`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner
`
`v.
`
`ROVI GUIDES, INC.,
`Patent Owner
`
`__________________
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`___________________
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`BY THE DIRECTOR PURSUANT TO UNITED STATES v. ARTHREX
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`BACKGROUND ............................................................................................. 1
`II.
`III. LEGAL STANDARDS ................................................................................... 4
`IV. ARGUMENT ................................................................................................... 5
`A.
`The Board’s motivation-to-combine findings were erroneous. ............ 5
`1.
`The Board applied incorrect legal standards. .............................. 5
`2.
`The Board erred in finding a motivation to combine
`Humpleman with Killian because Humpleman teaches away
`from the static control-and-command logic used in Killian. ...... 6
`The Office’s current Director-review procedures are unlawful. ........... 9
`1.
`Commissioner Hirshfeld cannot provide the required layer
`of principal-officer review because he is an inferior officer. ..... 9
`Commissioner Hirshfeld’s assumption of authority to
`perform the functions and duties of the Director was
`contrary to statute. ..................................................................... 11
`The Director-review procedures are invalid because they
`were not promulgated through notice-and-comment
`rulemaking. ............................................................................... 14
`CONCLUSION .............................................................................................. 15
`
`2.
`
`3.
`
`B.
`
`V.
`
`
`
`
`
`- i -
`
`
`
`
`
`I.
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`
`INTRODUCTION
`Patent Owner Rovi Guides, Inc. (PO) requests Director review of the
`
`PTAB’s October 16, 2018 Final Written Decision (Pap. 36). This request is timely
`
`filed within 30 days of the Federal Circuit’s September 2, 2021 remand order.
`
`The Board’s conclusion that an ordinary artisan would have been motivated
`
`to combine Humpleman and Killian was erroneous. At the outset of this
`
`proceeding, the Board misapplied the law by analyzing obviousness based on what
`
`a POSA could do rather than what a POSA would have been able and motivated to
`
`do. Then, in its final decision on obviousness, the Board—without justification—
`
`disregarded unambiguous language in Humpleman that criticizes systems like
`
`Killian. This language would have discouraged a POSA from combining
`
`Humpleman and Killian in the manner claimed. Because controlling precedent
`
`dictates that obviousness cannot be based on a combination of references that teach
`
`away from one another, the Board’s finding that the ’413 patent is obvious over
`
`Humpleman and Killian should be set aside.
`
`II. BACKGROUND
`A.
`The patent. The ’413 patent claims a novel system and method for al-
`
`lowing a user to remotely control a program guide for her television. The invention
`
`improved upon prior art program guide systems, which “require[d] that the user be
`
`physically present in the home to access important program guide features such as
`
`
`
`- 1 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`program reminders, parental control, and program recording.” EX1001, 2:16–19.
`
`
`
`The patent discloses a system in which two distinct “interactive program
`
`guides”—a “local IPG” and a “remote IPG” (or “remote access IPG”)—
`
`communicate with one another. The local IPG is implemented on “local interactive
`
`television program guide equipment,” while the remote IPG is implemented on a
`
`“mobile device.” Id., 40:6–47. These guides offer robust, interactive features that
`
`allow users to control television activity remotely in ways previously unavailable.
`
`For example, the user can instruct the remote IPG to schedule future recordings,
`
`access information about program listings, schedule a program reminder, or dis-
`
`play program listings in subsets according to user-selected criteria. The remote IPG
`
`then sends those instructions to the local IPG, which performs the necessary opera-
`
`tions on the local IPG equipment. Id., 15:9–31, 18:4–12, 25:45–59, 40:6–47.
`
`B.
`
`The prior art. Humpleman discloses a system that allows a user to
`
`control various “home devices” connected to a home network. EX1006, 1:21–36,
`
`2:15–18. These “home devices” include “all electronic devices…typically found in
`
`the home,” like “security systems, theatre equipment (e.g., TVs, VCRs, stereo
`
`equipment, and…digital satellite services (DSS)), … and washers/dryers.” Id.,
`
`1:2131.
`
`The Humpleman system, according to its specification, “eliminates a re-
`
`quirement for a remote control device to include…control codes specific to each of
`
`
`
`- 2 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`the devices on the network.” Id., 23:4649. Humpleman disparagingly characterizes
`
`
`
`this as “static control and command logic.” Id., 1:5258. As the Humpleman provi-
`
`sional application says, under the static-control-and-command-logic approach, the
`
`user must “control everything,” which requires a “complex GUI” with a “detailed
`
`command set for every device.” EX1007, 16. Suitable home devices in Humple-
`
`man contain HTML data that is sent to a browser-equipped user device, which can
`
`be used to control that device. EX1006, 4:1419. “As long as each device on the
`
`network has HTML files to describe their [graphical user interface] and as long as
`
`they use HTTP protocol to transfer those files, then any ‘client’ device that under-
`
`stands how to ‘web-browse’ and render HTML will be able to use the device with
`
`the human-interface GUI.” EX1007, 1.
`
`Killian discloses a single JAVA-based electronic program guide that “oper-
`
`ates on a computing platform that is associated with a television.” EX1008, 2:13,
`
`3:27–33. Petitioner relies on Killian to the extent it discloses “interactive program
`
`guide features.” FWD, 43. In Killian’s system, the electronic program guide (EPG)
`
`is programed to control a specific device through JAVA-based applets that provide
`
`a collection of application programming interfaces specific to that device. EX1008,
`
`3:19–27. Killian’s EPG thus uses the very “static control and command logic” that
`
`Humpleman disparages. EX1006, 1:52-58.
`
`C.
`
`The Board found all claims obvious over Humpleman and Killian.
`
`
`
`- 3 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`The Board concluded that an ordinary artisan would have been motivated to modi-
`
`
`
`fy Humpleman to include Killian’s interactive viewer profiles. FWD, 44. The
`
`Board asserted that where “a technique has been used to improve one device (i.e.,
`
`Killian’s interactive features), and one of ordinary skill in the art would have rec-
`
`ognized that it would improve similar devices in the same way (i.e., applying Killi-
`
`an’s interactive features to Humpleman’s system …), using the technique is obvi-
`
`ous.” Id.
`
`III. LEGAL STANDARDS
`In United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), the Supreme Court
`
`held that “[o]nly an officer properly appointed to a principal office may issue a
`
`final decision binding the Executive Branch” in IPRs. Id. at 1985. Accordingly,
`
`because PTAB APJs are inferior officers, “[d]ecisions by APJs must be subject to
`
`review by the Director.” Id. at 1986. “The Director accordingly may review final
`
`PTAB decisions and, upon review, may issue decisions himself on behalf of the
`
`Board.” Id. at 1987. The PTO has indicated that Director review “may address any
`
`issue…and will be de novo.” USPTO Guidance, Arthrex Q&A A1 (July 20, 2021).
`
`The Guidance advises that “decisions may warrant review if they include, for
`
`example, material errors of fact or law, matters that the Board misapprehended or
`
`overlooked, novel issues of law or policy, issues on which Board panel decisions
`
`are split, issues of particular importance to the Office or patent community, or
`
`
`
`- 4 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`inconsistencies with Office procedures, guidance, or decisions.” Id. D2.
`
`
`
`IV. ARGUMENT
`A. The Board’s motivation-to-combine findings were erroneous.
`The Board applied incorrect legal standards.
`1.
`If a petitioner seeks to show obviousness based on multiple prior-art refer-
`
`ences, the petitioner must show that a skilled artisan would have been motivated to
`
`combine those references. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380
`
`(Fed. Cir. 2016). Moreover, in showing a motivation to combine, it is not enough
`
`to show merely that a skilled artisan “would have been able to” combine the refer-
`
`ences; the petitioner must show that “a skilled artisan would have been motivated
`
`to do [so] at the time of the invention.” Polaris Indus., Inc. v. Arctic Cat, Inc., 882
`
`F.3d 1056, 1068 (Fed. Cir. 2018). For example, in Personal Web Technologies,
`
`LLC v. Apple, Inc., the Federal Circuit vacated the Board’s motivation-to-combine
`
`finding because the Board’s “reasoning seem[ed] to say no more than that a skilled
`
`artisan, once presented with the two references, would have understood that they
`
`could be combined.” 848 F.3d 987, 993 (Fed. Cir. 2017). “[T]hat,” the Federal Cir-
`
`cuit explained, “is not enough: it does not imply a motivation to pick out those two
`
`references and combine them to arrive at the claimed invention.” Id. at 993–94.
`
`Here the Board’s application of these legal principles was infected with two
`
`distinct errors. As shown by the Board’s institution decisions, the Board both in-
`
`
`
`- 5 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`verted the burden (requiring PO to show a lack of a motivation to combine rather
`
`
`
`than requiring Petitioner to show the presence of one) and applied the wrong sub-
`
`stantive standard (focusing on whether a skilled artisan would have been capable
`
`of combining the references, rather than whether a skilled artisan would have been
`
`motivated to combine them). For example, the Board stated “the record before us
`
`does not include sufficient or credible evidence that Killian’s program guide would
`
`be incapable of being modified to be included in the customized program guides,
`
`as taught by Humpleman.” DI, 25. This statement is revealing. PO did not have the
`
`burden to show that a skilled artisan would have been incapable of implementing
`
`Petitioner’s asserted combinations. Instead, Petitioner had the burden to show that
`
`a skilled artisan would have been both able and motivated to implement them. Po-
`
`laris, 882 F.3d at 1068. The Board misunderstood this basic principle. This misun-
`
`derstanding led to error in its motivation-to-combine analysis.
`
`2.
`
`The Board erred in finding a motivation to combine
`Humpleman with Killian because Humpleman teaches away
`from the static control-and-command logic used in Killian.
`The Board’s ultimate findings on the motivation-to-combine issue reflect a
`
`similar misunderstanding of the applicable legal principles. If one of the references
`
`in a proposed combination teaches away from the combination, a motivation-to-
`
`combine finding is improper as a matter of law. Merck Sharp & Dohme B.V. v.
`
`Warner Chilcott Co., 711 F. App’x 633, 637 (Fed. Cir. 2017) (reversing district
`
`
`
`- 6 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`court’s finding of motivation to combine because prior art criticized the proposed
`
`
`
`combination); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385
`
`(Fed. Cir. 2001) (same); Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361,
`
`1374-75 (Fed. Cir. 2000) (same). Similarly, a finding of motivation to combine is
`
`improper where the combination “would require a substantial reconstruction and
`
`redesign of the elements shown in [the prior-art reference] as well as a change in
`
`the basic principles under which [that reference’s] construction was designed to
`
`operate.” Application of Ratti, 270 F.2d 810, 813 (C.C.P.A. 1959). The Board’s
`
`findings that a skilled artisan would have been motivated to combine Humpleman
`
`and Killian are inconsistent with these principles.
`
`Humpleman’s express purpose is to replace conventional, device-specific
`
`electronic program guides (EPGs) with a universal HTML guide that can command
`
`and control any device. EX1006, 1:55–58 (criticizing systems where “a particular
`
`remote control unit can only control and command those home devices for which it
`
`includes the necessary control and command logic”). Each suitable home device in
`
`Humpleman contains HTML data that it sends to the user device, which uses that
`
`data to display an HTML page on a browser. Id., 4:7–19. This setup “eliminates a
`
`requirement for a remote control device to include…control codes specific to each
`
`of the devices on the network.” Id., 23:46–49. That is because any “device that un-
`
`derstands how to ‘web-browse’ and render HTML will be able to use the device
`
`
`
`- 7 -
`
`
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`
`with the human-interface GUI.” EX1007, 1.
`
`Killian’s system presents precisely the sort of problems that Humpleman is
`
`designed to avoid. Killian’s EPG is programed to control a specific device through
`
`JAVA-based applets that provide a collection of application programming interfac-
`
`es specific to that device. EX1008, 3:18–27. A POSA would not have modified
`
`Humpleman to use Killian’s EPG because Humpleman expressly teaches away
`
`from using a system that relies on device-specific commands and controls like
`
`Killian’s. Indeed, the combination would vitiate Humpleman’s basic principle of
`
`operation. Ratti, 270 F.2d at 813.
`
`The Board found otherwise because, it said, “Humpleman explicitly con-
`
`templates an embodiment in which the interface utilizes JAVA to provide the cli-
`
`ent interface.” FWD, 45. Respectfully, however, that misses the point. It is irrele-
`
`vant that the interfaces in Humpleman and Killian may be written in the same pro-
`
`gramming language. The specific programming language is not even relevant in
`
`Killian’s system. EX1008, 3:34–37. The point is that Humpleman teaches away
`
`from the device-specific interface that Killian requires. And “[s]uch conflicting
`
`teachings can not reasonably be viewed as suggesting their combination.” Karsten
`
`Mfg., 242 F.3d at 1385.
`
`In this context, the Board’s characterization of Killian’s viewer profiles as
`
`“enhancements”—the only quality that, in the Board’s opinion, provides the neces-
`
`
`
`- 8 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`sary motivation to combine the two systems—is also imprecise. FWD, 43–44 (cit-
`
`
`
`ing KSR, 550 U.S. at 417). Killian’s JAVA-based applets may improve program-
`
`ming interfaces that are device-specific, but there is no evidence suggesting that a
`
`skilled artisan would have understood that these applets would predictably enhance
`
`HTML rendering systems that use a single interface to command and control mul-
`
`tiple devices like Humpleman’s. Indeed, that Humpleman contemplates interfacing
`
`with devices using the JAVA programing language, but does not incorporate JA-
`
`VA-based applets to provide any interactive programing features like those de-
`
`scribed in either Humpleman or Killian, suggests the opposite. EX2011, ¶121
`
`(“Humpleman’s solution is complete in itself” and “was already an improvement
`
`over a conventional EPG, which did not allow command and control of all home
`
`devices.”); id., ¶¶122–23 (“Killian is confined to traditional television EPGs” and
`
`“it would not be suitable for controlling other types of devices”).
`
`*
`*
`*
`The Board’s motivation-to-combine analysis applied the wrong legal stand-
`
`ards and reached the wrong result. The Board’s decision should be set aside.
`
`B.
`
`The Office’s current Director-review procedures are unlawful.
`Commissioner Hirshfeld cannot provide the required layer
`1.
`of principal-officer review because he is an inferior officer.
`Under Arthrex, an inferior officer cannot render a final IPR decision. “Only
`
`an officer properly appointed to a principal office” may do so. 141 S. Ct. at 1985.
`
`
`
`- 9 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`That was precisely the constitutional infirmity: “the nature of [APJs’] responsibili-
`
`
`
`ties” was not “consistent with their…appointment” by the Secretary of Commerce.
`
`The current Director-review process, however, merely repeats the constitu-
`
`tional violation identified in Arthrex. It is settled law that one “who temporarily
`
`performs the duties of a principal officer is an inferior officer for constitutional
`
`purposes.” United States v. Smith, 962 F.3d 755, 764 (4th Cir. 2020); see United
`
`States v. Eaton, 169 U.S. 331, 343 (1898) (same). Commissioner Hirshfeld was not
`
`presidentially appointed nor Senate-confirmed; instead, he is temporarily perform-
`
`ing the functions and duties of the PTO Director. He is thus an inferior officer, and
`
`so he cannot provide the required layer of principal-officer review. The Supreme
`
`Court was clear: “[o]nly an officer properly appointed to a principal office may is-
`
`sue a final decision binding the Executive Branch.” 141 S. Ct. at 1985.
`
`Arthrex’s passing reference to “remand to the Acting Director,” 141 S. Ct. at
`
`1988, does not alter the analysis. First, interpreting this language to permit review
`
`of PTAB decisions by an inferior officer would undermine Arthrex’s core holding
`
`that only principal officers may issue final decisions in IPRs. Second, Commis-
`
`sioner Hirshfeld is not the Acting Director. So even if a true Acting Director could
`
`perform the required layer of review, Commissioner Hirshfeld cannot.
`
`
`
`- 10 -
`
`
`
`
`
`
`
`2.
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`Commissioner Hirshfeld’s assumption of authority to per-
`form the functions and duties of the Director was contrary
`to statute.
`Even if an officer properly performing the functions and duties of the Direc-
`
`tor could provide the required layer of principal-officer review, Commissioner
`
`Hirshfeld cannot do so because his assumption of authority was unlawful.
`
`a. FVRA. The FVRA, 5 U.S.C. §§ 3345 et seq., governs succession
`
`when principal offices become vacant. NLRB v. SW Gen., Inc., 137 S. Ct. 929,
`
`934–35 (2017). The statute “authorizes three classes of Government officials to
`
`become acting officers.” Id. The default rule—set forth in § 3345(a)(1)—“is that
`
`the first assistant to a vacant office shall become the acting officer.” Id. Subsec-
`
`tions (a)(2) and (a)(3) set forth two alternatives to that default rule: “[t]he President
`
`may…direct[] either a person serving in a different PAS office or a senior employ-
`
`ee within the relevant agency to become the acting officer instead.” Id.
`
`Commissioner Hirshfeld does not fall within any of these categories. He
`
`does not meet the criteria for 5 U.S.C. § 3345(a)(1) because he is not the Director’s
`
`first assistant. And does not meet the criteria for § 3345(a)(2) or (a)(3) because the
`
`President did not direct him to perform the functions and duties of the Director.
`
`Moreover, even if Commissioner Hirshfeld had been properly appointed
`
`pursuant to the FVRA, he still could not implement the Director-review procedures
`
`for two additional reasons. First, those procedures were not in place during the
`
`
`
`- 11 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`180-day period preceding the vacancy. See 5 U.S.C. § 3348(a)(2)(B)(ii). Second, a
`
`
`
`person serving as a temporary principal officer under § 3345 may do so only for
`
`210 days. See 35 U.S.C. 3346(a). Commissioner Hirshfeld assumed his post in
`
`January 2021. It is now September, meaning the 210-day time limit has elapsed.
`
`b. 35 U.S.C. § 3(b)(1). The FVRA sets forth “the exclusive means for
`
`temporarily authorizing an acting official to perform the functions and duties” of a
`
`principal officer unless a statute expressly “(A) authorizes the President, a court, or
`
`the head of an Executive department, to designate an officer or employee to per-
`
`form the functions and duties of a specified office temporarily in an acting capaci-
`
`ty; or (B) designates an officer or employee to perform the functions and duties of
`
`a specified office temporarily.” 5 U.S.C. § 3347(a). That is, other statutes may
`
`“‘expressly’ create[] an alternative mechanism for filling vacancies.” Nw. Immi-
`
`grant Rights Project v. U.S. Citizenship & Immigration Servs., 496 F. Supp. 3d 31,
`
`53 (D.D.C. 2020). In accordance with § 3347(a), 35 U.S.C. § 3(b)(1) provides that
`
`the PTO Deputy Director has “authority to act in the capacity of the Director in the
`
`event of the absence or incapacity of the Director.” But Commissioner Hirshfeld
`
`does not satisfy this provision either because he was not the PTO Deputy Director.
`
`Commissioner Hirshfeld appears to have assumed his role pursuant to the
`
`Department of Commerce’s Department Organization Order 10-14, which purports
`
`to allow the Commissioner of Patents to perform the functions and duties of the
`
`
`
`- 12 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`PTO Director if both the Director and Deputy Director posts are vacant. DOO 10-
`
`
`
`14 § 2.04 (Sept. 28, 2012). But the FVRA permits department heads to create al-
`
`ternative succession arrangements for principal offices only when expressly per-
`
`mitted to do so by statute. 5 U.S.C. § 3347(a). And no statute authorized the Secre-
`
`tary of Commerce to enact DOO 10-14.
`
`The Department appears to have relied on 35 U.S.C. § 1, which provides the
`
`Secretary with “policy direction” over the PTO. But the FVRA is clear that a gen-
`
`eral grant of oversight authority to a department head is not enough to displace the
`
`default succession plan. See 5 U.S.C. § 3347(b). Instead, a statute must “express-
`
`ly…authorize[] the [department head] to designate an officer or employee to per-
`
`form the functions and duties of a specified office temporarily in an acting capaci-
`
`ty.” Id. § 3348(a)(1). There is no such statute here.
`
`The Secretary thus lacked authority to displace the succession plans of the
`
`FVRA and § 3(b)(1). Commissioner Hirshfeld’s assumption of the Director’s du-
`
`ties complied with neither statute, so his actions—including issuance of the review
`
`procedures and any Director reviews he purports to perform—are without “force or
`
`effect.” 5 U.S.C. § 3348(d)(1); Nw. Immigrant, 496 F. Supp. 3d at 53.
`
`
`
`- 13 -
`
`
`
`
`
`
`
`3.
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`The Director-review procedures are invalid because they
`were not promulgated through notice-and-comment rule-
`making.
`The PTO is required to use the notice-and-comment procedures of 5 U.S.C.
`
`§ 553 when enacting regulations governing IPRs. Under 35 U.S.C. § 2(b)(2), regu-
`
`lations that “govern the conduct of proceedings in the Office” “shall be made in
`
`accordance with section 553 of title 5.” And § 316(a), which concerns IPRs, re-
`
`quires the Director to “prescribe regulations…establishing and governing inter
`
`partes review.” Id. § 316(a)(4) (emphasis added); see Facebook, Inc. v. Windy City
`
`Innovations, LLC, 973 F.3d 1321, 1350 (Fed. Cir. 2020) (§ 316(a) requires Direc-
`
`tor to “prescribe regulations” governing IPRs). The PTO has effectively admitted
`
`as much. Resp. BIO 9, Cuozzo Speed Techs., LLC v. Lee, No. 15-446 (Dec. 2015)
`
`(defending adoption of BRI claim-construction standard because it was contained
`
`in regulation enacted pursuant to § 316(a)(4) “following notice and comment”).
`
`The Director-review procedures indisputably “govern[] inter partes review,”
`
`35 U.S.C. § 316(a)(4). They thus must be implemented via notice-and-comment
`
`rulemaking. Because the current procedures were not, they are invalid. See 5
`
`U.S.C. § 552(a)(1); United States v. Reynolds, 710 F.3d 498, 523 (3d Cir. 2013).
`
`Moreover, even setting aside the requirements of §§ 2(b)(2) and 316(a)(4)—
`
`which apply to all rules governing IPRs—section 553 applies of its own force to
`
`the substantive portions of the Arthrex guidance. See Animal Legal Defense Fund
`
`
`
`- 14 -
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`v. Quigg, 932 F.2d 920, 931 (Fed. Cir. 1991) (§ 553 requires notice and comment
`
`
`
`for substantive rules). A substantive rule “effects a change in existing law or policy
`
`which affects individual rights and obligations.” Cooper Techs. Co. v. Dudas, 536
`
`F.3d 1330, 1336 (Fed. Cir. 2008). The PTO guidance sets forth substantive stand-
`
`ards by which the agency intends to evaluate Director-review requests. Arthrex
`
`Q&A D2, D3. Those are substantive rules, and they are therefore subject to § 553.
`
`See Pickus v. U.S. Bd. of Parole, 507 F.2d 1107, 1112–13 (D.C. Cir. 1974).
`
`Nor can the PTO rely on § 553(b)(B)—which provides an exception for the
`
`notice-and-comment requirements “when…notice and public procedure thereon
`
`are impracticable, unnecessary, or contrary to the public interest”—to justify its
`
`failure to use notice-and-comment procedures. To take advantage of this to provi-
`
`sion, the agency must “for good cause find[] (and incorporate[] the finding and a
`
`brief statement of reasons therefor in the rules issued)” that § 553(b)(B) is satis-
`
`fied. Id. The PTO has not made any such finding here.
`
`V. CONCLUSION
`PO respectfully requests that this proceeding be held in abeyance until (i) the
`
`President appoints and the Senate confirms a PTO Director and (ii) the PTO enacts
`
`notice-and-comment regulations governing the constitutionally required layer of
`
`Director review. Once that occurs, PO requests that the Director set aside the Final
`
`Written Decision and confirm the patentability of the challenged claims.
`
`
`
`- 15 -
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`
`
`
`
`
`
`Jason D. Eisenberg
`Counsel for Patent Owner
`Registration No. 43,447
`
`Date: October 1, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`- 16 -
`
`
`
`
`
`
`
`Case IPR2017-01048
`U.S. Patent No. 8,578,413
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the above-
`
`captioned PATENT OWNER’S REQUEST FOR REHEARING BY THE
`
`DIRECTOR PURSUANT TO UNITED STATES v. ARTHREX was served
`
`electronically via email on October 1, 2021, in its entirety on the following counsel
`
`of record for Petitioner:
`
`fmeeker@bannerwitcoff.com
`Frederic M. Meeker (Lead Counsel)
`bwright@bannerwitcoff.com
`Bradley C. Wright (Back-up Counsel)
`skelly@bannerwitcoff.com
`Scott M. Kelly (Back-up Counsel)
`adike@bannerwitcoff.com
`Azuka C. Dike (Back-up Counsel)
`jdavenport@bannerwitcoff.com
`Joshua Davenport (Back-up Counsel)
`csauer@bannerwitcoff.com
`Camille Sauer (Back-up Counsel)
`bingvoldstad@bannerwitcoff.com
`Bennett A. Ingvoldstad (Back-up Counsel)
`BANNER AND WITCOFF, LTD.
`ComcastIPRService@bannerwitcoff.com
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Counsel for Patent Owner
`Registration No. 43,447
`
`Date: October 1, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
