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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`BITDEFENDER, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC.,
`Patent Owner.
`______________
`
`Case IPR2017-01315
`Patent 6,510,466 B1
`_____________
`
`Record of Oral Hearing
`Held: August 7, 2018
`____________
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`
`
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK, and
`JESSICA C. KAISER, Administrative Patent Judges.
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`Case IPR2017-01315
`Patent 6,510,466 B1
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ANDREI POPOVICI
`Law Office of Andrei Popovoci
`4030 Moorpark Ave, Suite 108
`San Jose, California 95117
`650-530-9989
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`BRETT MANGRUM
`Mangrum Law Group
`2001 Ross Avenue
`Dallas, Texas 75201
`214-953-6989
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, August 7,
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`2018, commencing at 12:00 p.m., at the U.S. Patent and Trademark Office,
`Texas Regional Office, 207 S. Houston Street, Suite 159, Dallas, Texas
`75202.
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`Case IPR2017-01315
`Patent 6,510,466 B1
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`P R O C E E D I N G S
`- - - - -
` (WHEREUPON, the following was transcribed from an
`audio recording, as follows:)
` JUDGE QUINN: Hello, everybody. You can have a
`seat. I have to check on a colleague of mine who had a
`computer malfunction at the best possible time. Amazing.
` Okay. Can you hear me in Alexandria?
` JUDGE WEINSCHENK: Yes, we can hear you.
` JUDGE QUINN: Okay. Can you have them put you on
`screen.
` JUDGE WEINSCHENK: Okay.
` JUDGE QUINN: Same thing for Denver. Hello.
`Okay. Welcome.
` JUDGE KAISER: Can you hear me now?
` JUDGE QUINN: Yes, I can hear you.
` JUDGE KAISER: Great. Well, good afternoon.
` I just wanted to first check and make sure the
`court reporter can hear the locations.
` THE DIGITAL REPORTER: Yes.
` JUDGE KAISER: Sounds like he did hear me in
`Denver.
` JUDGE QUINN: Yes, he can hear you.
` JUDGE KAISER: Okay. This is an oral hearing for
`IPR2017-01315, between petitioner, Bitdefender, Inc., and
`the owner of US patent number 6,510,466, Uniloc USA, Inc.
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`Case IPR2017-01315
`Patent 6,510,466 B1
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` Before I begin, just had a few administrative
`matters I wanted to go over. I am Judge Kaiser, and I am in
`Denver, Colorado. Judge Miriam Quinn is there with you in
`Dallas, Texas, and Judge Robert Weinschenk is in Alexandria,
`Virginia.
` Because Judge Weinschenk and I are participating
`remotely, and so that the record is clear, please identify
`which demonstrative exhibit or other paper number you are
`referring to during this proceeding. Judge Weinschenk and I
`will not be able to see the screen that's in the hearing
`room there, but we have all the documents electronically,
`and so as long as you identify where you are in the record,
`we will be able to follow along with you.
` As you know, per our order, each party has 30
`minutes to present their argument for this proceeding.
`Because petitioner has the burden of showing unpatentability
`of the claims, petitioner will proceed first, followed by
`patent owner. Petitioner may reserve rebuttal time;
`however, petitioner may only use that time to rebut patent
`owner's arguments. Judge Quinn will be keeping the time in
`the hearing room there in Dallas with you.
` One other initial matter, we received both parties
`objections to the other side's demonstrative exhibits via
`e-mail. And we reviewed the demonstratives themselves, as
`well as the parties' objections. Those objections are
`overruled.
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` But as we noted in the -- and as we noted in the
`oral hearing order, demonstrative exhibits are not evidence,
`but a merely visual aid for this oral hearing.
` We do note that patent owner's objections related
`to its contentions that certain slides present new arguments
`or evidence from petitioner's Institution response brief.
`As was stated in the e-mail to the parties on June 8,
`patent owner may still raise its objections to that
`Institution response brief at this oral hearing. And we
`reserve ruling on whether petitioner's Institution response
`brief comported with our May 25 order that authorized that
`brief. For purposes of this hearing, however, petitioner is
`allowed to present its demonstratives related to that brief.
` Let's see. At this time, let's have counsel
`introduce yourselves, beginning with
`petitioner, please.
` MR. POPOVOCI: Andrei Popovoci, counsel for
`petitioner, Bitdefender, Inc., and with me today is
`Mihai Murgulescu, local co-counsel.
` JUDGE QUINN: I think you want to speak louder.
` MR. POPOVOCI: Can you hear me now?
` JUDGE QUINN: Is the light on?
` JUDGE KAISER: Perhaps if you go to the podium, it
`might be easier.
` MR. POPOVOCI: Andrei Popovoci, counsel for
`petitioner, Bitdefender, Inc. With me today is co-counsel,
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`Mihai Murgulescu.
` JUDGE KAISER: And Mr. Popovoci, will you be
`presenting argument today on behalf of petitioner?
` MR. POPOVOCI: Yes, I will.
` JUDGE KAISER: Okay. Very good. And would you
`like to reserve time for rebuttal?
` MR. POPOVOCI: Yes, please. We'd like to reserve
`ten minutes for rebuttal.
` JUDGE QUINN: Ten minutes?
` MR. POPOVOCI: Yes.
` JUDGE QUINN: Okay.
` JUDGE KAISER: And let me have patent owner's
`counsel introduce themselves.
` MR. MANGRUM: Good afternoon, Your Honors. Brett
`Mangrum, lead counsel for the patent owner, Uniloc USA, Inc.
`And I will be presenting today.
` JUDGE KAISER: Thank you.
` Mr. Popovoci, you can begin whenever you're ready.
` MR. POPOVOCI: Thank you. By the way, these are
`on the screen, they are not -- our demonstratives, these
`are -- we will not be using the screen, so patent owner has
`set up their demonstrative's there.
` JUDGE QUINN: And that's okay. They cannot see
`that anyway, so.
` MR. POPOVOCI: Right, right. I understand. Thank
`you.
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`Case IPR2017-01315
`Patent 6,510,466 B1
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` Good afternoon, Your Honors, and may it please the
`board. I am Andrei Popovoci, counsel for petitioner
`Bitdefender, Inc. With me today is Mihai Murgulescu, also
`counsel of record for Bitdefender, Inc.
` First on preliminary matters, I understand the
`board overruled the objections to our demonstratives. We
`would like to highlight three specific issues, out of the
`objections that we submitted. First, the slide two of the
`patent owner argues that the petition is facially deficient
`regarding the means plus functional limitations. This is an
`argument that wasn't raised before by patent owner, and is
`surprising in light of patent owner's unequivocal statement
`that under no circumstances will they file a post SAS brief.
` Second, on slide 6, patent owner argues for the
`first time the installing limitation, which is distinct from
`the means for installing limitation. So the installing
`limitation applies to all claims, not just the means plus
`function claims. And that is a new argument.
` And, third, slide 11 argues for the first time
`dependent claims 2, 17, and 30 separately.
` Petitioner respectfully requests that patent
`owner's demonstratives be expunged from the record following
`the oral hearing.
` Moving on to our presentation, I will start with a
`discussion of petitioner's Institution response brief, in
`particular, how SAS can be reconciled with due process
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`concerns and Rule 42.23(b). I will then speak briefly about
`patent owner's prior filings and their relationship to the
`record. We will then move on to substantive arguments, and,
`in particular, the reasons to combine as argued by the
`patent owner and POR, and the means for installing
`limitation.
` To recap, aside from procedural matters,
`petitioner's Institution response brief argued that the
`structures identified by the board are not clearly linked to
`means for installing. We also argue that the board has the
`power to invalidate the means plus function claims as
`indefinite, and argued that Kasso (phonetic) describes means
`for installing, even under the board's original
`construction. And these arguments can be seen in our
`demonstratives.
` One other point shown in our demonstratives is
`that the patent owner actually argued in its response that
`all challenged claims -- all challenges should be dismissed.
`And that could mean that -- could be interpreted to mean
`that it refers to the means plus functions claims as well.
`And to the extent that that's an argument and the patent
`owner hasn't waived arguments --
` JUDGE QUINN: Where is this argument you are
`referring to?
` MR. POPOVOCI: It's in our first demonstrative,
`the middle box, it's patent owner response at page 2.
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` JUDGE QUINN: I'm sorry in your demonstratives?
` MR. POPOVOCI: On our demonstratives, it's on
`slide 2.
` JUDGE QUINN: Okay.
` MR. POPOVOCI: And it's the middle box citing the
`patent owner response at page 2.
` To the extent the patent owner's argument
`regarding use plus function claims are not waived, we are --
`our Institution response brief is responsive to their
`statement.
` Moving on to slide 3.
` JUDGE QUINN: Well, the patent owner response is
`filed before the SAS --
` MR. POPOVOCI: That's correct.
` JUDGE QUINN: -- post Institution.
` MR. POPOVOCI: Right. So we could not have
`responded before SAS.
` JUDGE QUINN: Okay.
` MR. POPOVOCI: Yes. Correct.
` Moving on to slide 3, the question is how do we
`reconcile SAS due process and the existing rule framework
`including Rule 42.23(b). Patent owner appears to rely on
`mechanical or technical reading of Rule 42.23(b) in isolation.
`And if patent owner's reading were correct, the post SAS
`Institution of the means plus function claims in our case
`would be illusory. What would it mean if we -- the claims
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`are instituted, but we can't say anything about them. What
`would be the purpose of a trial in that case. With no
`change on record, there would be also reason for the board
`to depart from its original Institution decision, so the
`outcome would be predetermined.
` Our argument is that Rule 42.23(b) should not be read
`in isolation. Due process, as codified in the APA, in the
`Administrative Procedure Act, requires that both parties be
`given an opportunity to be heard. A party may choose not to
`exercise that right, as patent owner did in this case, when
`it made the tactical decision not to submit additional
`briefing regarding the means plus function claims.
` That is their choice, but it does not remove the
`petitioner rights, our rights, to be heard under new agency
`theory here, on -- there's a new theory on means for
`installing, that we believe we have a due process right to
`respond.
` JUDGE QUINN: I'm sorry. Did you brief this
`argument anywhere, or raise it? I mean, we've had
`conference calls on the post SAS briefing.
` MR. POPOVOCI: Uh-huh.
` JUDGE QUINN: And we issued an order.
` MR. POPOVOCI: Uh-huh.
` JUDGE QUINN: So I am wondering what are you doing
`here with this argument? Are you renewing your objections,
`or what? I mean, procedurally, this argument is not before
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`us on final written decision, so I --
` MR. POPOVOCI: The argument that we have a right
`to speak? I think we made in our Institution -- part of our
`Institution response brief, made a due process argument,
`citing to SAS versus Complementsoft, that we have
`a right. So we are referring, in essence, to our
`Institution response brief.
` JUDGE QUINN: Okay.
` MR. POPOVOCI: To the extent there's a conflict
`between Rule 42.23 and the statute for the (inaudible) class,
`if a rule fights the law, the law wins. And that's, in
`essence, our argument. If there is a conflict between the
`Administrative Procedure Act and a specific rule, then the
`statute should control, to the extent there is a conflict.
` JUDGE WEINSCHENK: Mr. Popovoci?
` MR. POPOVOCI: Yes.
` JUDGE WEINSCHENK: Didn't you address the issue of
`the means for installing limitation in your Institution
`response brief? So haven't you addressed -- haven't we
`given you the opportunity to address that theory?
` MR. POPOVOCI: Yes. We have. I think this -- the
`question is, will the Institution response brief be -- stay
`part of the record. Patent owner has made the argument that
`they will move to strike or -- it's not clear what the
`motion is. Strike or exclude the Institution -- this
`response brief. Uh-huh.
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` JUDGE KAISER: You're not arguing that your due
`process rights have been violated as it stands right now,
`your -- it sounds like your argument is that if the
`Institution response brief were to be stricken, that that
`would violate petitioner's rights.
` MR. POPOVOCI: Yes. That's correct.
` JUDGE KAISER: Okay.
` JUDGE WEINSCHENK: So if we don't strike the
`brief, then your due process rights have not been violated.
` MR. POPOVOCI: Yes. I agree.
` JUDGE WEINSCHENK: Okay.
` MR. POPOVOCI: Moving on to slide 4, patent owner
`has argued that the petition provides no explanation,
`reasoning, or support for the proposed modification of
`Kasso. And this is -- we provide citations on slide 4 of
`our demonstratives.
` This is hyperbole. The petition provides
`precisely such an explanation on pages 30 to 36, or five
`pages out of the 25 pages addressing ground 1. Patent owner
`also claims that the petitioner admitted that it provided no
`explanation, reasoning, or support. Petitioner made no such
`admission. Patent owner's only argument is essentially not
`supported by the evidence. And their characterization of
`the record goes beyond the record.
` Moving on to slide --
` JUDGE KAISER: Doesn't owner -- patent owner
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`doesn't just say that you didn't provide any reasoning per
`the modifications to Kasso, patent owner also says there
`would explicitly be reasons based on Kasso and patent
`owner's expert testimony that you would, in fact, not
`modify Kasso.
` MR. POPOVOCI: Okay. Yes.
` JUDGE KAISER: So how do you respond, for example,
`to patent owner's evidence on -- or evidence that your
`proposed modifications would create security concerns in
`Kasso?
` MR. POPOVOCI: Create security concerns. Well,
`the -- you mean the single server modification, like -- let
`me go back and see. I believe it was the single server
`modification that they talked about. I think that's
`addressed in our briefing, it's --
` JUDGE KAISER: Yeah, and it may be a particular
`item. I can point you to one of their demonstratives. This
`is patent owner's demonstrative 8. It lists various expert
`testimony on the reasons why you wouldn't want a single
`server approach in Kasso.
` MR. POPOVOCI: Well, one response is that in --
`well, one reason alone I think doesn't overcome the multiple
`reasons why you would do it. The board itself found no
`teaching away in the Institution decision. Another argument
`is their own -- their own emphasis on reducing, for example,
`the desirability of reducing communication and bandwidth
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`between multiple server actually supports a single server
`approach.
` So I think -- I would say, it seems like the small
`manufactured -- not manufactured. It's a small concern in
`a -- it's a small concern among many, but does not trump the
`fact that putting two things -- implementing functionality
`on one computer or two computers was obvious as of 1998.
` JUDGE QUINN: But one of the analyses that we
`have to do is to balance the benefits with the
`disadvantages.
` MR. POPOVOCI: Uh-huh.
` JUDGE QUINN: So given that rubric, tell me what
`is your position vis-a-vis balancing the pros that you have
`presented versus the disadvantages that patent owner has --
` MR. POPOVOCI: To the extent there would be a
`security disadvantage to having everything done in one
`server -- by the way, they are putting down their own
`invention with that argument. But to the extent there is a
`security concern there, we believe that does not overcome
`the multiple other considerations that we raise in our
`briefing and support of that modification.
` So, in essence, we don't argue that there might be
`a security concern, we just argue that's a minor concern.
`It's not the only thing in the record. Focusing only on
`that ignores the larger parts of the record.
` JUDGE QUINN: I'll tell you, it seems to me that
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`you have a two step approach to obviousness here.
` MR. POPOVOCI: Uh-huh.
` JUDGE QUINN: You have the single server --
` MR. POPOVOCI: Yes.
` JUDGE QUINN: -- type of combination. And for
`that one, I think your best argument is that it saves costs
`and simplifies the system architecture.
` MR. POPOVOCI: Yes.
` JUDGE QUINN: And to the extent that patent
`owner's come back and said, well, it doesn't really
`simplify, is actually more problematic to do what you
`propose, it doesn't have this benefit that you say, do you
`have anything rebutting that vis-a-vis expert testimony or
`factual support for rebutting that?
` MR. POPOVOCI: Well, I don't believe the security
`arguments actually says that it doesn't simplify. I think
`those are two separate arguments, whether it simplifies
`system architecture or improves security. I don't quite see
`why arguing that there's a security concern trumps -- the
`point about simplifying system architecture is simply
`used -- it is similar to the cost argument, use two
`computers versus one. That's -- that's the simplification.
`I don't quite see the connection to security there.
` JUDGE QUINN: Well, the security argument was that
`when you have authorization to access a network resource
`separate from those actual network resources, you have
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`enhanced security because there's separate --
` MR. POPOVOCI: That's correct.
` JUDGE QUINN: -- points of entry to the system,
`and that when you combine them --
` MR. POPOVOCI: Uh-huh.
` JUDGE QUINN: -- now you have the same server that
`is authorizing entry also has access to all of the assets,
`so the server --
` MR. POPOVOCI: Yes, yes.
` JUDGE QUINN: So that's the security situation.
` MR. POPOVOCI: That's correct. Right. I
`understand. But why does -- I mean, the security versus
`simplification of architecture, those are separate
`arguments.
` JUDGE QUINN: But what it seems to suggest to me
`is that there's a reason why Kasso has them separate, and so
`why --
` MR. POPOVOCI: Possible.
` JUDGE QUINN: -- give up that benefit for the
`purposes of saving costs, saving costs as to the server,
`versus risking the security of your assets. Those are the
`two that, you know, at this point, if we balance that out
`then.
` MR. POPOVOCI: But there are other benefits as
`well. As patent owner themselves point out to you, if
`communication bandwidth and, you know, increase
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`communication is such a big concern, which they raised per
`the offload modification, that would be an additional
`reason, for example.
` It's cost, it's -- I mean, ultimately, it's a very
`simple substitution. One computer versus two. And you can
`find pros and cons of doing this, but it is really not
`inventive, going back to this. As of 1998, this is a
`trivial modification. Regardless of how you weigh this, if
`you find that one concern on one side just makes this
`somehow inventive -- right. Then it would be trivial to
`just overcome any obviousness argument. I mean, you
`don't -- an obviousness argument doesn't require that a
`modification just have advantages. You could have a
`disadvantageous, frankly, just purely disadvantageous
`modification that would be obvious. And there's case law
`from the --
` JUDGE QUINN: But we still need to find a why.
` MR. POPOVOCI: Uh-uh.
` JUDGE QUINN: You can have a substitution tell
`me -- these things are known to be substituted one for the
`other, but we still need to know why would you do that.
` MR. POPOVOCI: And I believe we provide multiple
`why's, both in our petition and in the subsequent filings.
` There's one simple -- one single reason why not
`that you weigh against many strong reasons why. That's why
`it is. And that's our argument. I don't think the legal
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`test is that you have to find one reason why not, that all
`of the sudden something which was well known and trivial in
`1998, all the sudden becomes then obvious.
` There's case law, which unfortunately I don't have
`from memory, but I know there's case law that actually -- I
`could probably pull it up for the rebuttal.
` JUDGE KAISER: Counsel, going back to Judge
`Quinn's prior question, do you have any expert testimony
`that deals with the sort of balancing that recognizes the
`concerns that patent owner raised. Security is one example,
`I don't think it is the only example, and says,
`nevertheless, despite this, this advantage is making this
`modification, within the confines of Kasso's architectural
`would still have been obvious.
` MR. POPOVOCI: Expert testimony. I'd have to --
`not off the top of my head. I would have to look at their
`expert declaration. We submitted one, and so did patent
`owner. There was no subsequent deposition or subsequent
`expert testimony after the petition and patent owner's
`preliminary response.
` JUDGE KAISER: And we don't have cross-examination
`testimony as to either expert in this case?
` MR. POPOVOCI: That's correct, yes.
` Okay. My co-counsel just pointed to page 14 of our
`expert declaration, paragraph 33.
` I am not sure how we are doing on time.
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` JUDGE QUINN: You have 12 minutes left.
` MR. POPOVOCI: Thanks.
` JUDGE QUINN: Do you want to reserve them, or do
`you want to keep going?
` MR. POPOVOCI: Oh, 12 minutes for the whole thing?
` JUDGE QUINN: You have 12 minutes left --
` MR. POPOVOCI: Including our rebuttal?
` JUDGE QUINN: Including rebuttal. What --
` MR. POPOVOCI: Okay.
` JUDGE QUINN: Now you have 12 minutes left --
`well, 11, of your 30 minutes. Yes. So you are close to
`your rebuttal.
` MR. POPOVOCI: May I move on to the rest of the
`demonstratives? I would like to, if I may.
` So in slide 5 we point to the fact that on demand
`distributions of software include Java applets was
`well known by 1998. The district court -- eastern district
`court -- Eastern District of Texas court opinions on Section
`101 agreed that the claims provide no inventive concept.
` Slide 6, we refer to multiple reasons for each of
`the single server and offload modifications. Our argument
`is any one of these reasons would be sufficient to support a
`finding of obviousness. Implementing functionality using
`one or two computers was not inventive.
` JUDGE QUINN: Why have you submitted this opinion
`of the district court on 101?
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` MR. POPOVOCI: It is not binding, but it is
`persuasive evidence, the judge and the partial judge took a
`look at this and said there's nothing inventive here. They
`are trying to claim software distribution over the internet.
` JUDGE QUINN: What is the impact to our case? We
`can't opine on --
` MR. POPOVOCI: I believe it's not evidence that
`you would base your opinion on, but it is persuasive
`evidence that there's nothing inventive there, by an
`independent judge. So it would not be binding precedent,
`no.
` MR. MANGRUM: Your Honor, I don't know if I should
`lodge objection now or wait.
` JUDGE QUINN: You can wait until your time.
` MR. MANGRUM: Yes, Your Honor.
` JUDGE QUINN: So you submitted it for what purpose
`on the record?
` MR. POPOVOCI: As persuasive evidence.
` JUDGE QUINN: Okay. Is that true, or is this just
`background of the case, that you have submitted?
` MR. POPOVOCI: It is both, I guess. It is
`background of the case as well. And if you are wondering
`why -- I mean, I can't speculate on what patent owner hasn't
`deposed -- why we haven't deposed experts.
` JUDGE QUINN: I just fail to see the reasons --
` JUDGE KAISER: The petition -- you only cite this
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`decision as background. You don't cite it in any of your
`claim construction sections or patentability.
` MR. POPOVOCI: Yes. That's correct.
` JUDGE KAISER: As I recall.
` MR. POPOVOCI: Yes, that's correct.
` JUDGE QUINN: Okay.
` MR. POPOVOCI: Moving on to slide 7, I'm going to
`make this short, so we reserve --
` JUDGE QUINN: You reserve over.
` MR. POPOVOCI: -- some rebuttal time.
` The board agreed with the petitioner that
`installation is distinct from configuration and
`registration, and in support, there were passages cited that
`say install and register, install and configure. The same
`argument applies to install and distribute. And we point to
`the abstract that talks about distribution and installation.
` And as part of the quid pro quo of using the
`convenience of 112, paragraph 6, the burden of linking
`structure to function falls on the patent owner, who can
`link that structure, but not on the public. And we made
`that argument in the Institution response brief.
` Slide 8, we make the argument that patent owner
`can, in fact, invalidate claims for indefiniteness. And, in
`fact, in the context of the amendments, which are different,
`the office has expressly allowed section 112 arguments to be
`made. Where they --
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` JUDGE WEINSCHENK: Are you familiar with the
`Supreme Court decision in Cuozzo? Because in that
`decision they said, quote, that nor does our interpretation
`enable the agency to act outside the statutory limits by,
`for example, cancelling a patent claim for indefiniteness
`under 112, in inter partes review.
` Doesn't that preclude us from finding a claim
`indefinite in this case?
` MR. POPOVOCI: So that was the Supreme Court
`appeal of the Federal Circuit decision.
` JUDGE QUINN: Correct.
` MR. POPOVOCI: And that's cited.
` JUDGE WEINSCHENK: Yes, in Cuozzo. And they said
`that, effectively, we would be acting outside our statutory
`limits, if we cancelled a claim for indefiniteness, in an
`inter partes review. So I am curious how are you
`suggesting that we do that in this case.
` MR. POPOVOCI: I think the answer to that might be
`that this was pre-SAS, and in light of SAS, it is not clear
`that that's in fact binding. But I would have to look into
`that.
` JUDGE QUINN: Well, to the extent at this point we
`may not issue an opinion with -- of indefiniteness of any
`claim, how else will we treat these claims if we cannot
`render an opinion?
` MR. POPOVOCI: Well, our argument -- are you
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`Case IPR2017-01315
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`asking if they are -- if they are indefinite, what you
`should do?
` JUDGE QUINN: If we were to agree with you that
`they are, but we cannot opine on it, what is your suggestion
`that we do procedurally within the confines of our rules?
` MR. POPOVOCI: I am not sure. I mean, in the
`pre-Institution case, the solution was to not institute.
` Yeah. I guess if you stated so in the final
`written decision, that would be -- that would be useful in
`the district court action. In this case, the judge comes
`back from the federal circuit.
` JUDGE QUINN: I got you. But if we do not opine
`at all on indefiniteness, then that would mean the final
`written decision would not include any comments or advisory
`opinions as to indefiniteness because we cannot.
` MR. POPOVOCI: Right.
` JUDGE QUINN: Then how else do we dispose of the
`claims.
` MR. POPOVOCI: Oh. Well, our argument, and these
`are our final two slides, that even under the board's
`construction, Kasso still describes the structures that
`are -- was that your question?
` JUDGE KAISER: Sure. And one follow up to that.
`Under your -- that theory that's on these last two slides,
`that theory is not in your petition, correct?
` MR. POPOVOCI: That's correct, because the claim
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`Case IPR2017-01315
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`construction that came down in the Institution decision,
`that's what led to this clarification of what Kasso
`describes, right. It was hard to -- it'd be hard to
`anticipate all possible arguments of what those claims may
`or may not be. Patent owner has submitted very long
`passages of structures for everything. Like page long
`things.
` JUDGE KAISER: You -- in the petition, you only
`relied on Katz exception --
` MR. POPOVOCI: Yes.
` JUDGE KAISER: -- for -- and you didn't identify
`any corresponding struc
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