`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`WESTERN DIGITAL CORPORATION,
`KINGSTON TECHNOLOGY COMPANY, INC.,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN,
`Petitioners,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`__________
`
`Case IPR2018-00082
`Patent 6,088,802
`__________
`
`Record of Oral Hearing
`Held: January 24, 2019
`__________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`
`
`
`
`
`
`Case IPR2018-00082
`Patent 6,088,802
`
`
`
`APPEARANCES:
`
`ON BEHALF OF PETITIONER WESTERN DIGITAL CORPORATION:
`
`
`BRIAN BUROKER, ESQ.
`Gibson, Dunn & Crutcher, LLP
`1050 Connecticut Avenue, NW
`Washington, DC 20036
`(202) 955-8500
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`PETER LAMBRIANAKOS, ESQ.
`Brown Rudnick, LLP
`7 Times Square
`New York, New York 10036
`(212) 209-4800
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, January
`
`24, 2019, commencing at 3:30 p.m. Eastern Standard Time by
`teleconference.
`
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`Case IPR2018-00082
`Patent 6,088,802
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`P R O C E E D I N G S
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`3:32 p.m.
`JUDGE FISHMAN: This is a telephonic oral argument hearing for
`IPR 2018-00082.
`We have all the parties on the line. I wanted to remind both parties,
`as we indicated in our original hearing order, we are limited to the record.
`And any arguments that are being presented in this oral argument should be
`supported in the record.
`We have asked you to be prepared to identify where there is such
`support. I’ll temper that a bit only by saying if we find arguments that were
`not identified as supportable in the record, if we can locate support, that’s
`fine. If not, we will be noting such an argument being disregarded in any
`final written decision.
`So, with that, the parties have a half hour each. Each party may
`reserve some time for rebuttal. Petitioner will proceed first, carrying the
`burden of persuasion and may reserve some time.
`Petitioner, do you want to reserve any of your time for any rebuttal?
`MR. BUROKER: Yes, your Honors, I’ll reserve ten minutes for
`rebuttal.
`JUDGE FISHMAN: Okay. Patent Owner, when we start with you
`after Petitioner’s argument, we’ll determine if you want to reserve any time
`for rebuttal. Let me just get a timer set up here.
`Okay, Mr. Buroker, you may proceed.
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`Case IPR2018-00082
`Patent 6,088,802
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`
`MR. BUROKER: Thank you, Your Honors. Today, as I previewed
`in various telephone conferences set in advance of this hearing, I will only
`be addressing grounds 1 and 3 with regard to the Harari, Anderson, and
`Dumas combination in ground 3, and the Harari-Anderson combination in
`ground 1. And those relate to Claims 1, 2, 11, and 12 only, not the other
`claims.
`And as we previewed, Your Honor, we wanted to formally make the
`record clear on our point about what we think the record should have
`included in those proceedings.
`As we said in Paper No. 24, which is our motion for reply, pages 1
`and 2, we believe the SAS Institute case holds that the Board has an
`obligation to allow the parties to address all grounds presented in the petition
`and issue a decision as to all of those grounds.
`And, therefore, we believe that Western Digital should have been
`permitted an opportunity to supplement the record and make argument post-
`institution as to the deficiencies that the Board identified in its institution
`decision. In particular, the arguments related to the means for mediation,
`means for mediating claim limitation.
`We believe that the denial of both the supplemental information
`request and this denial of a motion for a reply were in error, because they
`then froze the record with the petition, leaving the petition as the sole
`evidence in the record. And, therefore, that Western Digital was not
`presented an opportunity to make its case during the trial phase.
`
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`Case IPR2018-00082
`Patent 6,088,802
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`And we believe that the current framework of the rules should have
`been set aside to permit us to do so, so that we could cure what the PTAB
`Panel found to be deficiencies in the record.
`Your Honor, first, when we moved for supplemental information in
`Paper No. 17, the supplemental information states, the Board’s decision in
`Paper No. 22 at page 10 said that we wouldn’t -- that there was no de facto
`determination, because there could be further development of the record.
`But of course, there was no further development of the record
`permitted. And so that couldn’t have been a proper reason for denying the
`supplemental information. The petition effectively was frozen in time as to
`the supplemental information request.
`So then the petitioner moved for a reply in Paper No. 24, and in
`Paper No. 32, the denial of that motion, some of the rationale we take issue
`with, Your Honors. First of all, the Panel said that we could have moved for
`reconsideration of the institution decision.
`But as the Panel knows, the reconsideration is limited to determining
`whether something has been overlooked or misapprehended. And that’s not
`the argument the Petitioner is trying to make. What we are trying to make is
`a supplemental record to cure deficiencies in the petition.
`So taking the Board’s initial institution decision at its face that there
`wasn’t a deficiency of evidence as to the proof on the means for mediation,
`means for mediating limitation, that cannot be cured within the four corners
`of the petition.
`
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`Case IPR2018-00082
`Patent 6,088,802
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`
`The rules should permit and should have permitted the inclusion of
`the evidence that was proffered in this case. And we believe that that’s
`required for due process.
`So what we would have asked and did ask was for the reopening of
`discovery in the IPR, for the introduction into the record of the supplemental
`evidence from Exhibits 3001, 3002, and 3003, merits briefing as to why
`those pieces of supplemental evidence would demonstrate the invalidity on
`grounds 1 and 3, and then a final determination that Claims 1, 2, 11, and 12
`are invalid on those grounds. That’s our specific request, that was what we
`were seeking to do through supplemental information and reply.
`And one more issue that we wanted to clarify for the record that we
`didn’t have a chance to respond to is what is a ground. As we’ve been
`arguing in the request for supplemental information and in the reply, the
`ground is the set of references that are proposed on page 2 of our petition.
`That’s the Harari, Anderson, and Dumas set of references. That’s the
`ground.
`The specific evidence and argument that is cited in the petition to
`support that is just that, supporting evidence. The ground is still the ground.
`And so in denying the supplemental information when the Panel said that we
`were attempting to amend the ground by citing to additional evidence within
`those references, your Honor, we respectfully request that’s not correct. The
`ground has always been the same.
`And in denying our -- well, in the Board’s order on the conduct of
`proceeding in Paper No. 32, denying the request for reply, the Panel
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`Case IPR2018-00082
`Patent 6,088,802
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`attempted to distinguish the Kyl remarks about what a ground is in the
`Clearlamp District Court and saying that those cases related to what a
`ground is for purposes of estoppel.
`But a ground is the same in the statute. There’s two statutes that
`refer to a ground. We’re referring to the portion of 312(a)(3) that addresses
`what grounds have to be determined by the Board. And it’s the same use of
`the term. We believe, your Honors, that we aren’t amending the ground.
`We’re not coming up with a new ground. It’s the same ground. And that
`evidence that came to light after the petition was filed goes to that very same
`ground of Harari in view of Anderson, in view of Dumas.
`We believe that in a post-SAS world, where a petition is instituted
`with issues where the Board has found that the record is insufficient to find
`invalidity, that during the trial phase, there has to be presented an
`opportunity to cure those deficiencies, or else there is a de facto denial of
`due process.
`And that’s the position we wanted to clarify, Your Honor. I know
`that we appreciate the Board taking the time to set up this hearing, given all
`the logistical challenges we’ve had. But we wanted to make the record very
`clear about what position we believe should have happened in this Board
`proceeding, and that we will be taking that issue on appeal if the relief that
`we requested is denied.
`And that’s the statement we wanted to make, Your Honors.
`JUDGE FISHMAN: Okay, nothing further right now, then from
`Petitioner?
`
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`Case IPR2018-00082
`Patent 6,088,802
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`MR. BUROKER: No, Your Honor.
`JUDGE FISHMAN: Okay, so you have, oh, you have 20-some
`minutes left. Mr. Lambrianakos, would you like to respond?
`MR. LAMBRIANAKOS: Yes, your Honor. What Petitioner has
`done here today is --
`JUDGE FISHMAN: Oh excuse me, let me interrupt one moment.
`Did you want to reserve any of your time for any rebuttal?
`MR. LAMBRIANAKOS: Sure, I’ll reserve 15 minutes.
`JUDGE FISHMAN: Okay, go ahead.
`MR. LAMBRIANAKOS: Thank you. Petitioner’s arguments here
`today do not contest the fact that its petition failed to meet its burden under
`the law because it failed to show where the structure for the claims’ means
`for mediating recited in all of the apparatus claims as found in the prior art.
`Now, Petitioner simply decided not to address the issue of where that
`structure for the means for mediating is found, that interface control device
`910. The law is clear that a petition must contain all of the arguments for
`invalidity to be presented to the Board, and there’s been no dispute here
`today that the petition in its four corners did not demonstrate how the means
`for mediating was found in the prior art references.
`Everything that the petitioner has done since the institution decision
`has been aimed at trying to fill that hole in his petition. The motion for
`supplemental information sought to submit a new declaration from his
`expert to address this claim limitation.
`
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`Case IPR2018-00082
`Patent 6,088,802
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`
`When that motion was denied and the Patent Owner waived its
`Patent Owner response, Petitioner moved for leave to file a reply that would
`have included the same supplemental evidence that was rejected in its prior
`motion. That motion of course was also denied.
`So where we are today is that the petitioner is looking to use the SAS
`decision as authority for finding that there’s, for some reason, been a change
`in the law, which has always required that the petitioner include all of its
`arguments for invalidity in its opening petition.
`SAS had no effect on the requirements of the burden of proof. It had
`no effect on the procedural aspects of whether new arguments for invalidity
`should be able to be added to a proceeding after the initial petition.
`And there’s simply no denial of due process where Petitioner,
`through its own expert, admits that the corresponding structure that is noted,
`that it actually argued for in its petition, the interface control device 910, was
`simply not addressed by choice in its own petition. Their very own expert
`said that he decided not to address that issue.
`And so there can’t be a denial of due process under any
`circumstances, under SAS or otherwise, where a petitioner knowingly makes
`a decision not to include certain arguments in his petition, and then realizes
`thereafter, after an institution decision, that it simply made a mistake.
`And so we believe that the Board has properly decided the issues that
`were before it in these motions and in the institution decision.
`Of course, Petitioner has not presented any new arguments here
`today that would, you know, change the Board’s decision-making process
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`Case IPR2018-00082
`Patent 6,088,802
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`here. We believe that the Board has properly addressed these issues. And
`other than this, we have nothing further to add at this time, but reserve the
`rest of our time.
`JUDGE FISHMAN: Sorry, I forgot I was muted. Mr.
`Lambrianakos, you have about 22 minutes left. Mr. Buroker, did you want
`to spend some time in rebuttal? You have approximately 23 minutes left.
`MR. BUROKER: Yes, Your Honors, this is Brian Buroker.
`Of course the SAS Institute decision was a drastic change in the law.
`It required the Office to change many of its policies and procedures, so of
`course it’s a change in the law.
`And particularly as it affects what happened in this case, because in
`the past, there would have likely been a partial institution where these
`grounds would not have, the ground that would have, Office found there was
`insufficient evidence to show invalidity wouldn’t have instituted on those
`grounds. So there wouldn’t have been this situation. We wouldn’t be even
`talking about Claims 1, 2, 11, and 12 in this proceeding.
`But there is now an issue because estoppel attaches to those claims,
`whereas they wouldn’t, under a partial institution, which was the Office’s
`practice from the very beginning of the IPR revision being in place.
`And that estoppel is -- requires that in order for us to have lost the
`right to argue invalidity as to, you know, certain arguments in the district
`court, we should have had an opportunity to present our argument in full in
`the PTAB.
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`Case IPR2018-00082
`Patent 6,088,802
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`
`Now, there’s an argument that we made a choice. Well, we did
`present argument as to the element using a claim construction that was being
`proffered by both defendants at the time. We didn’t, the petition does not
`include argument under the claim construction that identifies corresponding
`structure as element 910.
`That is true, but there are always going to be situations in this world,
`the post-SAS world, where the Office institutes on grounds that it finds the
`evidence lacking. And in all of those cases, it is that the Board’s policy
`going forward to be, to take the position that the petition, if there is an error
`that’s determined to be in the petition, that the Petitioner’s just out of luck.
`That it’s going to go straight to a final determination that those claims are.
`But invalidity is not proven. That just doesn’t seem like good public
`policy, and it certainly doesn’t feel like due process, Your Honors, to have
`no opportunity to supplement what has been identified by the Board as an
`error.
`
`And once you’re in the trial phase, there should be some proceeding
`to allow supplemental evidence, argument, some record-making to cure the
`deficiency in the petition that’s been identified.
`And that’s all we’re asking. Thank you, your Honors.
`JUDGE FISHMAN: Ok, Mr. Lambrianakos, you have about 22
`minutes left if you wanted to say anything further in rebuttal, and that’ll be
`the end of our hearing.
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`MR. LAMBRIANAKOS: Yes, your Honor. The SAS decision did
`not give a Petitioner the right to get a second bite at the apple at their
`original petition.
`The issue here is not the sufficiency of evidence with respect to
`whether the interface control device 910 is found in the prior art. There was
`no evidence submitted on that issue, there was no argument made on that
`issue. That issue was essentially waived by the petitioner because the
`petitioner decided not to address it at all.
`And so this isn’t a situation where there’s an issue about the
`sufficiency of evidence and whether additional relevant evidence on the
`same point could be provided.
`The point was simply not made, and there’s nothing in the SAS
`decision to suggest that it was the intent of the Supreme Court or the intent
`of the underlying statute to allow a petitioner to essentially make new
`arguments post-institution in order to try cure deficiencies in the original
`petition.
`And so for those reasons, Your Honor, we don’t see any reason why
`there’s been any denial of due process or otherwise any disposition of this
`case that is inconsistent with the SAS decision. Thank you.
`JUDGE FISHMAN: Okay, I appreciate everyone’s time. The case
`is submitted.
`(Whereupon, the above-entitled matter went off the record at 3:49
`
`
`p.m.)
`
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`Case IPR2018-00082
`Patent 6,088,802
`
`
`
`FOR PETITIONER:
`
`Brian Buroker
`GIBSON, DUNN & CRUTCHER, LLP
`bburoker@gibsondunn.com
`
`Blair Silver
`bsilver@bannerwitcoff.com
`
`
`FOR PATENT OWNER:
`
`Peter Lambrianakos
`Vincent Rubino
`Enrique Iturralde
`BROWN RUDNICK, LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`eiturralde@brownrudnick.com
`
`
`13
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`
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