Trials@uspto.gov
`571-272-7822
`
`Paper No. 63
`Entered: April 6, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`HUNTING TITAN, INC.,
`Petitioner,
`
`v.
`
`DYNAENERGETICS GMBH & CO. KG.
`Patent Owner.
`________________
`
`Case IPR2018-00600
`Patent 9,581,422 B2
`________________
`
`Record of Oral Hearing
`Held: February 18, 2020
`________________
`
`Before ANDREI IANCU, Under Secretary of Commerce for Intellectual
`Property and Director of the United States Patent and Trademark Office,
`ANDREW HIRSHFELD, Commissioner for Patents, and
`SCOTT R. BOALICK, Chief Administrative Patent Judge.
`
`
`571-272-7822
`
`Paper No. 63
`Entered: April 6, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`HUNTING TITAN, INC.,
`Petitioner,
`
`v.
`
`DYNAENERGETICS GMBH & CO. KG.
`Patent Owner.
`________________
`
`Case IPR2018-00600
`Patent 9,581,422 B2
`________________
`
`Record of Oral Hearing
`Held: February 18, 2020
`________________
`
`Before ANDREI IANCU, Under Secretary of Commerce for Intellectual
`Property and Director of the United States Patent and Trademark Office,
`ANDREW HIRSHFELD, Commissioner for Patents, and
`SCOTT R. BOALICK, Chief Administrative Patent Judge.
`
`
`
`
`
`Case IPR2018-00600
`Patent 9,581,422 B2
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`JASON SAUNDERS, ESQUIRE
`CHRISTOPHER P. McKEON, ESQUIRE
`Arnold & Saunders, LLP
`4900 Woodway Drive, Suite 900
` Houston, TX 77056
`
`ON BEHALF OF THE PATENT OWNER:
`BARRY J. HERMAN, ESQUIRE
`PRESTON H. HEARD, ESQUIRE
`CHRISTINE H. DUPRIEST, ESQUIRE
`Womble Bond Dickinson
`Atlantic Station
`271 17th Street, N.W.
`Suite 2400
`Atlanta, GA 30363
`
`The above-entitled matter came on for hearing Tuesday, February 18,
`2020, at 1:15pm at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia.
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`P R O C E E D I N G S
`DIRECTOR IANCU: You may be seated.
`Good afternoon, all. This is Hunting Titan v. DynaEnergetics, IPR
`Number 2018-00600. Will the parties please enter their appearances? Let’s
`begin with the Petitioner.
`MR. SAUNDERS: Jason Saunders of the firm Arnold & Saunders
`appearing for Petitioner, and with me at the counsel table is Christopher
`McKeon.
`DIRECTOR IANCU: Welcome.
`Patent Owner?
`MR. HERMAN: Good afternoon. Barry Herman with Womble Bond
`Dickinson for DynaEnergetics, the Patent Owner, and with me at the table is
`Christie Dupriest and Preston Heard.
`DIRECTOR IANCU: All right. You may stay there for a minute, if
`you don’t mind.
`MR. HERMAN: Absolutely.
`DIRECTOR IANCU: Each party will have 15 minutes to present
`arguments. Patent Owner will be first, and you may reserve up to five
`minutes for rebuttal; do you wish to do so?
`MR. HERMAN: Yes, Your Honor. I’d like to reserve four minutes,
`if I could.
`DIRECTOR IANCU: Four minutes. Very good. So we’ll do that.
`Chief Judge Boalick is in charge of the clock.
`CHIEF JUDGE BOALICK: Ready to go.
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`DIRECTOR IANCU: We’ll see what he does. Are you ready?
`MR. HERMAN: I am. Thank you, Director.
`DIRECTOR IANCU: Please.
`MR. HERMAN: Distinguished members of the Precedential Opinion
`Panel, may it please the panel, the AIPLA, the only neutral party that
`submitted an amicus brief in this matter, because they simply want to have a
`good system in place that is fair to all, came out almost identically to the
`Patent Owner in this case.
`In contrast, other amici who have, generally have a vested interest in
`killing patents, came out on the side of Petitioner. In doing so, they largely
`try to scare this panel with a parade of horribles that could happen if the
`Board isn’t allowed to raise their own invalidity issues sua sponte.
`But all of these arguments about unexamined claims, about collusion
`between the Patent Owner and the Petitioner, about Petitioner supposedly
`running out of money to combat a motion to amend after they initiated the
`proceeding in the first place by bringing a petition and harm to the public,
`these are all illusory. There is no evidence that any of these horrible things
`have ever happened, and there are other mechanisms for the PTO to use if
`one of these situations arises.
`But importantly here, Your Honors, if you look at what actually
`happened in the underlying dispute between DynaEnergetics and Hunting
`Titan, you can see what can happen in a real parade of horribles that can
`happen if this body decides that the Board can raise issues sua sponte.
`In this case, the Petitioner said that the original claims were
`anticipated, the Patent Owner disagreed but filed a contingent motion to
`amend to remove the anticipation argument and the Petitioner basically
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`agreed, because they didn’t raise anticipation as a defense.
`At the hearing, Your Honors, the Board and the Patent Owner got into
`a heated debate about the obviousness of the amended claims and about
`whether secondary considerations applied, whether there was motivation to
`combine.
`There was no mention or even a hint that the proposed substitute
`claims could be found invalid as anticipated. Yet lo and behold, in the final
`written decision, the Board, apparently agreeing they couldn’t find the
`substitute claims obvious, instead found that the claims were invalid based
`on the, quote, anticipatory nature of the Schacherer reference.
`Your Honors, we submit that that’s somewhere in between 102 and
`103, kind of a 102.5 statute, that can happen when the Board is allowed to
`sua sponte raise arguments that were not raised by either side.
`DIRECTOR IANCU: Let me ask, interject a question, there, and it
`relates to both points you have already made.
`Assume that the Board, the panel of three APJs, does actually think,
`based on the records and their experience, that there is -- the claims are
`anticipated, the amended claims are anticipated.
`MR. HERMAN: Yes.
`DIRECTOR IANCU: What are they to do, close their eyes and say,
`“Well, too bad. The petitioner didn’t make the right argument”?
`MR. HERMAN: Well, Your Honor, that’s correct. There is no
`statutory authority for the Board to raise their own issue sua sponte, and this
`has been raised head-on in the SAS - Iancu decision, and so I think the
`Board would, under your direction, you are permitted to initiate an ex parte
`reexam, and that’s what can be done if the Board is really that confident that
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`even though the Petitioner, who vehemently opposed the original motion to
`amend and didn’t make the argument, if the Board thinks that the Petitioner
`is wrong, then the Board can initiate an ex parte reexam.
`
`DIRECTOR IANCU: But the PTO issues public document that is
`good and enforceable against all members of the public. Doesn’t the PTO
`have an obligation to make sure that the claims it issues, original or
`amended, in this case, are actually valid?
`
`MR. HERMAN: Thank you, Director.
`
`The Board has the duty to make sure on the original -- in order to
`enter the motion to amend, that the claims do not -- that they are being
`offered, the substitute claims are being offered for a challenged claim and
`that they introduce no new matter and that they’re not broader than the
`original claims.
`
`So this, this situation that has arisen when you have a Petitioner
`opposing the motion to amend, quite frankly, the only party that is hurt by
`that is the Petitioner themselves. And this is litigation. This is an
`adversarial proceeding. So the answer is that the Board can issue an ex parte
`or enter an order for ex parte reexam, or another competitor -- these are
`competitors, by the way. I think that does play into this -- but another
`competitor, if they are sued or if they see that the claims come out, they are
`permitted to file their own inter partes review.
`
`So I don’t think the Board, because -- look, the SAS case, Your
`Honors, specifically explained the powers that the Board has in a similar
`situation, because they said -- and they went through the history of reexam
`versus inter partes review.
`
`Reexam, the PTO has broad inquisitorial powers, the same as
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`examination. In an IPR, it is not an agency-led inquisitorial process for
`reconsidering patents. Instead, Congress opted for a party-directed
`adversarial process.
`
`There is nothing -- and I should note, Your Honors, as you know from
`the statutes, for reexam the Director is expressly permitted to initiate an ex
`parte reexam.
`
`DIRECTOR IANCU: Well, what difference does it make? So the
`panel is sitting there. It sees, it’s right there before their eyes,
`hypothetically, the claims are anticipated. They issue a decision, as you’re
`suggesting saying that “Well, too bad. Our hands are tied. Petitioner didn’t
`make the right arguments, but we will institute or we recommend or
`something the Director institute an ex parte reexam.”
`
`What difference does it make? Aren’t we getting back to the same
`place?
`
`MR. HERMAN: Well, Your Honor, no, because in the instance
`where you’re talking about what happened to DynaEnergetics, the Patent
`Owner here, we were never faced with this anticipation argument until we
`received the final written decision. So we didn’t have the ability to, we
`didn’t have the ability to counter the arguments that the Board made.
`
`In reexam and in inter partes reexam, ex parte and inter partes, there
`are procedural safeguards in place. If the Board were to issue ex parte
`reexam and on a new ground, then the Patent Owner is permitted to raise
`new arguments. It’s not final. The Patent Owner can further amend the
`claims.
`
`None of those procedural safeguards are in place under the situation
`that you’re talking about here, where the Board sua sponte raises their own
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`invalidity argument.
`COMMISSIONER HIRSHFELD: So in your brief, you state that if
`the Board can raise a new grounds of rejection, one consideration should be
`whether the ex parte reexamination is preferable, a preferable alternative.
`Can you discuss how we should determine, in your view, whether it is
`a preferable alternative?
`MR. HERMAN: Yes. Thank you, Commissioner.
`First of all, our position is that the statute and the SAS Supreme Court
`case would say that there are no situations where this should happen.
`If this Precedential Opinion Panel were to disagree and think that
`there is some limited rulemaking it can do to allow for sua sponte action by
`the Board, then it should look at whether or not the motion to amend was, in
`fact, opposed, and if it was opposed, then -- and consider why the Petitioner,
`who vehemently opposed the original claims on anticipation grounds and the
`motion to amend on obviousness grounds, didn’t raise the argument.
`We would submit it’s because the claims simply aren’t anticipated and
`then look to see why ex parte reexam is not an alternative.
`CHIEF JUDGE BOALICK: If the Board were to determine ex parte
`reexam is not an alternative -- and by the way, that would be, need to be
`ordered by the Director. The Board has no power to order reexamination --
`MR. HERMAN: I understand that.
`CHIEF JUDGE BOALICK: -- but if that is not the chosen option,
`what remedy would be correct and what procedure is actually required, and
`then in this particular case, what would be the remedy?
`MR. HERMAN: Well, Your Honor, if we look at who is being
`harmed by this supposed invalid claims being issued, it’s not the public,
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`because the Patent Owner is not asserting the claims against the public.
`
`And also, I think you need to give the Patent Bar and the practitioners
`that appear before you some credit. If, in fact, that you -- that the Board or
`someone else makes some sort of indication that they believe the claims are
`invalid, then – and we know, the -- Hunting Titan made it seem as if the
`Patent Owner knows that these claims are invalid.
`
`Well, we certainly disagree with that, but if we didn’t know that the
`claims were invalid and we prosecuted the case, then we would be subject to
`sanctions and the like.
`
`So there are protections in place if an actual invalid claim and that the
`Patent Owner knows it is at issue.
`
`I think with respect to notice, Your Honor, and of course, as you
`know, in this case, we did not receive notice until the final written decision.
`We think the case law is clear that an agency may not change theories in
`midstream without giving the Patent Owner reasonable notice of the change
`and the opportunity to present argument under the new theory.
`
`That’s from Arthrex. SAS held something similar, and there are
`several Federal Circuit cases, including American Holdings, In re NuVasive,
`Dell and In re Magnum Oil Tools, where the situation was not even as
`severe as it was here. Here, as in NuVasive, they did not point to the
`specific teaching in the art. In EmeraChem, they were relying on a ground
`not raised by the petitioner, and in Dell, they raised an argument that was too
`late.
`Ours, Dell was at least raised in the hearing. Here, ours was not
`
`raised until the final written, the final written decision.
`
`And to be clear, Your Honors, they changed the statute -- the
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`Petitioner relied on 103, obviousness grounds, and the Board in their final
`written decision relied on this anticipatory nature, somewhere between 102
`and 103.
`
`The danger, Judge Boalick, about allowing the Board to raise their
`own argument sua sponte are really, are really exemplified here, because the
`Board did not consider any of the secondary considerations in any of the
`defenses to obviousness that were here, and Hunting Titan has made the
`argument that, in fact, the Board did it on alternative grounds, anticipation
`and obviousness.
`
`That’s not true, Your Honors. In fact, in the final written decision at
`Page 30, the Board specifically said they were only ruling on anticipation.
`And the fact is, from the decision itself you can see that none of the
`secondary considerations or motivation to combine were discussed at all in
`the case.
`
`DIRECTOR IANCU: Mr. Herman, while we are at the time, but if
`you don’t mind, I’ll ask one more question.
`
`MR. HERMAN: Please.
`
`DIRECTOR IANCU: You said at the very beginning that the Board
`doesn’t have the statutory authority to issue a decision on a basis that wasn’t
`argued.
`
`Where are you getting that from in the statute? Doesn’t 318, 35 USC
`318 say that the final written decision shall address the patentability of any
`new claim added during the process?
`
`MR. HERMAN: Director, that’s a good question. So 318 does use
`the words “determined to be patentable,” but they use it with respect to both
`the original claims and the amended claims.
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`And the Supreme Court and the Federal Circuit has already said that
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`the Board does not have the power to raise their own unpatentability
`arguments on the original claims.
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`So if you read the statute consistently within itself, you can’t say that
`the determined to be patentable language has a different meaning for the
`amended claims than it does for the original claims.
`
`DIRECTOR IANCU: Except that the new claims have never been
`examined, unlike the original.
`
`MR. HERMAN: That’s correct, Your Honor. But with respect to 318,
`it uses the words determined to be patentable.
`
`In 307, which was the argument I believe that was made by Google in
`their amicus briefs, the idea that somehow, because the reexam statute --
`which, by the way, as we mentioned, the Director is able to initiate ex parte
`reexam on his own, those were the differences.
`
`We don’t believe that the statute in the SAS case allows for the -- a
`difference in treating the amended claims versus the original claims.
`
`And as you know, the orig -- the amended claims by definition are
`narrower than the original claims, so the original claims have been
`examined.
`
`In this case, in the contingent motion to amend, the claims might be --
`it’s possible that those original claims are found invalid, but that doesn’t
`mean that the narrow claims have not been examined.
`
`And I see I’m out of time, Your Honor.
`
`CHIEF JUDGE BOALICK: I’ll have one more follow-up. We’ll
`restore time to the Petitioner.
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`MR. HERMAN: Thank you, Chief Judge Boalick.
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`CHIEF JUDGE BOALICK: So you say the amended claims in a
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`sense have been examined because they’re narrower than the original claims
`that are being challenged, but isn’t the problem with that that the only way
`we get to look at the amended claims in a contingent motion is if the Board
`finds that the original claims were unpatentable and thus it’s unclear what is
`the scope of an allowable claim?
`
`I understand that if the original claims had not been found
`unpatentable, then that would make sense, but how does that make sense in a
`world where the original claims have been found unpatentable?
`
`MR. HERMAN: Because, Your Honor, it makes sense in the word of
`an adversarial process where there -- under your scenario, remember, the
`Petitioner hasn’t argued against the patentability of the amended claims in
`the way that the Board thinks so.
`
`You know, sometimes that’s just the nature of this type of proceeding,
`and we believe the SAS case made clear that the inquisitorial powers that the
`Board has during reexam, the Congress made a deliberate choice to take that
`away. They changed it from inter partes reexam to review, and they took
`away some of those. And as I said before, there are no procedural
`safeguards in place for a Patent Owner under those circumstances.
`
`DIRECTOR IANCU: All right. Thank you, counsel, Mr. Herman.
`
`Mr. Saunders?
`
`MR. SAUNDERS: Thank you for your time today.
`
`The first question this panel asked has already been answered
`repeatedly. The Board should evaluate the patentability of proposed
`amended claims based on the entire record and any ground justified by that
`record.
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`That’s made clear in the informative orders in Western Digital and
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`Lectrosonics, citing Aqua Products and Bosch. That comports with the
`Patent Office’s role as a gatekeeper in determining patentability.
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`And the Patent Owner hasn’t shown any cause to disturb that sound
`reasoning. Here, in this case, the proposed amended claims were found both
`anticipated and obvious.
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`As Patent Owner’s counsel just said, secondary considerations were
`discussed at great length in the hearing. They simply weren’t there. They
`weren’t strong enough to overcome the showing of obviousness.
`
`And the questions of anticipation and obviousness that the Board
`ultimately decided here were both instituted grounds of this IPR.
`
`DIRECTOR IANCU: Hold on. Hold on. You also said in your brief
`the same thing you just said, that the Board decided both questions.
`
`MR. SAUNDERS: Yes, Your Honor.
`
`DIRECTOR IANCU: What’s your basis for saying that? Isn’t it clear
`from the final written decision that the Board did not address obviousness?
`
`MR. SAUNDERS: From my reading, it is not. I think it’s very clear
`that they addressed both. They --
`
`DIRECTOR IANCU: So at Page 30 of the final written decision, and
`I’m quoting, “Our decision today addresses only Hunting Titan’s
`anticipation challenge based on Schacherer, while rendering no findings or
`conclusions as to Hunting Titan’s numerous obviousness challenges.”
`
`MR. SAUNDERS: I believe that’s addressing the original claims, not
`the amended
`claims.
`
`DIRECTOR IANCU: Okay. What’s your basis for that?
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`MR. SAUNDERS: My basis for that is -- I apologize. I don’t have
`the document in front of me right now, but I believe there’s a lengthy
`discussion regarding obviousness with regard to the amended claims,
`including a lengthy footnote providing the reasoning for the motivation of
`combined references.
`CHIEF JUDGE BOALICK: So, I mean, I see a footnote, but I see
`entirely missing any discussion of any reasons to combine anything. All I
`saw in the briefing was an element-by-element exposition of, you know, just
`looking at an element and multiple references may teach this element. Then
`we move to the next element. Here’s where other multiple references teach
`it. But it’s nowhere sewn up into a single theory that I could find.
`Maybe you could point me in the briefs to where you do have a theory
`of obviousness, but I couldn’t find it, and I couldn’t find any discussion of
`secondary considerations, either.
`In fact, in the briefing in the -- your opposition was all about
`obviousness. It didn’t address anticipation.
`As Patent Owner points out in their reply, that you appear to have
`entirely abandoned the anticipation grounds, and then I didn’t find anywhere
`in your sur-reply where you really took on that notion of, “No, we are
`asserting anticipation.”
`So I was sort of left missing a single theory of obviousness or really a
`theory of anticipation. But maybe you could point me in the briefs to where
`that is.
`MR. SAUNDERS: I believe that might take some time, but --
`CHIEF JUDGE BOALICK: Okay. Well, we only have 15 minutes.
`MR. SAUNDERS: Right. On -- I’m not sure what document this is --
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`right. In the final written decision, the Board, for example, on Page 26 says,
`“In our view, none of those additional limitations renders a proposed
`substitute claim novel or not obvious over the prior art of record.”
`
`DIRECTOR IANCU: So to Judge Boalick’s point, where is the
`analysis component of that?
`
`But also in the conclusion, on Page 29, “We are persuaded that
`Hunting Titan has carried its burden, showing that Dyna’s proposed
`amendments do not overcome the anticipatory nature of Schacherer’s
`disclosure.”
`
`So focused again on anticipation --
`
`MR. SAUNDERS: I think, I think, frankly, to the extent the Board
`didn’t sufficiently address obviousness, the solution is remand for the panel
`to more fully address that issue, not to issue claims that the Board thought
`were unpatentable.
`
`DIRECTOR IANCU: Well, the better question is: What’s the basis
`for your allegation -- not allegation -- the statement in your briefing and here
`orally that the Board did conclude that there is obviousness when the Board
`actually says expressly that they did not?
`
`But more importantly, where in your own briefing and why did you
`not include an analysis of anticipation?
`
`MR. SAUNDERS: Well, I think the basis of my statement is that
`passage I read from Page 26 where they said neither -- nothing that the
`Patent Owner said overcame either the anticipatory or obvious finding.
`
`DIRECTOR IANCU: Is there more than just that?
`
`MR. SAUNDERS: I believe there is, including that footnote.
`
`DIRECTOR IANCU: Okay. So it’s that statement on Page 26 and
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`footnote 5?
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`MR. SAUNDERS: Yes.
`
`DIRECTOR IANCU: And then –
`MR. SAUNDERS: And as far what we can put in a, in an opposition
`to a motion to amend, we only have 25 pages, and we’ve got a very small
`amount of space and a very small amount of time and we can’t rehash
`everything in the petition. We can’t put everything back in. There simply
`isn’t space.
`
`We’ve got a very small window of opportunity to make what we think
`are strong arguments. We did the best we could under the circumstances,
`and I think we did as well as any Petitioner can be expected to do.
`
`I think this is a difficult situation that the Petitioner is put in. The
`Patent Owner knows all of the prior art, can draft whatever claims they want,
`and they did that here, and, as the Board is required to do, they made a
`judgment on patentability based on the entirety of the record.
`
`COMMISSIONER HIRSHFELD: So I also would like to ask a
`question about your opposition similar to what my colleagues have asked,
`but I’m going to be a little more specific on the obviousness-type grounds.
`
`So your view is, or was in the paper, that you found obviousness over
`the Schacherer in combination with other references. Is it your position that
`Schacherer was missing something from the proposed amended claims?
`
`MR. SAUNDERS: No. That is not my position. My position is
`simply that that’s the argument that we chose to focus on in the limited
`amount of space that we had.
`
`COMMISSIONER HIRSHFELD: If you feel that Schacherer teaches
`everything of the proposed amended claims, why did you not stick to the
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`anticipatory ground, as that would have been even shorter to write in your
`brief?
`
`MR. SAUNDERS: Well, frankly, Your Honor, we thought it was a
`stronger, more certain argument on the obviousness side than anticipation.
`That was a tactical decision, to focus our arguments in the limited space we
`had.
`CHIEF JUDGE BOALICK: You know, you can ask for more pages,
`
`if it’s needed. I know that I’ve been on panels that have granted that. Just,
`you know, if there’s a reason the case requires, it is possible to ask.
`
`MR. SAUNDERS: Thank you.
`
`CHIEF JUDGE BOALICK: One thing that I’m a little still puzzling
`over is your theory of notice that within your briefing, you were saying that,
`“Well, Patent Owner is on notice of an anticipation ground as to the
`amended claims because the original claims were challenged under an
`anticipation ground.”
`
`But I still don’t understand how that translates from what’s being
`challenged against original claims to amended claims. As you said, there
`could be tactical decisions. There could be other reasons why Petitioner no
`longer asserts one theory of unpatentability, and is it really fair to Patent
`Owner to ask them to defend against all possible theories of invalidity
`against all the art that’s in the record?
`
`I mean, shouldn’t they have notice of what theories are being asserted
`against the amended claims in order to defend against those?
`
`MR. SAUNDERS: I think that there is notice for anticipation, and I
`think the notice and opportunity to respond are to the hearing as a whole, to
`the proceeding as a whole. And here we have -- all of the cases discussing
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`notice and opportunity to respond have to do with notice in the petition and
`the institution decision.
`
`And there’s no question that anticipation by Schacherer was in the
`petition, was in the institution decision, and their amendment is just one of
`the many responses.
`
`In fact, in their motion to amend, they specifically said, “These claims
`aren’t anticipated by Schacherer, and here’s our argument why.”
`
`DIRECTOR IANCU: Well, but Mr. Saunders, they’re expressly
`amending the claims to overcome the original argument, and they’re making
`the express point in their motion to amend that the amendment overcomes
`the original anticipatory arguments made by you, by the Petitioner.
`
`Where is their notice to them or to anyone that now, in light of the --
`with respect to the new claims, you still believe that they’re wrong and that,
`in fact, the claims, the new ones, are still anticipated?
`
`There is new, there are new claims at issue here.
`
`MR. SAUNDERS: I think if that’s the case, then we need to file a
`new petition when there’s a motion to amend, and I don’t believe that’s the
`standard under the rules or the law, that the Petitioner must file a new
`petition that addresses all of the possible issues.
`
`And instead, I think the law is fairly clear that --
`
`DIRECTOR IANCU: What are the possible issues? They said in
`their motion that they’re not anticipated. Why don’t you respond directly to
`that point in your opposition? It’s not a thousand theories. They got one:
`It’s not anticipated.
`
`MR. SAUNDERS: Well, they made more than one --
`
`DIRECTOR IANCU: Okay.
`
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`MR. SAUNDERS: -- argument about why the claims or more than
`
`one statement about why they thought the claims were not anticipated, and
`the truth is, we had to make a tactical decision.
`
` But even --
`
`DIRECTOR IANCU: So why, why didn’t you waive? Why isn’t
`there a waiver? They argue it’s not anticipated. You’re silent with respect
`to that in opposition. Why isn’t this a, you know, typical case of waiver of
`that argument?
`
`MR. SAUNDERS: Well, I think one of the reasons is that the Patent
`Office has a primary goal as a gatekeeper to ensure that the patent monopoly
`is kept within its legitimate scope.
`
`DIRECTOR IANCU: What about their point that they made during
`opening argument that the SAS decision and other cases do not allow us to
`do that?
`
`MR. SAUNDERS: Well, I think SAS is not terribly relevant. It had
`to do with the Board taking a position in the institution decision and then,
`despite no argument to the contrary, taking a different position in the final
`written decision as to claim construction.
`
`I think that’s a very different situation from the Board making a
`determination on the facts at the end of the process.
`
`And I think, you know, if there’s going to be more notice, then you’ve
`got to have some additional Board feedback in the beginning, which does
`not seem consistent with the necessity to proceed with particular dispatch,
`getting these things done in a timely fashion.
`
`COMMISSIONER HIRSHFELD: Can you articulate what your
`standard for proper notice would be? You hinted at it before, but I would
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`like to just hear the specificity.
` MR. SAUNDERS: I think --
` CHIEF JUDGE BOALICK: Assume that we think that your theory
`doesn’t work about notice, you know, in the original petition. So --
`
`MR. SAUNDERS: Then I think -- well, as the courts have already
`decided, it’s not a new ground if it’s either an instituted ground or it’s the
`same disclosure that’s been at issue throughout the case. And here, we’re
`talking about the same disclosure that’s been at issue throughout the case.
`
`So I think to the extent there is new art or new portions of the art cited
`or a new obviousness theory, something like that, I think then it might be
`appropriate to do something like the Board did in Rimfrost in IPR2018-
`00295, where there was an opportunity, a short opportunity, for additional
`briefing on that topic.
`
`DIRECTOR IANCU: Can you address Patent Owner’s point that you
`could -- this could be handled in a reexam?
`
`MR. SAUNDERS: Certainly.
`
`The Patent Owner has made the argument and what they said in their
`brief was ex parte reexam is better for challenging issued patents.
`
`But this should be never be an issued patent. Here, we have a case
`where the Board has already determined the claims are unpatentable on the
`record in front of it.
`
`So not only -- I mean, frankly, the Board doesn’t have the authority to
`issue claims that it knows are unpatentable on the record in front of it. The
`law simply prohibits that.
`
`So I think that’s the first issue, and, you know, the Patent Owner has
`said, “There’s all this harm to us. It’s really terribl
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