Case: 21-164 Document: 2 Page: 1 Filed: 07/29/2021
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`RECORD NO.: 2021-____
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`I n T h e
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`United States Court Of Appeals
`For The Federal Circuit
`
`
`IN RE ESIP SERIES 2, LLC,
`
`Petitioner,
`
`
`
`ON PETITION FOR WRIT OF MANDAMUS TO THE–
`PATENT TRIAL AND APPEAL BOARD IN INTER PARTES REVIEW, NO. IPR2017-02197
`
`
`
`_________________
`
`PETITION FOR
`WRIT OF MANDAMUS
`_________________
`
`
`
`
`
`
`
`
`
`
`Gordon K. Hill
`Alma J. Pate
`PATE BAIRD
`36 West Fireclay Avenue
`Salt Lake City, UT 84107
`(801) 284-7000
`
`Counsel for Petitioner
`
`
`G i b s o n M O O R E A P P E L L A T E S E R V I C E S , L L C
`2 0 6 E a s t C a r y S t r e e t ♦ P . O . B o x 1 4 6 0 ( 2 3 2 1 8 ) ♦ R i c h m o n d , V A 2 3 2 1 9
`8 0 4- 2 4 9 - 7 7 7 0 ♦ w w w . g i b s o n m o o r e . n e t
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`

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`Case: 21-164 Document: 2 Page: 2 Filed: 07/29/2021
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`FORM 9. Certificate ofinterest
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`Form 9 (p. 1)
`July 2020
`
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`CERTIFICATE OF INTEREST
`
`Case Number
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`Short Case Caption In re ESIP Series 2, LLC
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`Filing Party/Entity ESIP Series 2, LLC
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`Instructions: Complete each section of the form. In answering items 2 and 3, be
`specific as to which represented entities the answers apply; lack of specificity may
`result in non-compliance. Please enter only one item per box; attach
`additional pages as needed and check the relevant box. Counsel must
`immediately file an amended Certificate of Interest if information changes. Fed.
`Cir. R. 4 7.4(b).
`
`I certify the following information and any attached sheets are accurate and
`complete to the best of my knowledge.
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`Date: 07/28/2021
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`Signature: h
`
`Name:
`
`Gordon K. Hill
`
`

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`Case: 21-164 Document: 2 Page: 3 Filed: 07/29/2021
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`FORM 9. Certificate oflnterest
`
`Form 9 (p. 2)
`July 2020
`
`1. Represented
`Entities.
`Fed. Cir. R. 47.4(a)(l).
`
`2. Real Party in
`Interest.
`Fed. Cir. R. 47.4(a)(2).
`
`3. Parent Corporations
`and Stockholders.
`Fed. Cir. R. 47.4(a)(3).
`
`Provide the full names of
`all entities represented
`by undersigned counsel in
`this case.
`
`Provide the full names of
`all real parties in interest
`for the entities. Do not
`list the real parties if
`they are the same as the
`entities.
`
`Provide the full names of
`all parent corporations
`for the entities and all
`publicly held companies
`that own 10% or more
`stock in the entities.
`
`D None/Not Applicable
`
`D None/Not Applicable
`
`0 None/Not Applicable
`
`ESIP Series 2, LLC
`
`ESIP Series 1, LLC
`
`Earl V. Sevy
`
`D
`
`Additional pages attached
`
`

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`Case: 21-164 Document: 2 Page: 4 Filed: 07/29/2021
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`FORM 9. Certificate of Interest
`
`Form 9 (p. 3)
`July 2020
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`4. Legal Representatives. List all law firms, partners, and associates that (a)
`appeared for the entities in the originating court or agency or (b) are expected to
`appear in this court for the entities. Do not include those who have already
`entered an appearance in this court. Fed. Cir. R. 4 7.4(a)(4).
`D
`D
`
`Additional pages attached
`
`None/Not Applicable
`
`Gordon K. Hill
`
`A. John Pate
`
`Pate Baird, PLLC
`
`5. Related Cases. Provide the case titles and numbers of any case known to be
`pending in this court or any other court or agency that will directly affect or be
`directly affected by this court's decision in the pending appeal. Do not include the
`originating case number(s) for this case. Fed. Cir. R. 4 7.4(a)(5). See also Fed. Cir.
`R. 47.5(b).
`0
`
`None/Not Applicable
`
`D
`
`Additional pages attached
`
`6. Organizational Victims and Bankruptcy Cases. Provide any information
`required under Fed. R. App. P. 26.l(b) (organizational victims in criminal cases)
`and 26.l(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).
`la
`D
`
`Additional pages attached
`
`None/Not Applicable
`
`

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`Case: 21-164 Document: 2 Page: 5 Filed: 07/29/2021
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`TABLE OF CONTENTS
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`Page
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`CERTIFICATE OF INTEREST
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`TABLE OF CONTENTS ............................................................................................ i
`
`TABLE OF AUTHORITIES .................................................................................... ii
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`STATEMENT OF RELIEF SOUGHT ...................................................................... 1
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`STATEMENT OF THE ISSUES............................................................................... 1
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`BACKGROUND ....................................................................................................... 1
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`ARGUMENT ............................................................................................................. 4
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`
`A.
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`ESIP IS ENTITLED TO A WRIT OF MANDAMUS
`REQUIRING DIRECTOR REVIEW ........................................................ 4
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`B.
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`THE SUPREME COURT’S ARTHREX RULING REQUIRES
`THE OPPORTUNITY FOR DIRECTOR REVIEW OF
`DECISIONS MADE BY ADMINISTRATIVE PATENT JUDGES ........ 6
`
`
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`C. THE INTERIM REGULATION IS INVALID ......................................... 7
`
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`The Interim Regulation Does Not Comply with the Statutory
`Requirements for Rule Making ........................................................ 8
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`1.
`
`2.
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`The Director’s Statement that ESIP’s Petition for Review is
`Untimely is Contrary to Constitutional Principles
`Articulated in Arthrex ...................................................................... 9
`
`
`CONCLUSION ........................................................................................................ 11
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`CERTIFICATE OF SERVICE ................................................................................ 12
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`CERTIFICATE OF COMPLIANCE ....................................................................... 13
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`i
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`Case: 21-164 Document: 2 Page: 6 Filed: 07/29/2021
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`Cases
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`U.S. v. Arthrex, Inc. et al.,
`594 U.S. ___ (2021) (No. 19-1434, decided June 21, 2021)..................passim
`
`ESIP Series 2, LLC v. Puzhen Life USA, LLC,
`958 F.3d 1378 (Fed. Cir. 2020) ................................................................... 2, 7
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) ....................................................................... 4
`
`New Vision Gaming & Development, Inc. v. SG Gaming, Inc.,
`Nos. 2020-1399, 2020-1400 (Fed. Cir., May 13, 2021) ................................ 11
`
`Puzhen Life, USA, LLC v. ESIP Series 2, LLC,
`Case IPR2017-02197 ....................................................................................... 1
`
`Thryv, Inc. v. Click-to-Call Techs., LP,
`140 S. Ct. 1367 (2020) ................................................................................. 2, 7
`
`Statutes
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`5 U.S.C. § 553 ............................................................................................................ 8
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`5 U.S.C. § 706 ............................................................................................................ 9
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`35 U.S.C. § 2(b)(2)(B) ........................................................................................... 1, 8
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`35 U.S.C. § 6(c) ......................................................................................................... 6
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`35 U.S.C. § 312(a)(2) ..................................................................................... 2, 4, 5, 7
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`Regulations
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`37 C.F.R. § 42.71(d) .................................................................................................. 8
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`37 C.F.R. § 42.71(c) ................................................................................................. 10
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`37 C.F.R. § 42.72 ..................................................................................................... 10
`
`ii
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`0... eeeeseecsecsecssccssecesseesneesessssesesescssecsaescsescseecssesssessseeeseeessenses
`37 C.F.R. § 42.108 ................................................................................................... 10
`10
`37 CLBLR. § 42.108
`0... ee eeecsecssecssecssecsseeeseeesseessesssssessesssesesescsescssecsaesssessssesseeesseeses
`37 C.F.R. § 42.208 ................................................................................................... 10
`10
`37 CLBLR. § 42.208
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`iii
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`ill
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`Case: 21-164 Document: 2 Page: 8 Filed: 07/29/2021
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`STATEMENT OF RELIEF SOUGHT
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`
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`Petitioner, ESIP Series 2, LLC, (“ESIP”) urges this Court to issue a writ of
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`mandamus requiring the Director of the United States Patent and Trademark Office
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`(“Director”) to review the Board’s decisions in Inter Partes Reexamination
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`proceeding Puzhen Life, USA, LLC v. ESIP Series 2, LLC, Case IPR2017-02197, in
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`accordance with the recent U.S. Supreme Court decision in U.S. v. Arthrex, Inc. et
`
`al., 594 U.S. ___ (2021) (No. 19-1434, decided June 21, 2021).
`
`STATEMENT OF THE ISSUES
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`1. Whether the United States Patent and Trademark Office’s 30-day deadline
`
`to file a Request for Rehearing by the Director to review APJ decisions
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`violates the principles of the Constitution articulated in the Arthrex case,
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`especially as that deadline is applied to APJ decisions made prior to the
`
`Arthrex ruling.
`
`2. Whether the United States Patent and Trademark Office’s Interim
`
`Regulation to implement the Arthrex case violates 35 U.S.C. § 2(b)(2)(B).
`
`BACKGROUND
`
`
`
`IPR Petitioner, Puzhen Life USA, LLC (“Puzhen”), filed the IPR Petition in
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`IPR2017-02197 (“IPR”), asserting four separate grounds for invalidity of claims 1,
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`3 and 17 of U.S. Patent No. 9,415,130 (“`130 Patent”). Patent Owner, ESIP Series
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`2, LLC filed a Patent Owner’s Preliminary Response, which included ESIP’s
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`1
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`

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`Case: 21-164 Document: 2 Page: 9 Filed: 07/29/2021
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`contention that the IPR Petition did not comply with 35 U.S.C. § 312(a)(2) because
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`the IPR Petition did not identify all real parties-in-interest (IPR Paper 5). The
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`Board instituted the IPR despite failing to find that all real parties-in-interest were
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`identified in the Petition (IPR Paper 10). ESIP filed a Patent Owner’s Request for
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`Rehearing (IPR Paper 12), which the Board denied (IPR Paper 13). ESIP filed a
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`Patent Owner’s Response (IPR Paper 15). Puzhen filed an IPR Petitioner’s Reply
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`(IRP Paper 17). On February 27, 2019, the Board issued a Final Written Decision
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`holding that the IPR Petition had identified all real parties in interest and that two
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`of the four asserted grounds for invalidity demonstrated that claims 1, 3 and 17 of
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`the `130 Patent were obvious (IPR Paper 24).
`
`
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`ESIP appealed the Board’s Final Written Decision to this Court. See, ESIP
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`Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020). This
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`Court affirmed the Board’s obviousness determination and, citing Thryv, Inc. v.
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`Click-to-Call Techs., LP, 140 S. Ct. 1367 (2020), ruled that the Board’s decision
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`with respect to whether the IPR Petition complied with 35 U.S.C. § 312(a)(2) was
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`“an institution-related … [decision] and is barred from appellate review.” See,
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`ESIP Series 2, 958 F.3d at 1386.
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`
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`On August 28, 2020, ESIP filed a Petition for a Writ of Certiorari in the U.S.
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`Supreme Court with respect to this Court’s ruling that the Board’s decision under
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`35 U.S.C. § 312(a)(2) was not reviewable. See, ESIP Series 2, LLC v. Puzhen Life
`
`2
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`Case: 21-164 Document: 2 Page: 10 Filed: 07/29/2021
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`USA, LLC, No. 20-228. On October 13, 2020, the Supreme Court denied ESIP’s
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`Petition for cert.
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`
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`On June 21, 2021, the Supreme Court held “that the unreviewable authority
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`wielded by APJs during inter partes review is incompatible with their appointment
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`by the Secretary to an inferior office.” U.S. v. Arthrex, Inc. et al., 594 U.S. ___
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`(2021) (slip op., pp. 18-19).
`
`
`
`On June 29, 2021, ESIP filed a Petition to Director for Review of Inter
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`Partes Reexamination – Amended (IPR Paper 29). See, Exhibit 1, included
`
`herewith (“Petition for Review”). ESIP’s Petition for Review requested that the
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`Director review the Board’s decision, including the APJ’s decision that the IPR
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`Petition identified all real parties-in-interest. Id. ESIP’s Petition for Review was
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`filed as part of the IPR proceeding via the PTAB E2E system and a notification e-
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`mail was sent to the PTO. See, Exhibit 2, included herewith.
`
`
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`On July 16, 2021, ESIP received an email response stating that ESIP’s
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`Petition for Review “was not filed with [sic] 30 days of the entry of a final written
`
`decision or a decision on rehearing by a PTAB panel. Thus, request for Director
`
`review is untimely.” See, Exhibit 2. This e-mail notification to ESIP regarding its
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`Petition for Review was unsigned. Id.
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`
`
`
`
`3
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`

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`Case: 21-164 Document: 2 Page: 11 Filed: 07/29/2021
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`ARGUMENT
`
`
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`The Director’s refusal to review ESIP’s Petition for Review is a violation of
`
`the constitutional principles articulated in Arthrex. The Director’s Interim
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`Regulation is not a valid regulation. This Court should issue a writ of mandamus
`
`requiring the Director to substantively review ESIP’s Petition for Review. This
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`Court should also hold unlawful the Director’s requirement that a Request for
`
`Review by the Director be filed within 30 days of a final written decision or a
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`decision on a rehearing.
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`A. ESIP IS ENTITLED TO A WRIT OF MANDAMUS REQUIRING DIRECTOR
`REVIEW
`
`The writ of mandamus is available in extraordinary situations to correct a
`
`
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`clear abuse of discretion. See, In re Genentech, Inc., 566 F.3d 1338, 1341 (Fed.
`
`Cir. 2009) (citations omitted).
`
`ESIP has no other means of obtaining a substantive review of the
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`Director’s decision that ESIP’s Petition for Review is untimely. ESIP has
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`actively pursued a substantive appeal of the Board’s decision to institute the
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`subject IPR, including the Board’s decision related to the IPR Petition’s
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`compliance with 35 U.S.C. § 312(a)(2). As shown, ESIP has attempted all
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`available means to obtain review of the Board’s decision to institute the subject
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`IPR, including at least a Request for Rehearing to the Board and an appeal to this
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`Court. Regardless, no independent entity has reviewed the Board’s decision to
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`4
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`Case: 21-164 Document: 2 Page: 12 Filed: 07/29/2021
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`institute the subject IPR, nor whether the IPR Petition complied with 35 U.S.C.
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`§ 312(a)(2).
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`ESIP’s right to issuance of the requested writ of mandamus is clear and
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`indisputable. According to the PTO’s interim process, the criteria for whether a
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`decision merits Director review includes “material errors of fact or law, matters
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`that the Board misapprehended or overlooked,” or other factors. See,
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`https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/arthrex-
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`qas. In this case, the Board made multiple errors of fact and law related to
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`institution of the subject IPR, and misapprehended the statutory requirement that
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`an IPR petition identify all real parties-in-interest before that IPR is instituted.
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`The Board violated 35 U.S.C. § 312(a)(2) when the Board instituted the
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`subject IPR without making the required finding that Puzhen’s IPR Petition
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`identified all real parties in interest. See, Exhibit 1. Puzhen’s IPR Petition failed
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`to identify a real party in interest, doTERRA International, LLC, a co-defendant
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`with Puzhen in the underlying infringement action and the only party against
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`whom the subject patent was asserted at the time the IPR Petition was filed. Id.
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`There is no properly applied standard under which the only party against whom a
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`patent is asserted at the time an IPR Petition is filed is not a real party-in-interest.
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`The Board’s improper decision to institute the IPR led directly to the loss of
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`ESIP’s valuable intellectual property rights in the subject claims of U.S. Patent
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`5
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`Case: 21-164 Document: 2 Page: 13 Filed: 07/29/2021
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`No. 9,415,130. ESIP is entitled to a substantive review of the Board’s decisions,
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`especially those relating to statutory compliance that have not been reviewed by an
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`independent entity.
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`B.
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`THE SUPREME COURT’S ARTHREX RULING REQUIRES THE
`OPPORTUNITY FOR DIRECTOR REVIEW OF DECISIONS MADE BY
`ADMINISTRATIVE PATENT JUDGES
`
`
`“We hold that the unreviewable authority wielded by APJs during inter
`
`
`
`partes review is incompatible with their appointment by the Secretary to an inferior
`
`office.” U.S. v. Arthrex, Inc. et al., 594 U.S. ___ (2021) (slip op., pp. 18-19). “In
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`all the ways that matter to the parties who appear before the PTAB, the buck stops
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`with the APJs, not with the Secretary or Director.” Id., at p. 12. “In sum, we hold
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`that 35 U.S.C. § 6(c) is unenforceable as applied to the Director insofar as it
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`prevents the Director from reviewing the decisions of the PTAB on his own.” Id.,
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`at p. 22. “The Constitution therefore forbids the enforcement of statutory
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`restrictions on the Director that insulate the decisions of APJs from his discretion
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`and supervision.” Id., at 23.
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`
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`According to the Supreme Court in Arthrex, any decision made by APJs that
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`can bind the Executive Branch must be reviewable by the Director. The Director
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`does have discretion with respect to such review, but that discretion must be
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`exercised in accordance with the law.
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`6
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`Case: 21-164 Document: 2 Page: 14 Filed: 07/29/2021
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`For institution-related decisions that are not reviewable by a court, such as
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`those ruled upon in Thryv, Inc. v. Click-to-Call Techs., LP, 140 S. Ct. 1367 (2020)
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`and ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020),
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`the Director should be more liberal in granting review of Board decisions because
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`such decisions are not reviewable by any other means.
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`
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`As shown, ESIP has made multiple attempts to obtain meaningful review of
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`the Board’s decision to institute the subject IPR, and whether the IPR Petition
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`complied with 35 U.S.C. §312(a)(2), but no such review has been obtained. That
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`lack of review is a violation of the due process rights afforded ESIP by the
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`Constitution. That lack of review also makes the Board’s decisions effectively
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`final, and therefore unconstitutional under Arthrex.
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`
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`“The Director accordingly may review final PTAB decisions and, upon
`
`review, may issue decisions himself on behalf of the Board.” See, Arthrex, slip
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`op., p. 21. ESIP has petitioned the Director for a meaningful review of the Board’s
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`decision to institute the subject IPR, as well as institution-related decisions. See,
`
`Exhibit 1. The Director refused to review the Board’s decisions asserting that
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`ESIP’s Petition for Review was untimely. See, Exhibit 2.
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`C. THE INTERIM REGULATION IS INVALID
`
`
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`On June 29, 2021, the U.S. Patent and Trademark Office posted information
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`on implementation of the Supreme Court’s decision in U.S. v. Arthrex, Inc.
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`7
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`Case: 21-164 Document: 2 Page: 15 Filed: 07/29/2021
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`See, https://www.uspto.gov/about-us/news-updates/uspto-issues-information-
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`implementation-supreme-courts-decision-us-v-arthrex (“Interim Regulation”). The
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`Interim Regulation does not comply with 35 U.S.C. § 2(b)(2)(B). The Interim
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`Regulation fails to properly apply the constitutional principles articulated in
`
`Arthrex, at least as applied to ESIP’s Petition for Review.
`
`1. The Interim Regulation Does Not Comply with the Statutory
`Requirements for Rule Making
`
`The U.S. Patent and Trademark Office “may establish regulations, not
`
`
`
`inconsistent with law,” which includes that regulations “shall be made in
`
`accordance with section 553 of title 5.” See, 35 U.S.C. § 2(b)(2)(B). While the
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`Director has a certain discretion under Arthrex, that discretion must still be
`
`exercised in accordance with other applicable laws. The Director’s pronouncement
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`that 37 C.F.R. § 42.71(d) should apply to the Interim Regulation is contrary to
`
`statutory provisions for establishing regulations.
`
`
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`The Director asserts that a “Request for Rehearing by the Director must
`
`satisfy the timing requirements of 37 C.F.R. § 42.71(d).” See,
`
`https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/arthrex-
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`qas. While this requirement may be appropriate moving forward after Arthrex, it is
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`arbitrary and capricious as applied to APJ decisions made prior to Arthrex. For
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`example, applying the Director’s requirement to Arthrex’s Appellee, Arthrex, Inc.,
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`results in a conclusion that after Arthrex, Inc. has gone through the appeals process
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`8
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`Case: 21-164 Document: 2 Page: 16 Filed: 07/29/2021
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`all the way to the Supreme Court, and at least partially prevailed, any Request for
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`Rehearing by the Director Arthrex, Inc. may file after the Supreme Court’s
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`decision will be summarily denied as untimely.
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`The Director claims that review of ESIP’s Petition for Review is untimely
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`because that petition was not filed within 30 days of the Board’s Final Written
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`Decision or a decision regarding rehearing. See, Exhibit 2. ESIP’s right to seek
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`Director review of the Board’s decision to institute the IPR was not legally
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`recognized until the Arthrex decision. Thus, it is arbitrary and capricious for the
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`Director to deny ESIP’s Petition for Review as untimely.
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`
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` In accordance with 5 U.S.C. § 706, this Court should compel the Director to
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`substantively review ESIP’s Petition for Review and hold unlawful the Director’s
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`requirement that a Request for Review by the Director be filed within 30 days of a
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`final written decision or a decision on a rehearing.
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`2. The Director’s Statement that ESIP’s Petition for Review is
`Untimely is Contrary to Constitutional Principles Articulated
`in Arthrex
`
`
`“The Constitution therefore forbids the enforcement of statutory restrictions
`
`
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`on the Director that insulate the decisions of APJs from his discretion and
`
`supervision.” U.S. v. Arthrex, Inc. et al., 594 U.S. ___ (2021) (slip op., p. 23).
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`Likewise, regulatory restrictions cannot insulate APJ decisions from the Director’s
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`discretion and supervision.
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`9
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`Case: 21-164 Document: 2 Page: 17 Filed: 07/29/2021
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`
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`At the time of the Board’s decision to institute the subject IPR, regulation
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`provided that “[a] decision by the Board on whether to institute a trial is final and
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`nonappealable.” See, 37 C.F.R. § 42.71(c). In view of Arthrex, that regulation is
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`no longer valid and that decision is ultimately reserved to the Director.
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`
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`Similarly, regulations that provided the Board exclusive powers to authorize,
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`deny, or decide institution-related issues are no longer valid because Arthrex
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`requires that such decisions be subject to the Director’s review and approval. See,
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`e.g., 37 C.F.R. §§ 42.108, 42.208 and 42.72.
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`
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`At the time the Board instituted the subject IPR, applicable regulations
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`prohibited ESIP from seeking Director review of the Board decision to institute,
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`effectively insulating the Board’s decision from the Director’s discretion and
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`supervision. Arthrex establishes that such lack of reviewability by the Director
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`was unconstitutional.
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`Moreover, the Arthrex decision notes that the Appointments Clause demands
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`accountability of the Director. See, U.S. v. Arthrex, Inc. et al., 594 U.S. ___ (2021)
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`(slip op., p. 12). The e-mail from the PTO does not satisfy Arthrex’s requirement
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`for accountability at least because it is not signed by anyone. See, Exhibit 2.
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`There is no one to hold accountable for the PTO’s decision that ESIP’s Petition for
`
`Review is untimely.
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`10
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`
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`Finally, ESIP has not waived its ability to pursue Arthrex-related issues
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`because both this Court’s Arthrex decision and the Supreme Court’s Arthrex
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`decision were made after the Board’s Final Written Decision in the subject IPR.
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`See, New Vision Gaming & Development, Inc. v. SG Gaming, Inc., Nos. 2020-
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`1399, 2020-1400 (Fed. Cir., May 13, 2021).
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`Thus, ESIP’s Petition for Review is timely and should be substantively
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`reviewed by the Director.
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`CONCLUSION
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`ESIP urges this Court to issue a writ of mandamus requiring the Director to
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`substantively review ESIP’s Petition for Review. ESIP also urges this Court to
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`hold unlawful the Director’s requirement that a Request for Review by the Director
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`be filed within 30 days of a final written decision or a decision on a rehearing.
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`DATED this 29 day of July, 2021.
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`Respectfully submitted,
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` /s/ Gordon K. Hill
`Gordon K. Hill
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`Reg. No. 48,664
`Attorney for Applicant
`Customer No. 11653
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`11
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`Case: 21-164 Document: 2 Page: 19 Filed: 07/29/2021
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`CERTIFICATE OF FILING AND SERVICE
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`I hereby certify that, on this the 29th day of July 2021, I electronically filed
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`the foregoing with the Clerk of Court using the CM/ECF System and I also certify
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`that all parties were served.
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`Director of the United States Patent and Trademark Office
`c/o Office of the Solicitor
`United States Patent and Trademark Office Mail Stop 8
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`Director_PTABDecision_Review@uspto.gov
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`Mark A. Miller, Attorney
`Elliot Hales, Attorney
`DORSEY & WHITNEY LLP
`111 S Main Street
`Suite 2100
`Salt Lake City, UT 84111
`801-933-4068
`miller.mark@dorsey.com
`hales.elliot@dorsey.com
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`Gregory Stuart Smith, Attorney
`LAW OFFICES OF GREGORY S. SMITH
`913 East Capitol Street, SE
`Washington, DC 20003
`202-460-3381
`gregsmithlaw@verizon.net
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`/s/ Gordon K. Hill
`Gordon K. Hill
`Attorneys for Applicant,
`ESIP Series 2, LLC
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`12
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`Case: 21-164 Document: 2 Page: 20 Filed: 07/29/2021
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`CERTIFICATE OF COMPLIANCE
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`1. This petition complies with the type-volume limitation of Fed. R. App. P.
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`21(d)(1) because: this petition contains 2,342 words, excluding the parts of
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`the brief exempted by Fed. R. App. P. 32(a)(7)(B)(iii).
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`2. This petition complies with the typeface requirements of Fed. R. App. P.
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`32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because
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`this petition has been prepared in a proportionally spaced typeface using
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`Microsoft Word in 14 point Times New Roman.
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`/s/ Gordon K. Hill
`Gordon K. Hill
`36 West Fireclay Avenue
`Salt Lake City, Utah 84107
`Telephone: (801) 284-7000
`Facsimile: (801) 284-6505
`ghill@patebaird.com
`Attorneys for Applicant,
`ESIP Series 2, LLC
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`13
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`Case: 21-164 Document: 2 Page: 21 Filed: 07/29/2021
`Case: 21-164
`Document:2
`Filed: 07/29/2021
`Page:21
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`ADDENDUM
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`ADDENDUM
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`Case: 21-164 Document: 2 Page: 22 Filed: 07/29/2021
`Case: 21-164
`Document:2
`Filed: 07/29/2021
`Page:22
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`EXHIBIT 1
`EXHIBIT 1
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`Case: 21-164 Document: 2 Page: 23 Filed: 07/29/2021
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`FILED VIA EFS-WEB
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`PATENT
`Docket No. 3309-2-4
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Earl Sevy
`Applicant:
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`13/854,545
`Serial No.:
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`April 1, 2013
`Filed:
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`9,415,130
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`Patent No.:
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`August 16, 2016
`Issued:
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`INDUSTRIAL, GERMICIDAL, DIFFUSER
`For:
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`APPARATUS AND METHOD
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`Inter Partes Reexamination: Case IPR2017-02197
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`)Art Unit: 1799
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`PETITION TO DIRECTOR
`FOR REVIEW OF INTER PARTES REEXAMINATION-AMENDED
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`Mail Stop Petition
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA, 22313-1450
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`Attention: Office of Petitions
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`Dear Commissioner:
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`Pursuant to the recent U.S. Supreme Court decision in U.S. v. Arthrex, Inc. et al., 594
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`U.S. ___ (2021) (No. 19-1434, decided June 21, 2021), and MPEP 2681 IV, Patent Owner
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`petitions the Director for review of Board decisions in Inter Partes Reexamination proceeding
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`Puzhen Life, USA, LLC v. ESIP Series 2, LLC, Case IPR2017-02197.
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`Petition to Director
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`Page 1 of 18
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`Case: 21-164 Document: 2 Page: 24 Filed: 07/29/2021
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`BACKGROUND
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`IPR Petitioner, Puzhen Life USA, LLC (“Puzhen”), filed the Petition in IPR2017-02197
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`(“IPR”), asserting four separate grounds for invalidity of claims 1, 3 and 17 of U.S. Patent No.
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`9,415,130 (“`130 Patent”). Patent Owner, ESIP Series 2, LLC (“ESIP”) filed a Patent Owner’s
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`Preliminary Response (IPR Paper 5). The Board instituted the IPR despite failing to find that all
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`real parties-in-interest were identified in the Petition (IPR Paper 10). ESIP filed a Patent
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`Owner’s Response (IPR Paper 15). Puzhen filed a Petitioner’s Reply (IRP Paper 17). The Board
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`held an oral hearing and issued a Final Written Decision (IPR Paper 24; Exhibit A) holding that
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`the Petition had identified all real parties in interest and that two of the four asserted grounds for
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`invalidity demonstrated that claims 1, 3 and 17 were obvious.
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`ESIP appealed the Board’s Final Written Decision to the Federal Circuit. See, ESIP
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`Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020). The Federal Circuit
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`affirmed the Board’s obviousness determination and, citing Thryv, Inc. v. Click-to-Call Techs.,
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`LP, 140 S.Ct. 1367 (2020), ruled that the Board’s decision with respect to whether the Petition
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`complied with 35 U.S.C. §312(a)(2) was “an institution-related … [decision] and is barred from
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`appellate review.” See, ESIP Series 2, 958 F.3d at 1386.
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`On August 28, 2020, ESIP filed a Petition for a Writ of Certiorari in the U.S. Supreme
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`Court with respect to the Federal Circuit’s ruling that the Board’s decision under 35 U.S.C.
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`§312(a)(2) was not reviewable. See, ESIP Series 2, LLC v. Puzhen Life USA, LLC, No. 20-228.
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`On October 13, 2020, the Supreme Court denied ESIP’s Petition for cert.
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`Petition to Director
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`Page 2 of 18
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`Case: 21-164 Document: 2 Page: 25 Filed: 07/29/2021
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`REVIEW STATEMENT
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`“We hold that the unreviewable authority wielded by APJs during inter partes review is
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`incompatible with their appointment by the Secretary to an inferior office.” U.S. v. Arthrex, Inc.
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`et al., 594 U.S. ___ (2021) (slip op., pp. 18-19). “In all the ways that matter to the parties who
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`appear before the PTAB, the buck stops with the APJs, not with the Secretary or Director.” Id.,
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`at p. 12. “In sum, we hold that 35 U.S.C. §6(c) is unenforceable as applied to the Director
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`insofar as it prevents the Director from reviewing the decisions of the PTAB on his own.” Id., at
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`p. 22. “The Constitution therefore forbids the enforcement of statutory restrictions on the
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`Director that insulate the decisions of APJs from his discretion and supervision.” Id., at 23.
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`According to the Supreme Court in Arthrex, any decision made by APJs that can bind the
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`Executive Branch must be reviewable by the Director. The Director does have discretion with
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`respect to such a review. However, for institution-related decisions that are not reviewable by a
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`court, such as those ruled upon in Thryv, Inc. v. Click-to-Call Techs., LP, 140 S.Ct. 1367 (2020)
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`and ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020), the Director
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`should be more liberal in granting review of Board decisions because such decisions are not
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`reviewable by any other means.
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`As shown, ESIP has made multiple attempts to obtain meaningful review of the Board’s
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`decision to institute the subject IPR, but no such review has been obtained. That lack of review
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`is a violation of the due process rights afforded ESIP by the Constitution. That lack of review
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`also makes the Board’s decisions effectively final, and therefore unconstitutional under Arthrex.
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`“The Director accordingly may review final PTAB decisions and, upon review, may issue
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`decisions himself on behalf of the Board.” See, Arthrex, slip op., p. 21. ESIP herein petitions
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`the Director for a meaningful review of the Board’s decision to institute the subject IPR.
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`Petition to Director
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`Page 3 of 18
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`Case: 21-164 Document: 2 Page: 26 Filed: 07/29/2021
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`MPEP 2681 IV states that “the Board’s decisions are properly reviewable on petition
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`only for procedural matters and only to the extent of determining whether they involve a
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`convincing showing of error, abuse of discretion, o