to be in the petition is the petition provides such
`other information as the director may require by regulation.
`JUDGE ABRAHAM: Counsel, just refer to the slide number.
`MR. NOLAN: Sorry. This is slide number 13. My apologies,
`Judge Kalan. So slide number 13 in Patent Owner's proceedings. And so
`that is in the statute. That's what Congress said has to be in the petition.
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`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)1
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`And then if you go to slide 14, you see exactly what the director
`said needs to be in the petition. And it says you cannot incorporate by
`reference. Their 855 petition was, I think, around 13,600 words. It was
`close to the extent that they were allowed of the 14,000. This is -- to put
`major aspects of your arguments, to not put them in the petition, you do so at
`your own peril. SAS has not changed that at all.
`And in fact, when regulations exist, they must be followed. The
`Supreme Court has told us that. If you look at slide 15, in U.S. v. Nixon the
`Supreme Court said so long as the regulation is extant, it has the force of
`law. So long as the regulation remains in force, the Executive Branch, the
`Patent Office, is bound by it. And indeed, the United States as a sovereign
`composed of three branches is bound to respect and to enforce it.
`So we made arguments, Patent Owner made arguments. If you
`look at their petition, their petition is devoid of any argument, any analysis,
`any discussion of a key component of the obviousness, of the motivation to
`combine and the expectation of success. Those aren't just Patent Owner's
`words. Those are the words from this tribunal. This tribunal, when it put
`the institution decision in place, said in the institution decision with respect
`to grounds 3 and 4, this is paper 14 where you discuss the 12 to 15,
`Petitioner, however, does not identify a reason why a person of ordinary
`skill in the art would have combined the disclosed elements in the art in the
`same fashion as recited in the claims of the '971. Absent any such evidence
`or arguments in the petition, we determine the petition has failed to carry its
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`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)1
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`burden. And again, you said that with respect to every ground, 3 through 14,
`in separate parts of the institution decision.
`Again, in paper 20, which was their rehearing request --
`JUDGE KALAN: Are you on slide 10?
`MR. NOLAN: I wasn't switching through slides at this point, Your
`Honor, but slide 10 would probably be appropriate. Again, with respect to
`the rehearing request, and it is on slide 10, this tribunal said, We are not
`persuaded that we misapprehended the legal standard for finding improper
`incorporation by reference or that we overlooked evidentiary citations. The
`rule against incorporation by reference is clear. And then you went on and
`said, In this decision, we note in the decision, which was paper 14, we noted
`that Petitioner failed to present any arguments, discussions or analysis
`regarding why a person of ordinary skill in the art would have combined the
`elements in the prior art in the same fashion as recited in the claims of the
`'971 patent.
`You went on in that same decision and where they tried to
`articulate a reason for grounds 13 with respect to Baugh and Viola, you
`explain that this new articulation was an entirely new argument. It was
`absent from the petition. And when we had the teleconference, and I keep
`on hearing that, well, Patent Owner waived its right to file a supplemental --
`a sur-reply to the supplemental reply. We didn't ask for that opportunity.
`And the reason we didn't is clear because during the teleconference, it was
`said that all the arguments that are in their sur-reply must be responding to
`arguments that we made and must be in their petition.
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`Case IPR2017-00852 (Patent 9,727,280 B2)
`Case IPR2017-00855 (Patent 9,410,971 B2)1
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`We didn't say their petition has a motivation to combine but it's
`just not enough. We said their petition is absent a motivation to combine, is
`absent an expectation of success. That's what we said in our preliminary
`response.
`The appropriate response to that would have been, no, here is
`where it is in the petition. And that's not what you'll see in this. And what is
`telling is look at their supplemental reply. They don't cite that to their
`petition. They say the Mize declaration states, the Mize declaration
`declares, the Mize declaration notes. Nowhere do they say this is the
`argument we made in the petition, this is why the preliminary response was
`wrong when they said they didn't make the motivation to combine.
`Even more telling, they'll probably come up in rebuttal and they'll
`bring out all these slides to go through and say, look, here is where Mize
`said it; here is the motivation to combine. Look at what's cited in that: Their
`supplemental reply.
`Their petition was defective. Maybe they could have done it a
`different way, but we have to respond to what their petition is. It is clear
`that they have a burden of proving obviousness. And obviousness includes
`the motivation to combine. It includes the expectation of success coupled
`with showing that the prior art taught each limitation.
`This argument of somehow saying arranged as in the claim
`somehow subsumes the overall teaching, even if that was the law, which I
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