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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.
`Patent Owner.
`____________
`
`Case IPR2017-01281
`Patent 7,828,767 B2
`____________
`
`Record of Oral Hearing
`Held: August 7, 2018
`____________
`
`
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`
`
`
`
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`Case IPR2017-01281
`Patent 7,828,767 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`BYRON R. CHIN, ESQUIRE
`JAMES ISBESTER, ESQUIRE
`Kilpatrick Townsend & Stockton, LLP
`Two Embarcadero Center
`Suite 1900
`San Francisco, CA 94111
`
`RYAN E. LINDSEY, ESQUIRE
`AVI SCHWARTZ, ESQUIRE
`Edwards Lifesciences LLC
`One Edwards Way
`Irvine, CA 92614
`
`CRAIG S. SUMMERS, ESQUIRE
`Knobbe Martens
`2040 Main Street
`14th Floor
`Irvine, CA 92614
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`WALLACE W. WU, ESQUIRE
`Arnold & Porter
`777 South Figueroa Street
`44th Floor
`Los Angeles, CA 90017-5844
`
`NICHOLAS NYEMAH, ESQUIRE
`Arnold & Porter
`601 Massachusetts Ave., NW
`Washington, D.C. 20001-3743
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`Case IPR2017-01281
`Patent 7,828,767 B2
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`The above-entitled matter came on for hearing on Tuesday, August 7,
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`2018, commencing at 1 p.m., at the U.S. Patent and Trademark Office, 600
`Dulany Street, Alexandria, Virginia.
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`Case IPR2017-01281
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`P R O C E E D I N G S
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`JUDGE TARTAL: Good afternoon. Please be seated. We are here
`for a final hearing in an inter parte review case captioned Edwards
`Lifesciences Corporation, petitioner, versus Boston Scientific Scimed
`Incorporated, patent owner. Case IPR 201701281 concerning U.S. patent
`number 7828767 B2.
`
`First let me begin by introducing the panel. I am joined by Judge
`Powell and Judge Margolies and I am Judge Tartal. May we please have
`appearances from the parties? Who do we have today on behalf of
`petitioner?
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`MR. ISBESTER: James Isbester, Your Honor, of Kilpatrick
`Townsend. With me at the counsel table is my colleague Byron Chin. We
`are joined by co-counsel Craig Summers and also here today are Ryan
`Lindsey and Avi Schwartz of the Edwards in-house (inaudible) department.
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`JUDGE TARTAL: Welcome, counsel. And who do we have today
`for our patent owner?
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`MR. WU: Wallace Wu for patent owner. With me is my co-counsel,
`Nick Nyemah.
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`JUDGE TARTAL: Welcome, counsel. We set forth the procedures
`for today’s hearing in our trial order and as a reminder, each party with have
`30 minutes of total time to present arguments in their case. Petitioner has
`the burden of proof and will go first. Patent owner will then present
`opposition arguments for the case as explained in our trial order and then, to
`the extent petitioner has reserved time, petitioner will present arguments in
`reply for the case. For patent owner are there any questions at this time?
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`MR. ISBESTER: No, Your Honor.
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`JUDGE TARTAL: And for petitioner, are there any questions in that
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`regard?
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`MR. WU: No questions.
`
`JUDGE TARTAL: For clarity in the transcript when you refer to an
`exhibit on the screen, please state for the record the exhibit and page number
`or for demonstratives the slide number to which you are referring. We also
`remind the parties that under no circumstances are they to interrupt the other
`party while that party is presenting its arguments and demonstratives.
`Petitioner would you like to reserve a certain amount of time for rebuttal?
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`MR. ISBESTER: Eight minutes, Your Honor.
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`JUDGE TARTAL: Okay. That will provide you with 22 minutes as a
`starting point and we can adjust accordingly if necessary. You may proceed,
`Counsel, when you are ready.
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`Can I ask just quickly, there were no demonstratives from patent
`owner ahead of time, is that correct?
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`MR. WU: Correct.
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`JUDGE TARTAL: Okay. Just wanted to make sure we didn’t
`overlook something in the correspondence. Okay, thank you. Counsel, you
`can begin.
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`MR. ISBESTER: Good afternoon, Your Honor. I would like to begin
`with a brief overview of the technology from which the 76 patent arises.
`This is an area that is referred to as balloon catheters and if I can display
`Slide 3. The Hijlkema reference, Exhibit 1009 in our papers is an example
`of a fairly conventional balloon catheter.
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`What is important, the important structures here are the catheter shaft
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`has two tubes. There is the inner tube four and then around the inner tube
`there is a second tube labeled three in Figure 5 of Hijlkema. And those two
`tubes together constitute the shaft of the catheter. The purpose of the inner
`tube is to slide over a guidewire to carry the catheter or guide the catheter to
`the treatment location.
`As you can see from Figure 5, the outer tube is somewhat bigger in
`diameter than the outside diameter of the inner tube and the result is an
`annular lumen and that lumen is referred to as the inflation lumen. And that
`inflation lumen is what is used to inflate the balloon.
`If we can go to the next slide, Slide 4. Now the balloon is fixed at its
`distal end to the inner tube, the guide wire tube. And at its outer end, the
`balloon -- or, excuse me, at its proximal end it is fixed to the outside of the
`outer tube, the second tube. And that means that the inflation lumen is open
`to the interior of the balloon and that is what allows the balloon to be
`inflated with fluid that is transmitted down the inflation lumen. And of
`course as needed the balloon is deflated in the opposite direction.
`Now if we can move to Slide 5. The problem with this technology
`that the ’767 describes and purports to solve is how to create the smallest in
`profile package that can be most easily transmitted through or moved
`through the arteries to the treatment location. And in order to have as small
`a package as possible, you have to fold the balloon in a very tight space
`conserving way.
`And according to the ’767 patent, it's possible to do that with the
`center region. It's this long uniform portion of the balloon, it’s easy to fold
`that into a tight bundle. But at each end of the center region, there are the
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`cone regions where the balloon necks down to a sleeve that is designed to
`mate with either the inner guide at the distal tip or the outer tube at the
`proximal end of the balloon. And that cone region is much harder to fold.
`And according to the ’767 patent, existing technologies resulted in a
`bulky transition zone from the center region to the weld region and that
`made it harder to fit this device through the small spaces that it needed to
`traverse to get to the treatment site.
`Looking at Slide 6, we see the solution that the ’767 patent offers.
`Before you fix the balloon to anything, you fold it as shown in Figure 4.
`Once the balloon is folded down, it can then be welded at each end to the
`inner tube, guide wire tube on the distal end and the outer tube on the
`proximal end as showing in Figure 9.
`The result is something that can be inflated just the way the balloon
`for example of the Hijlkema reference can be inflated. But when it does so,
`there is this vestigial fold left because the folds were captured under the
`weld and the weld of course doesn’t get inflated so there is a transition
`period where the folds are never completely opened up. And that is shown
`in Figure 11. If I had better eyesight I could tell you the reference numbers.
`112, excuse me.
`So that’s the technology. It is really very straightforward. The
`institution decision here is perhaps not so straightforward. The procedural
`context is a little bit unusual. Initially the panel instituted on essentially all
`of the method claims, all except claim 7 and just -- I’m sorry, let me just
`recap.
`The ’767 has a total of 17 claims. 1 through 4 are device claims,
`apparatus claim. Claims 5 through 17 are method claims. And Edwards had
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`requested inter partes review of all of the claims. The institution decision
`granted inter partes review of all the method claims except Claim 7 and
`denied institution with respect to the apparatus claims and method Claim 7.
`As the case proceeded, Boston Scientific waived any arguments with
`respect to those originally instituted claims. But then at a later date, post
`SAS, the Board submitted a, created a second institution decision and
`instituted on all grounds all claims. And as to those grounds and claims,
`Boston Scientific relies upon as preliminary patent owner's response.
`So there is a portion of my comments here today to which Mr. Wu is
`not permitted to respond. And there is a portion of my comments today to
`which Mr. Wu is permitted to respond using his preliminary patent owner's
`response. I think it's important to note thought is that even where Boston
`Scientific did proceed with reliance on its preliminary patent owners
`response, it has offered the Board no evidence. It is reliant totally upon
`attorney argument. As a result there is nothing to contradict or rebut the
`testimony of Edwards’ expert Tom Trotta.
`If I can ask you to turn to Slide 10, before we begin on the specific
`grounds, I wanted to briefly touch on claim construction. There are really
`only two claims that required any consideration in our terms and two claim
`terms that required any consideration. The first is balloon cylinder. It
`appears in Claim 5 and is therefore subsumed in all of the method claims.
`Claim 5 being the sole independent method claim. And then there is the
`term fold which appears in both independent claims. We will address these
`as they come up in the claims.
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`However, it’s important to note that Boston scientific has not
`suggested that there is anything -- that has not suggested any dispute with
`the constructions that (inaudible) has offered for those two terms.
`Let me turn then to our first ground of the original allowed. Grounds
`that Dlugos anticipates Claim 5. If we can take a look at the Dlugos at Slide
`14. Dlugos is a method of creating a balloon for a balloon catheter. The
`balloon is shown in Figure 1. Ways of folding the balloon are depicted in
`Figure 2 and the welding of the folded balloon to the catheter shaft is shown
`in Figure 3. This reference is readily applied to the method of Claim 5.
`Next slide. Claim 5 requires -- first of all the preamble requires a
`method for making a balloon catheter and obviously that is exactly what we
`just discussed with Dlugos.
`If we go to the next slide, Byron, Slide 16. The first step in Claim 5
`after the preamble is providing a balloon cylinder. The balloon cylinder
`having various qualities. So we now need to consider what is meant by a
`balloon cylinder.
`In the petition, in a position that was adopted by the Board in its
`institution decision, Edwards suggests that balloon cylinder is a broad term
`that encompasses a cylinder -- excuse me, a preformed balloon with
`narrowing or necking down at each end. Our basis for that interpretation
`comes from the file history. Such a balloon was cited by the Examiner
`against Claim 5 initially. That’s the Stupecky reference.
`During prosecution, the applicant didn’t dispute that Stupecky with its
`necks at either end of the wide part of the balloon constituted a balloon
`cylinder. In fact, the applicant went so far as to say that Figure 22A of
`Stupecky which is shown here shows a balloon 30 that has proximal neck
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`50A and distal neck 51A. The necks 50A and 51A are part of the balloon
`cylinder. So it seems to us that applicant and Examiner were of a single
`mind, that a balloon cylinder encompassed a balloon that necked down to
`narrower sleeves at the end.
`Now if we can go back to Slide 15. The balloon cylinder of Dlugos of
`course meets this requirement, providing a balloon cylinder, the balloon
`cylinder having the first and second end. Well, of course that’s what Dlugos
`shows. The first and second end separated by the longitudinal length and
`that’s the central region of the balloon.
`If we go to Slide 17, the next step is providing a catheter comprising
`at least one shaft and of course Dlugos shows the inner guidewire tube of the
`catheter shaft. The third step of Claim 5 is incorporating at least one fold.
`The fold extending from the first end to the second end of the balloon
`cylinder and text of Dlugos expressly describes this. Fold 7 run from the
`distal sleeve 6, the transitional section 7, the balloon body 2, the transitional
`section 3 to the proximal sleeve 5. So the folds extend right from one end to
`the other in the Dlugos reference.
`And finally, Claim 5 requires the fourth step, welding the balloon
`cylinder to the catheter shaft. And that is of course what is depicted in
`Figure 3 of Dlugos where the crosshatched area 8 is the welding portion.
`Now, we feel that Dlugos completely meets Claim 5, anticipates Claim 5 but
`we recognize that the Board may believe that our interpretation of the term
`balloon cylinder can be challenged and would prefer us to present as well the
`possibilities -- our response of the balloon cylinder term is construed to be a
`right cylinder, I think is the mathematicians word for it. A cylinder of
`constant diameter from one end to the other.
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`If we go to Slide 21, this is exactly what Eskaros teaches. So Eskaros
`teaches that this balloon cylinder shown in Figure 5 can be folded
`lengthwise and it thus looks almost identical to Figure 4 of the ’767 patent.
`Going to Slide 20, a person of skill in the art would have been
`motivated to combine Dlugos and Eskaros. Both of them are techniques for
`creating a folded balloon on a balloon catheter, the purpose of which is to
`reduce the profile, the diameter of the folded unexpanded balloon. And Mr.
`Trotta has testified in his declaration that a person of so many reasons that a
`person skilled in the art would have combined these two references.
`So even if the claim construction balloon cylinder, of balloon cylinder
`is more narrow than we anticipated of the Dlugos argument, we believe that
`the Eskaros and Dlugos combination renders Claim 5 obvious.
`Now there are dependent Claims 12, excuse me, 6 through 17,
`dependent on Claim 5 and in our papers we have set forth a basis in the prior
`art for finding each of these dependent claims to be obvious. And so far as
`we know, other than with respect to Claim 7 which I will address in a
`moment, there has been no disputing that.
`So unless the panel has questions, I will rest on our papers with
`respect to Claims 6 and 8 through 17.
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`JUDGE TARTAL: Counsel, the only question I would have is did
`petitioner direct us to anything in the specification of the ’767 patent in
`support of the proposed construction for a balloon cylinder? I understand
`you are relying on some of the disclosures in the prosecution history but was
`there anything in the specifications itself --
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`MR. ISBESTER: no.
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`JUDGE TARTAL: -- that distinguished a balloon that’s a right
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`cylinder I think you referred to it as opposed to a balloon with tapered ends?
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`MR. ISBESTER: There is nothing in the specification to that effect.
`Then if I may, I would like to proceed to dependent Claim 7.
`Now this is a claim and if I can bring up Slide 33, this is a claim that
`was -- for which review was denied in the original institution decision. So
`up till now, nothing I have said is something that Mr. Wu can respond to but
`we are now moving into that area where I believe it would be appropriate for
`Mr. Wu to respond.
`So Claim 7 requires the method of Claim 5 in which the at least one
`fold being a plurality of folds each of the plurality of folds having a first and
`second end radially adjacent ends being overlapping. And in the petition,
`we had pointed out that this language, not the language of Claim 5 or Claim
`1 but the language added by Claim 7 is identical to the language added by
`Claim 3. And we pointed out that that language, that requirement of the
`adjacent ends being overlapping was met by a reference called Konstantino.
`The Board pointed out quite correctly that Claim 1 and Claim 5 are
`different and so the combination of Konstantino with what had been offered
`with respect to Claim 1 might not be appropriate for Claim 7 where the
`underlying independent claim is Claim 5. If I may, I would like to address
`that confusion.
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`JUDGE TARTAL: Yes.
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`MR. ISBESTER: First of all, can we bring up the portion of the brief.
`So with luck here, there we go. So on the left this is a, I’m sorry, which
`page of the brief is this? I’m sorry?
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`MR. CHIN: 47.
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`MR. ISBESTER: Page 47 of our petition, Your Honors. We were
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`addressing the similarity between Konstantino and what is shown as in
`Figure 5 of the ’767 patent, this overlapping ends of the folds. And you can
`see that in the ’767 patent on the left, we have it appears to be five folds.
`And at each, the end of each fold, overlaps with the adjacent fold and that’s
`shown by that little box 113 in the upper left hand quadrant of the cross
`section in Figure 65.
`In Konstantino, uses only three folds rather than five but is otherwise
`virtually identical. So there is no question that Konstantino teaches exactly
`the limitation that is required by Claim 7. The only question is whether
`Konstantino can be properly combined with Dlugos for Claim 5 or the
`combination of Dlugos and Eskaros again for Claim 5.
`And we believe that we addressed that adequately in the papers to
`remove all data. Konstantino is like Hijlkema, like Dlugos, like Eskaros.
`It's another effort to find a way of folding the balloon so as to minimize the
`profile and allow for easy transition of the device to the treatment site.
`With my last couple of minutes, I would like to address one issue that
`relates to the, to Claim 1 of the newly instituted grounds. And for that I
`would like to begin with the Board's reason for denying that -- denying
`institution on Claim 1 initially.
`In Claim 1 we had relied upon the combination with respect to Claim
`1, the combination of Dlugos with which you are already familiar and
`Hijlkema. And the Board did not find that compelling initially stating that
`Dlugos suggests welding either proximal sleeve 5 or distal sleeve 6 to the
`shaft in the same manner but not both. And of course Claim 1 requires
`welding both ends of the balloon to the shaft.
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`Further the Board notes that there is language that suggests quite the
`contrary and on the bottom of Page 14 of the original institution decision,
`the Board states that Dlugos, excuse me. Petitioner offers no explanation for
`why it would have been obvious to weld both the proximal sleeve and the
`distal sleeve of Dlugos to the shaft given the manner in which Dlugos
`explains balloon inflation occurs and then there is a partial quote from
`Dlugos in the institution decision and I’m reading from the institution
`decision. Stating that the balloon could not be inflated if it were fixed with
`the proximal sleeve.
`Now I would like to start there and suggest with the greatest respect
`that we need to be very careful regarding pronouns. The Board writes the
`balloon could not be inflated if it were fixed to the proximal sleeve. The “it”
`presumably refers to the shaft. But the shaft in this language is not the outer
`tube of a coaxially balloon catheter. It’s an inner tube and that is exactly the
`language of Dlugos.
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`JUDGE MARGOLIES: Counsel, what page of the institution
`decision were you reading from?
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`MR. ISBESTER: 14.
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`JUDGE MARGOLIES: Thank you.
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`MR. ISBESTER: So if we go to the language in Dlugos that the
`Board cited there, that language reads the inner tube is always fixed with the
`distal sleeve. Now we have seen that already. Hijlkema has the inner tube
`fixed to the distal sleeve. That’s what holds the tip of the balloon in
`position.
`And then the language goes on to say if it would be fixed with the
`proximal sleeve, the balloon could not be inflated. Well, that seems right
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`too because the “it” here is the inner tube. If you fixed the proximal end of
`the balloon to the inner tube, how does the outer tube in the inflation lumen
`reach the inside of the balloon?
`So Dlugos is making a fairly comprehensible caution to the user not to
`put both your distal and proximal sleeves on the inner tube. He is not saying
`don’t affix the proximal sleeve to the outer tube. Indeed, Dlugos recall,
`recites Hijlkema as an example of a balloon catheter that Dlugos is an
`improvement over. And Hijlkema clearly shows the proximal sleeve affixed
`to the outer tube of the catheter.
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`JUDGE TARTAL: Counsel, can you direct us to what you are relying
`on in the petition to support what analysis it is that you are now providing?
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`MR. ISBESTER: Yes, Your Honor. Let me -- if you look in the
`Trotta declaration at paragraphs -- let’s say starting at paragraph 129 and
`then at the bottom of paragraph, the end of paragraph 131, it reads moreover
`the proximal sleeve of the balloon is welded to the shaft in the same manner
`that the distal sleeve of the balloon is welded to the shaft. That’s Mr.
`Trotta’s discussion of what Dlugos teaches.
`And then in the next paragraph, Mr. Trotta says to the extent Dlugos
`does not expressly teach this limitation, a person of skill in the art would
`have combined Dlugos with Hijlkema to meet this limitation. Dlugos only
`specifically shows a single catheter shaft but describes it as an inner tube. A
`person of skill in the art seeing the reference to an inner tube would have
`contemplated that an outer tube also existed.
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`JUDGE TARTAL: So what you are saying is it doesn’t show an outer
`tube, correct?
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`MR. ISBESTER: Absolutely. Dlugos does not show an outer tube.
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`But Dlugos says don’t tie both ends of the balloon to the inner tube which
`raises the inference that there is an outer tube. Moreover, Dlugos is an
`improvement over Hijlkema which shows both an inner tube and an outer
`tube which the distal end of the balloon pinned to the inner tube and the
`proximal end of the balloon tied to the outer tube.
`So I think that when one reads from paragraph 129 through paragraph
`133, it sets forth exactly the foundation of this position. And, Your Honors,
`I have now gone significantly over my time.
`
`JUDGE TARTAL: That's fine.
`
`MR. ISBESTER: And if I may I would like to reserve the rest for
`rebuttal.
`
`JUDGE TARTAL: Yes, and if we stop at this point you are now at up
`to approximately 26 and a half minutes. Is there -- how much time would
`you like for rebuttal and I will provide patent owner with the same amount
`of time assuming it is like five minutes or.
`
`MR. ISBESTER: I think five minute is fine. We are very close to
`that so that’s, thank you.
`
`JUDGE TARTAL: Patent owner, you will have the same amount of
`time presumably 35 --
`
`MR. WU: I don’t need anything close to that. Can I buy some time
`from you?
`
`JUDGE TARTAL: You are not required to use all 32 minutes. It's
`available for you.
`
`MR. WU: Since I am here I might as well just say a few things.
`
`JUDGE TARTAL: Let me reset that timer for you.
`
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`MR. WU: Sure.
`
`JUDGE TARTAL: Just for purposes of completeness. And if you
`
`should need more time we will discuss it.
`
`MR. WU: Good afternoon, Your Honors. I’m only here to argue
`SAS related claims and grounds. With respect to those grounds, in the
`Board's intuition decision it has already decided that petitioner did not meet
`the reasonable likelihood of unpatentability standard which is even lower
`than actually proving patentability.
`Although the Board allows petitioner to file a reply in light of the
`Supreme Court decision, they didn't really add any additional evidence, they
`just made some additional attorney arguments. So there is simply no reason
`for the Board to change its earlier findings on those SAS related claims and
`grounds.
`And without new evidence, basically petitioner is arguing, you know,
`a reconsideration of the Board's earlier findings. And which they did not
`even seek at the relevant time after the initial instruction decision came out.
`From what I heard this morning, basically there are admitting they
`made some mistakes in their petition and that’s not the fault of the Board
`and I read their reply paper, I heard what counsel for petitioner said, there
`was no clearly erroneous conclusion of a law or finding of facts by the
`Board. Therefore we believe that the Boards initial decision should stand.
`That’s it. Thank you.
`
`JUDGE TARTAL: Counsel, can I just maybe follow up on that with
`one question which is if the institution decision is -- the original institution
`decision was based on whether a reasonable likelihood was shown of
`prevailing and post-SAS we instituted on all the claims and grounds, so that
`
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`institution decision wasn’t a final decision regarding the patentability of any
`claim. So we would be applying the final decision, Essentially revisiting
`the allegations, and weighing the evidence and reaching a conclusion on
`those challenges based on the complete record.
`Does patent owner have -- you gave an indication of whether it was
`clearly erroneous or other standards that are typically applied in the context
`of a request for rehearing. But this isn’t a request for rehearing. It’s under
`the standard of a preponderance of the evidence. Is there anything you have
`in support of an argument that the standard of review on grounds instituted
`post-SAS, based on a decision to institute that found those grounds not to
`show a reasonable likelihood of prevailing, but that any other standard
`would apply? Or any reason why a decision on institution should be any
`more controlling than it would have been had we instituted on those grounds
`in the first instance?
`
`MR. WU: Understood. Let me just briefly address the two points the
`counsel for petitioner argued this morning. One is about claim 10. It is very
`clear they are now saying that they made a mistake in their petition.
`This -- a reply is not an opportunity to do it over. So too bad that they
`didn’t point out the right claim set. And on top of that they didn’t point to
`any motivation to combine. We set forth that argument in our preliminary
`response.
`On the first issue regarding Claim 1, they have so many layers
`inherency argument now it just, you just, I think there is not a whole lot of
`credibility in that because if you look at Dlugos it doesn’t talk about the
`outer shaft. They're arguing two layers of inherency it just not the correct
`understanding of law.
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`So I think we would rest on our arguments in our preliminary
`response and the -- and we believe that the Boards initial findings should
`stand.
`
`JUDGE TARTAL: Okay. Thank you, Counsel. Petitioner, you have
`the opportunity for rebuttal and again, you don’t need to use the full five
`minutes but we will provide five minutes that you can address. But we
`would request that your comments focus on reply not new argument carrying
`on from the first portion. So reply to arguments from patent owners.
`
`MR. ISBESTER: Understood, Your Honor. As I understand, Mr.
`Wu's position, because petitioner did not submit additional evidence in the
`reply, therefore what we are doing now is requesting reconsideration and I
`do not believe that that is -- this is a unique procedural context. And I do not
`believe that it is appropriate to be applying reconsideration standards at this
`juncture.
`This matter is proceeding on the newly instituted grounds because of a
`decision by the Supreme Court that changed the rules under which we are
`operating. And as a result, for example, this Board very graciously allowed
`Mr. Wu to rely upon his preliminary patent owner's response even though
`under the rules if one does not file a patent owner’s response, all arguments
`are waived. So with all due respect, I think the pot is calling the kettle black
`here.
`Moreover, this has given the Board and Edwards an opportunity to
`correct what Edwards believes to be an oversight in the recognition that
`Dlugos itself is a reference that a person of skill in the art would have
`understood differently from the manner in which the Board understood it at
`the time of the original institution decision.
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`And so it is appropriate for us to be able to bring that to the Board’s
`attention at this juncture, particularly in light of the strange procedural
`context that this particular matter finds itself in. But I have no further
`comments at this point.
`
`JUDGE TARTAL: Does the panel have any additional questions?
`Thank you, Counsel. It has been helpful to hear from both of you in this
`regard and a final decision will be issued in due course. And this hearing is
`adjourned.
`(Whereupon, the proceedings at 2:06 p.m. were concluded.)
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`
`PETITIONER:
`
`James Isbester
`KILPATRICK TOWNSEND & STOCKTON, LLP
`jisbester@kilpatricktownsend.com
`
`Craig Summers
`Cheryl Burgess
`KNOBBE MARTENS
`2css@knobbe.com
`2ctb@knobbe.com
`
`
`PATENT OWNER:
`
`Wallace Wu
`Jennifer Sklenar
`Nicholas Nyemah
`ARNOLD & PORTER
`wallace.wu@apks.com
`jennifer.sklenar@apks.com
`nicholas.nyemah@aporter.com
`
`
`
`
`21
`
`
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