Paper No. __
`Submitted: December 20, 2019
`
`
`
`
`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 No. IPR2018-00600
`U.S. Patent No. 9,581,422
`
`––––––––––––––––––
`
`BRIEF OF AMICUS CURIAE AMERICAN INTELLECTUAL PROPERTY
`LAW ASSOCIATION IN SUPPORT OF NEITHER PARTY
`
`
`
`
`Barbara A. Fiacco
`
`
`President
`
`
`American Intellectual Property
`Law Association
`
`
`1400 Crystal Drive, Suite 600
`
`Arlington, VA 22202
`
`
`(703) 415-0780
`
`
`
`
`
`Bridget A. Smith
`Reg. No. 63,574
`Lowenstein & Weatherwax LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`smith@lowensteinweatherwax.com
`(310) 307-4500
`
`Attorney for Amicus Curiae American
`Intellectual Property Law Association
`
`
`
`

`

`IPR2018-00600 (U.S. Patent No. 5,608,062)
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` AIPLA Amicus Brief
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`TABLE OF CONTENTS
`
`
`I.
`
`II.
`
`INTEREST OF AMICUS CURIAE ................................................................ 1
`
`INTRODUCTION ........................................................................................... 2
`
`III. THE BOARD SHOULD MAKE ITS ASSESSMENT OF
`UNPATENTABILITY BASED ON ITS REVIEW OF THE ARGUMENTS
`AND EVIDENCE OF RECORD. ................................................................... 3
`
`A.
`
`B.
`
`C.
`
`The Inter Partes Reexamination Framework Allowed For New
`Grounds Of Rejection And Provided Procedural Safeguards For
`Patent Owners If That Occurred............................................................ 4
`
`IPR Reframed The Board’s Role In Inter Partes Proceedings from
`Examinational To Adjudicative, Removing Due Process Protections
`Against New Propositions Of Unpatentability That, Presumably, Were
`No Longer Contemplated. ..................................................................... 5
`
`Constraining The Board’s Role In IPR To One Of Review Is Sound
`Public Policy. .......................................................................................11
`
`IV. THE BOARD MUST PROVIDE PARTIES WITH NOTICE AND AN
`OPPORTUNITY TO RESPOND TO A GROUND OF
`UNPATENTABILITY BEFORE THE BOARD MAKES A FINAL
`DETERMINATION. .....................................................................................13
`
`V.
`
`CONCLUSION ..............................................................................................15
`
`
`
`
`
`
`
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`IPR2018-00600 (U.S. Patent No. 5,608,062)
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`TABLE OF AUTHORITIES
`
`
`Cases
`
`Abbott Labs v. Cordis Corp.,
`710 F.3d 1318 (Fed. Cir. 2013) ....................................................................... 5
`
`Aqua Prods., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ....................................................................... 7
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .................................................................................. 12
`
`Dell Inc. v. Acceleron LLC,
`818 F.3d 1293 (Fed. Cir. 2016) .....................................................................14
`
`EmeraChem Holdings LLC v. Volkswagen Group of Am., Inc.,
`859 F.3d 1341 (Fed. Cir. 2017) .....................................................................15
`
`Garmin Intl., Inc. v. Cuozzo Speed Techs., LLC,
`IPR2012‑00001, Paper 59 (PTAB Nov. 13, 2013) .......................................... 8
`
`Idle Free Sys. Inc. v. Bergstrom Inc.,
`IPR2012-00027, Paper 26 (PTAB June 11, 2013) .......................................... 6
`
`In re IPR Licensing, Inc.,
`No. 2018-1805, 2019 U.S. App. LEXIS 34864 (Fed. Cir. Nov. 22, 2019) ...14
`
`In re Magnum Oil Tools Int’l Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ....................................................................... 7
`
`In re Stepan,
`660 F. 3d 1341 (Fed. Cir. 2011) ...................................................................... 5
`
`Novartis AG v. Torrent Pharms. Ltd.,
`853 F.3d 1316 (Fed. Cir. 2017) .....................................................................14
`
`Rambus Inc. v. Rea,
`731 F.3d 1248 (Fed. Cir. 2013) ...................................................................5, 6
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`IPR2018-00600 (U.S. Patent No. 5,608,062)
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` AIPLA Amicus Brief
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`SAS Institute, Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ..................................................................................... 6
`
`Statutes
`
`5 U.S.C. § 554(b)(3).................................................................................................14
`
`5 U.S.C. § 554(c)(1) .................................................................................................14
`
`5 U.S.C. § 556(d) .....................................................................................................14
`
`35 U.S.C. § 132(a) ..................................................................................................... 9
`
`35 U.S.C. § 282 ........................................................................................................11
`
`35 U.S.C. § 303(a) ...................................................................................................12
`
`35 U.S.C. § 305 ........................................................................................................12
`
`35 U.S.C. § 312(a) (2011) ......................................................................................4, 6
`
`35 U.S.C. § 312(a)(3) ................................................................................................. 6
`
`35 U.S.C. § 314(a) (2011) .......................................................................................... 4
`
`35 U.S.C. § 314(a) ..................................................................................................... 6
`
`35 U.S.C. § 315(e)(1) ...............................................................................................11
`
`35 U.S.C. § 315(e)(2) ...............................................................................................11
`
`35 U.S.C. § 316(d)(2)................................................................................................. 4
`
`35 U.S.C. § 316(d)(3)...............................................................................................11
`
`35 U.S.C. § 316(e) ..................................................................................................... 7
`
`35 U.S.C. § 317(a) ..................................................................................................... 7
`
`35 U.S.C. § 318(c) ...................................................................................................11
`
`35 U.S.C. § 325(d) ...................................................................................................12
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`Rules
`
`37 C.F.R. § 1.520 .....................................................................................................12
`
`37 C.F.R. § 41.50(b) ................................................................................................12
`
`37 C.F.R. § 41.77(b) .................................................................................................. 5
`
`37 C.F.R. § 41.77(b)(1) .............................................................................................. 5
`
`37 C.F.R. § 42.11 .....................................................................................................11
`
`37 C.F.R. § 42.121 ...................................................................................................10
`
`37 C.F.R. § 42.121(a)(2)(i) ......................................................................................11
`
`37 C.F.R. § 42.71(d) .................................................................................................. 8
`
`
`Other Authorities
`
`157 Cong. Rec. S1034 (daily ed. Mar. 8, 2011) ........................................................ 7
`
`157 Cong. Rec. S1360 (daily ed. Mar 8, 2011) ......................................................... 6
`
`84 Fed. Reg. 9497 (Mar. 15, 2019) ............................................................................ 8
`
`H.R. Rep. No. 112-98, pt. 1 (2011)............................................................................ 5
`
`S. Rep. No. 110-259 (2008) ...................................................................................... 6
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`IPR2018-00600 (U.S. Patent No. 5,608,062)
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` AIPLA Amicus Brief
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`AIPLA appreciates the opportunity to present its views in response to the
`
`Order dated November 7, 2019, for Precedential Opinion Panel Review in this
`
`proceeding.
`
`I.
`
`INTEREST OF AMICUS CURIAE1
`
`The American Intellectual Property Law Association (“AIPLA”) is a
`
`national bar association of approximately 12,000 members engaged in private or
`
`corporate practice, in government service, and in the academic community. AIPLA
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`members represent a wide and diverse spectrum of individuals, companies, and
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`institutions involved directly or indirectly in the practice of patent, trademark,
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`copyright, trade secret, and unfair competition law, as well as other fields of law
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`affecting intellectual property. Our members represent both owners and users of
`
`intellectual property. Our mission includes helping establish and maintain fair and
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`effective laws and policies that stimulate and reward invention, while balancing the
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`public’s interest in healthy competition, reasonable costs, and basic fairness.
`
`
`1 This brief was not authored, in whole or in part, or paid for by counsel to a party.
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`AIPLA believes that (1) no member of its Board or Amicus Committee who voted
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`to file this brief, or any attorney in the law firm or corporation of such a member,
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`represents a party to the proceeding in this matter; and (2) no representative of any
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`party to this proceeding participated in the authorship of this brief.
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`II.
`
`INTRODUCTION
`
`This Brief addresses the questions:
`
`1.
`
`Under what circumstances and at what time during inter partes review
`(IPR) may the Board raise a ground of unpatentability that a petitioner
`did not advance or insufficiently developed against substitute claims
`proposed in a motion to amend?
`If the Board raises such a ground of unpatentability, whether the Board
`must provide the parties notice and an opportunity to respond to the
`ground of unpatentability before
`the Board makes a
`final
`determination?
`As explained below, the structure of IPR proceedings greatly limits how and
`
`2.
`
`when the Board may permissibly raise a ground of unpatentability against
`
`substitute claims that a petitioner did not advance or insufficiently developed
`
`without violating patent owner due process rights. Accordingly, the Board should
`
`make any determination of unpatentability based on the arguments and evidence of
`
`record. The answer to the second question assumes, for argument’s sake, that the
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`Board may, at least in some circumstances, permissibly raise such a ground. On
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`that assumption, in order to comply with the Administrative Procedures Act
`
`(APA), the Board must provide the parties with notice and an opportunity to
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`respond to the ground of unpatentability before the Board makes a final
`
`determination denying the motion to amend.
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`III. THE BOARD SHOULD MAKE ITS ASSESSMENT OF
`UNPATENTABILITY BASED ON ITS REVIEW OF THE
`ARGUMENTS AND EVIDENCE OF RECORD.
`
`To better understand why the Board generally should not raise its own
`
`grounds of unpatentability in response to a motion to amend, it helps to appreciate
`
`differences between the legacy inter partes reexamination process and IPR. As
`
`noted below, the Board was permitted to raise new grounds for rejecting claims in
`
`inter partes reexaminations, and these reexaminations, while slow, included
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`procedures ensuring patent owners’ due process rights were protected, should that
`
`occur. See Section III.A, infra.
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`IPR replaced inter partes reexamination and changed the Board’s role from
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`examinational to adjudicative. See Section III.B, infra. The petitioner, by statute,
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`now dictates the scope. And the IPR statute accordingly reallocates the burden of
`
`proving a proposition of unpatentability from the Office to the petitioner. This
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`adjudicative framework generally does not account for the possibility of new
`
`propositions of unpatentability raised on reply or by the Board. Thus, the
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`procedural safeguards expressly written into the inter partes reexamination
`
`framework no longer exist. Because of the differences between examination and
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`adjudication, and the lack of procedural safeguards in IPR, the Board should base
`
`any finding of unpatentability on the arguments and evidence of record.
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`This conclusion aligns with public policy. See Section III.C, infra. Given
`
`the availability of alternative proceedings for third parties and the USPTO to
`
`address the patentability of any amended claim resulting from an IPR, there is little
`
`compelling reason for the Board to reach out and create a controversy if the
`
`petitioner has failed to create one. After all, the America Invents Act (AIA)
`
`encourages the use of amendments to resolve disputes, not as a reason for the
`
`Board to create new ones. 35 U.S.C. § 316(d)(2) (“Additional motions to amend
`
`may be permitted … to materially advance the settlement of a proceeding ….”).
`
`A. The Inter Partes Reexamination Framework Allowed For New
`Grounds Of Rejection And Provided Procedural Safeguards For
`Patent Owners If That Occurred.
`
`Inter partes reexaminations involved up to two rounds of administrative
`
`review—one by an examiner and potentially a second by the Board. These
`
`reexaminations were not cabined to the rejections proposed in the request initiating
`
`the proceeding. On the contrary, by statute, the Office determined whether a
`
`request for reexamination satisfied the institution standard “with or without
`
`consideration of other patents or printed publications.” 35 U.S.C. § 312(a) (2011)
`
`(emphasis added). Similarly, after a request was granted, the examiner was free to
`
`raise new grounds of rejection, following the ordinary procedures for examination.
`
`See 35 U.S.C. § 314(a) (2011). In response to a new ground of rejection, the patent
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`owner could introduce new arguments, present rebuttal evidence, narrow the
`
`claims by amendment, or exercise some combination thereof.
`
`USPTO rules contemplated that, on appeal from an examiner’s final
`
`decision, the Board could permissibly raise “new grounds of rejection.” 37 C.F.R.
`
`§ 41.77(b). As a procedural safeguard, however, the rules dictated that “[a]ny
`
`decision which includes a new ground of rejection shall not be considered final for
`
`judicial review.” Id. In response to a new ground, the patent owner could reopen
`
`prosecution, either immediately or after an unsuccessful request for rehearing. Id.
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`When reopening prosecution, the patent owner could marshal additional rebuttal
`
`evidence, make additional narrowing amendments, or both. Id. § 41.77(b)(1).
`
`This procedure, while slow, ensured that patent owners’ due process rights
`
`were protected if an examiner or the Board raised new arguments during a
`
`proceeding. See Rambus Inc. v. Rea, 731 F.3d 1248, 1256 (Fed. Cir. 2013); In re
`
`Stepan, 660 F. 3d 1341, 1344–45 (Fed. Cir. 2011).
`
`B.
`
`IPR Reframed The Board’s Role In Inter Partes Proceedings
`from Examinational To Adjudicative, Removing Due Process
`Protections Against New Propositions Of Unpatentability That,
`Presumably, Were No Longer Contemplated.
`
`Responding to concerns over the long pendency of reexaminations, the AIA
`
`converted “inter partes reexamination from an examination to an adjudicative
`
`proceeding ….” Abbott Labs v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir.
`
`2013) (quoting H.R. Rep. No. 112-98, pt. 1, at 46-47 (2011)); see S. Rep. No. 110-
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`259, at 19 (2008). This change from an examinational to an adjudicative model
`
`prompted the change of name from “inter partes reexamination” to “inter partes
`
`review.” 157 Cong. Rec. S1360, S1366 (daily ed. Mar 8, 2011) (floor comments
`
`of Sen. Kyl) (emphasis added). The Board itself has distinguished IPR
`
`proceedings from reexaminations based on the dichotomy between examination
`
`and adjudication. Idle Free Sys. Inc. v. Bergstrom Inc., IPR2012-00027, Paper 26
`
`at 6–7 (PTAB June 11, 2013) (noting that an IPR is “neither a patent examination
`
`nor a reexamination” but is “more adjudicatory than examinational, in nature”).
`
`Unlike in inter partes reexaminations, in adjudicative IPR proceedings, the
`
`petitioner alone now defines the scope. See SAS Institute, Inc. v. Iancu, 138 S. Ct.
`
`1348, 1355–56 (2018). As noted above, inter partes reexamination allowed the
`
`Office to consider whether to grant a request “with or without consideration of
`
`other patents or printed publications.” 35 U.S.C. § 312(a) (2011). In contrast, the
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`institution of IPR must be based on the information the petitioner provided in the
`
`petition. 35 U.S.C. § 312(a)(3), 314(a).
`
`And throughout an IPR proceeding, the burden of proving a proposition of
`
`unpatentability remains on the petitioner. In reexamination, the Office carried the
`
`burden to show unpatentability by a preponderance of the evidence. Rambus, 731
`
`F.3d at 1255. In IPR, by statute, the “petitioner shall have the burden of proving a
`
`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C.
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`§ 316(e) (emphasis added); see also 157 Cong. Rec. S1034, S1041 (daily ed. Mar.
`
`8, 2011) (floor comments of Sen. Kyl) (“[T]he burden of proof is on the challenger
`
`and the office simply decides whether the challenger has met his burden.”).
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`The IPR framework provides no exception shifting this statutory burden
`
`from the petitioner, even when the patent owner moves to amend the claims. Aqua
`
`Prods., Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017). Indeed, even when a
`
`petitioner stops participating in an IPR, the burden of persuasion does not shift.
`
`For example, the Board may, in limited circumstances, proceed to a final written
`
`decision, notwithstanding a joint request by the parties to terminate a review with
`
`respect to the petitioner. 35 U.S.C. § 317(a). In this situation, however, such a
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`decision would still need to be based on the evidence and arguments presented by
`
`the petitioner. See id. (indicating that the Board can proceed only under the
`
`condition that it already decided the merits before the request to terminate); see
`
`also In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1376–77 (Fed. Cir. 2016).
`
`The petitioner-driven IPR framework leaves little opportunity for the Board
`
`to provide adequate notice of its own additional grounds of unpatentability, apart
`
`from those identified by the petitioner. Since the earliest days of IPR trials, the
`
`Board typically rules on a motion to amend in the very same final written decision
`
`ending the proceeding. E.g., Garmin Intl., Inc. v. Cuozzo Speed Techs., LLC,
`
`IPR2012‑00001, Paper 59 at 47‑49 (PTAB Nov. 13, 2013). When the patent
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`IPR2018-00600 (U.S. Patent No. 5,608,062)
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`owner first learns of a new ground in the final written decision, there is no
`
`opportunity to respond. For example, a patent owner may request rehearing to
`
`address matters the patent owner believes to have been misapprehended or
`
`overlooked, but only as to matters “previously addressed in a motion, an
`
`opposition, or a reply,” a list that does not include the Board’s own papers. 37
`
`C.F.R. § 42.71(d). Furthermore, no rules allow the patent owner to file rebuttal
`
`evidence or to make additional amendments in response to new grounds in a final
`
`written decision denying a motion to amend.
`
`The optional New Pilot Program Concerning Motion to Amend Practice and
`
`Procedures in Trial Proceedings also does not necessarily provide a framework that
`
`allows for adequate notice of new grounds of unpatentability raised by the Board
`
`either. The New Pilot Program includes a provision that permits a patent owner to
`
`receive preliminary guidance from the Board on its motion to amend, before the
`
`final written decision, if the patent owner elects. 84 Fed. Reg. 9497, 9497 (Mar.
`
`15, 2019). The preliminary guidance “will provide an initial discussion about
`
`whether petitioner (or the record then before the Office, including any opposition
`
`… and accompanying evidence) establishes a reasonable likelihood that the
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`substitute claims are unpatentable.”2 Id. Even assuming the Board could discuss
`
`its own grounds of unpatentability at this stage, the preliminary guidance is not
`
`required, or contemplated, to satisfy the notice requirements of 35 U.S.C. § 132(a).
`
`Rather, the New Pilot Program rules provide that the preliminary guidance
`
`typically will be “relatively brief” and in the form of a short paper or, at the
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`Board’s discretion, oral guidance provided in a conference call, focusing on the
`
`limitations added in the motion to amend. Id. at 9497, 9504.3 Thus, even under
`
`the Pilot Program, the IPR framework does not provide for adequate notice of new
`
`grounds.
`
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`2 By employing the disjunctive term “or,” this language may contemplate allowing
`
`the preliminary guidance to discuss new grounds of unpatentability based on the
`
`“record then before the Office,” even if the petitioner did not “establish[] a
`
`reasonable likelihood that the substitute claims are unpatentable.”
`
`3 The New Pilot Program rules do not indicate whether a patent owner can object
`
`to the conference call or, if the Board elects to provide preliminary guidance in a
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`conference call, whether the USPTO must provide the patent owner with a written
`
`transcript or recording of the conference call. Absence of a framework for written
`
`notice of new grounds in a conference call is inconsistent with the statutory
`
`requirement for written identification of grounds in 35 U.S.C. § 312(a)(3).
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`To summarize, while the inter partes reexamination framework expressly
`
`permitted the Office to raise new grounds of rejection, and Office rules approbated
`
`new grounds of rejection on appeal from these proceedings, IPR lacks an
`
`analogous framework for allowing the Board to introduce new grounds that a
`
`petitioner did not advance or insufficiently developed on substitute claims
`
`presented in a motion to amend. And unlike the laws and rules for reexamination,
`
`the IPR framework also lacks adequate notice provisions and express safeguards
`
`for protecting patent owner due process rights if that occurs.
`
`In some circumstances, the Board may deny a motion to amend without
`
`violating patent owner due process rights when there are manifest deficiencies in
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`substitute claims, for example, involving the patent owner’s burden of production
`
`under 37 C.F.R. § 42.121, which requires a patent owner to make a showing of
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`written description support for each substitute claim. But given the lack of express
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`procedural safeguards relating to issues involving new grounds, on which the
`
`petitioner carries the burden of persuasion, the Board should make any
`
`determination of unpatentability of a substitute claim based on the arguments and
`
`evidence of record. Unchecked, the Board’s modification or supplantation of a
`
`petitioner’s theories when denying a motion to amend may unfairly prejudice
`
`patent owners, adversely impacting their due process rights.
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`C. Constraining The Board’s Role In IPR To One Of Review Is
`Sound Public Policy.
`
`There is little policy reason for the Board to pursue its own arguments for
`
`unpatentability in response to a motion to amend. At the threshold, claims
`
`involved in an IPR are claims from issued patents. These claims were previously
`
`examined by the USPTO and carry with them a statutory presumption of validity.
`
`35 U.S.C. § 282. Any substitute claim necessarily must be even narrower than the
`
`claim that originally issued and may well give rise to “intervening rights” under the
`
`statute, limiting the patent owner’s ability to collect past damages on the original
`
`claim. 35 U.S.C. §§ 316(d)(3), 318(c). The patent owner’s amendments must
`
`further address the petitioner’s concerns about patentability, because the patent
`
`owner has an initial burden of demonstrating that the proposed amendment
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`“respond[s] to a ground of unpatentability involved in the trial.” 37 C.F.R.
`
`§ 42.121(a)(2)(i). And in presenting proposed substitute claims and complying
`
`with these provisions, the patent owner has “a duty of candor and good faith” to
`
`the Board to guard against overreaching. 37 C.F.R. § 42.11. Therefore, a
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`substitute claim should be less of a concern to the public than the original claim
`
`was when it issued. If the petitioner, who is in the best position to evaluate the
`
`impact of the amendment, is not motivated to oppose it, there is little reason to
`
`think that the amendment will create a risk for the public at large.
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`Importantly, when a substitute claim issues after an IPR, there are still
`
`additional avenues for the public to challenge that claim. The substitute claim is
`
`not insulated from challenge by another member of the public, either in court or at
`
`the USPTO. See 35 U.S.C. § 315(e)(1), (e)(2) (estoppel only applies to “[t]he
`
`petitioner”). Although the Board “may take into account” the grounds previously
`
`considered during the amendment process in deciding whether to institute a new
`
`trial, 35 U.S.C. § 325(d), that is a matter of discretion.
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`And additional avenues for challenge are available to the USPTO itself. If
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`an exceptional circumstance arises in which a substitute claim is so fundamentally
`
`problematic in light of prior art that the Board believes it should not stand, ex parte
`
`reexamination provides yet another mechanism for resolving these problems
`
`outside the adjudicative IPR framework. See Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 2131, 2137 (2016). Notably, by statute, “[o]n his own initiative, and at
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`any time, the Director may determine whether a substantial new question of
`
`patentability is raised by patents and publications ….” 35 U.S.C. § 303(a); see
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`also 37 C.F.R. § 1.520. Ex parte reexamination has established procedural
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`safeguards, analogous to those of inter partes reexamination, allowing a patent
`
`owner to respond to rejections by an examiner or the Board and to propose
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`multiple amendments—safeguards which are not present in connection with a
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`motion to amend in IPR. See 35 U.S.C. § 305; 37 C.F.R. § 41.50(b).
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`IPR2018-00600 (U.S. Patent No. 5,608,062)
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` AIPLA Amicus Brief
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`If the Board has concerns about such fundamentally problematic claims,
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`formally transitioning the proceeding ex parte under the Director’s authority makes
`
`good sense. If the petitioner stopped participating, then the proceeding is already
`
`effectively ex parte. The Office, the patent owner, and the public at large would be
`
`better served by a proceeding, e.g., ex parte reexamination, that correctly allocates
`
`the burden of showing unpatentability to the USPTO, which actively participates in
`
`the proceeding, and that also has defined patent owner due process protections.
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`In sum, given that a substitute claim is generally less of a concern to the
`
`public than the original claim was when it issued, and in light of the availability of
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`alternative proceedings for third parties and the USPTO to address the patentability
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`of any amended claim resulting from an IPR proceeding, there is no compelling
`
`reason for the Board to reach out and create a controversy if the petitioner has
`
`failed to create one.
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`IV. THE BOARD MUST PROVIDE PARTIES WITH NOTICE AND AN
`OPPORTUNITY TO RESPOND TO A GROUND OF
`UNPATENTABILITY BEFORE THE BOARD MAKES A FINAL
`DETERMINATION.
`
`AIPLA’s answer to question 2 assumes that the Board may, at least in some
`
`circumstances, permissibly raise a ground of unpatentability that a petitioner did
`
`not advance or insufficiently developed against substitute claims proposed in a
`
`motion to amend. In such circumstances, to comply with the APA, the Board must
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`IPR2018-00600 (U.S. Patent No. 5,608,062)
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` AIPLA Amicus Brief
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`provide the parties with notice and an opportunity to respond to the ground of
`
`unpatentability before the Board makes a final determination.
`
`The APA imparts constitutional safeguards ensuring that parties in
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`administrative proceedings, including AIA trials, receive notice of the issues to be
`
`decided and an opportunity to submit facts and arguments relevant to agency
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`adjudications. E.g., 5 U.S.C. §§ 554(b)(3), 554(c)(1), 556(d); Dell Inc. v.
`
`Acceleron LLC, 818 F.3d 1293, 1301 (2016). “The notice and opportunity to be
`
`heard provisions of the APA have been applied to mean that an agency may not
`
`change theories in midstream without giving respondents reasonable notice of the
`
`change and the opportunity to present argument under the new theory.” Novartis
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`AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324 (Fed. Cir. 2017) (internal
`
`quotation marks omitted). In this regard, “they also impose important limits on the
`
`Board’s authority during inter partes reviews. For example, ‘the Board must base
`
`its decision on arguments that were advanced by a party, and to which the
`
`opposing party was given a chance to respond.’” In re IPR Licensing, Inc., No.
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`2018-1805, 2019 U.S. App. LEXIS 34864, at *11 (Fed. Cir. Nov. 22, 2019).
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`The Federal Circuit has acknowledged that due process issues under the
`
`APA arise when the Board cites new art or makes new arguments in a final written
`
`decision. EmeraChem Holdings LLC v. Volkswagen Group of Am., Inc., 859 F.3d
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`1341, 1348 (Fed. Cir. 2017). These due process concerns that arise in the context
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`IPR2018-00600 (U.S. Patent No. 5,608,062)
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` AIPLA Amicus Brief
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`of finding claims unpatentable in a final written decision apply with equal force in
`
`the context of denying a motion to amend based on new art or arguments. In both
`
`cases, patent owners are not timely informed of the matters asserted and are denied
`
`the opportunity for submission and consideration of facts and arguments.
`
`Accordingly, if the Board permissibly raises a ground of unpatentability that
`
`a petitioner did not advance or insufficiently developed against substitute claims
`
`proposed in a motion to amend, the Board must comply with the APA by providing
`
`the parties with notice and an opportunity to respond to the ground before the
`
`Board makes a final determination.
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`V. CONCLUSION
`
`The structure of IPR proceedings greatly limits when the Board may
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`permissibly raise a ground of unpatentability against substitute claims which a
`
`petitioner did not advance or insufficiently developed without violating patent
`
`owner due process rights. Accordingly, the Board should make any determination
`
`of unpatentability based on the arguments and evidence of record. Assuming the
`
`Board permissibly raises a new ground of unpatentability, the Board must provide
`
`the parties notice and an opportunity to respond to the ground before the Board
`
`makes a final determination.
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`IPR2018-00600 (U.S. Patent No. 5,608,062)
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` AIPLA Amicus Brief
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`
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`Dated: December 20, 2019
`
`
`
`
`
`
`
`
`
`Barbara A. Fiacco
`
`
`President
`
`
`American Intellectual Property
`Law Association
`
`
`1400 Crystal Drive, Suite 600
`
`Arlington, VA 22202
`
`
`(703) 415-0780
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Bridget A. Smith/
`Bridget A. Smith
`Reg. No.