Trials@uspto.gov
`571-272-7822
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`Paper 62
`Entered: June 4, 2020
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`SIRIUS XM RADIO, INC.,
`Petitioner
`
`v.
`
`FRAUNHOFER-GESELLSCHAFT ZUR FÖRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
`Patent Owner.
`
`__________
`
`IPR2018-00690
`Patent 6,314,289 B1
`__________
`
`Record of Oral Hearing
`Held: May 19, 2020
`__________
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
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`571-272-7822
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`
`Paper 62
`Entered: June 4, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`SIRIUS XM RADIO, INC.,
`Petitioner
`
`v.
`
`FRAUNHOFER-GESELLSCHAFT ZUR FÖRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
`Patent Owner.
`
`__________
`
`IPR2018-00690
`Patent 6,314,289 B1
`__________
`
`Record of Oral Hearing
`Held: May 19, 2020
`__________
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`IPR2018 00690
`Patent 6,314,289 B1
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MARK A. BAGHDASSARIAN, ESQ.
`Kramer Levin Naftalis & Frankel, LLP
`1177 Avenue of the Americas
`New York, NY 10036
`212-715-9193
`mbaghdassarian@kramerlevin.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`BEN J. YORKS, ESQ.
`Irell & Manella LLP
`840 Newport Center Drive
`Suite 400
`Newport Beach, CA 92660-6324
`949-760-5271
`byorks@irell.com
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, May 19,
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`2020, commencing at 2:00 p.m. EDT, via Video Teleconference.
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`IPR 2018-00690
`Patent 6,314,289 B1
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`P-R-O-C-E-E-D-I-N-G-S
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`2:01 p.m.
`JUDGE SMITH: Good afternoon. Welcome to the Patent Trial
`and Appeal Board. I'm Judge Jeffrey Smith. With me are Judges White
`and Wormmeester. We are here today to hear IPR 2018-00690. Sirius
`XM Radio is the Petitioner versus Fraunhofer-Gesellschaft, Patent Owner.
`Each party will have one hour total to present its arguments.
`Petitioner will first present its case regarding the challenged claims.
`Thereafter, Patent Owner may respond to Petitioner's argument. Petitioner
`may reserve rebuttal time of no more than half its total argument time to
`respond to Patent Owner's arguments presented at the hearing. Thereafter,
`Patent Owner may reserve rebuttal time of no more than half its total
`argument time to respond to Petitioner's arguments.
`Petitioner, please state your name and the names of those who are
`here with you.
`MR. BAGHDASSARIAN: Good afternoon, Your Honor. My
`name is Mark Baghdassarian from the law firm Kramer Levin Naftalis &
`Frankel, on behalf of Petitioner Sirius XM Radio, Inc. I am here with my
`colleagues Jonathan Caplan, Jeffrey Price, and Shannon Hedvat.
`JUDGE SMITH: Petitioner, do you wish to reserve time for
`rebuttal?
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`MR. BAGHDASSARIAN: Yes. Yes, Your Honor. We'd like to
`reserve 20 minutes for rebuttal.
`JUDGE SMITH: Thank you.
`Patent Owner, please state your name and the names of those you
`have here with you.
`MR. YORKS: This is Ben Yorks of Irell & Manella for
`Fraunhofer, and it's just me in the room.
`JUDGE SMITH: Patent Owner, do you wish to reserve time for
`rebuttal?
`MR. YORKS: We do.
`JUDGE SMITH: How much time do you want to reserve?
`MR. YORKS: Maybe 20 minutes.
`JUDGE SMITH: Okay. We noted that both parties object to the
`other party's demonstrative slides. I will mention briefly from the Trial
`Practice Guide that demonstrative exhibits used at the final hearing are aids
`to oral argument and are not evidence. Demonstrative exhibits cannot be
`used to advance arguments or introduce evidence not previously presented in
`the record. During an oral hearing, a party may rely upon appropriate
`demonstrative exhibits as well as evidence that has been previously
`submitted in a proceeding, but may only present arguments relied upon in
`the papers previously submitted.
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`During today's hearing, when you are presenting your case, you may
`also address your objections to the demonstratives. You may not interrupt
`the other party when the other party is presenting its case. We won't rule
`today on the objections. Our final decision will consider evidence and
`arguments relied upon in the papers previously submitted in the proceeding.
`Petitioner, you have 60 minutes to present your case. You reserved
`20 minutes for rebuttal. So, you have 40 minutes. It's 2:04 right now.
`So, you have until 2:44. You may begin when ready.
`MR. BAGHDASSARIAN: All right. Thank you, Your Honor.
`(Whereupon, the above-entitled matter went off the record at 2:04
`p.m. and resumed at 2:05 p.m.)
`JUDGE SMITH: Okay. It's now 2:05. You may begin when
`ready. You have until 2:45.
`MR. BAGHDASSARIAN: All right. Thank you, Your Honor,
`and good afternoon, Your Honors.
`I want to start today with the '289 patent itself. And if you would,
`if you have our demonstrative in front of you, I'll just give you a start with a
`brief overview on slide No. 2, which we've labeled here as the statement of
`our case.
`And what we're going to be talking about today are three basic
`principles. And the first principle here of what the briefing has showed
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`through the proceedings is that the Patent Owner effectively concedes
`virtually all of the elements of the challenged claims that are in the prior art.
`There's a handful of substantive arguments that they've made that we
`will show you, shown in our briefings, that are also meritless. And because
`of that, because of the weakness and they really don't have anything to rely
`on, they've focused and they've turned their attention to procedural
`arguments to try to avoid having this panel and this Board avoid the
`substantive merits that are going to result in the invalidity of the challenged
`claims here.
`And where I want to start is Figure 7 of the '289 patent. And
`whether you have the patent in front of you, or you can look at our
`demonstrative slide No. 20, it shows a figure, Figure 7, there. And, Your
`Honors, what you will see, the patent describes Figure 7 as, quote, "the
`description of the prior art". So, this figure is described in some detail in
`the '289 patent, and they basically say, "Here's what's in the prior art." And
`what we're going to do is I'm going to take you briefly through Figure 7 and
`compare that to Figure 2 to show you how little is left of what the innovative
`or claimed invention is here, and that, ultimately, through the prior art that
`we have asserted during these proceedings, there can be no question that the
`challenged claims are invalid.
`Turning to Figure 7, Your Honors, if you look at it, it starts with an
`input source, the source of bits labeled as 62, which goes into an encoder,
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`the convolutional encoder. It's a redundancy-adding encoder which is
`labeled as 64, but goes into a duplicator, 67. That, ultimately, is split out
`into two channels, a first transmitter and a second transmitter. Those
`transmitters -- again, there's no dispute here -- can be satellites, for example.
`In addition to having the bitstream source, the encoder, the
`duplicator, and these satellite transmitters, you also have a delay stage.
`And the reason that the patent describes this as the prior art is that you have
`multiple transmitters across multiple channels in order to create time
`diversity, which helps combat the problems of fading and shadowing that are
`described in the patent. So, you can do that with two transmitters. You
`can do it with a transmitter and a delay stage. There's a lot of combinations
`you can do that with. But, again, all of this is in the prior art.
`As we move through the figure, we get to the receivers, receiver 1
`and receiver 2, which accepts the signal. And then, you have an item there,
`Block 79, which is a decisionmaker about which signal to use. It's
`ultimately decoded to generate and use the bits that have been transmitted in
`order to gain the content that you're looking for. Now all of this -- all of
`this -- is described in detail in columns 2 and 3 of the '289 patent. This is
`prior art.
`So, let's turn our attention to Figure 2 briefly. And in Figure 2,
`what you'll see, it's remarkably similar. You have the bitstream source.
`You have the two satellites. You have the delay stages. You have the
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`decisionmaker. You have combiner. You have the decoder. So, if Figure
`7 was shown as the prior art, well, what's left? What's left from this
`invention? And what you're going to hear from us today is that there are
`two buckets that relate to the claimed invention here: the transmit side of
`this and what I'm going to call the data preparation side of it. And it's the
`data preparation side that you see in Figure 2, this forward error correction,
`the partitioner, the convolutional encoder. That's where Fraunhofer here
`has positioned itself as saying, okay, well, that is where our alleged
`invention is; that's where we are allegedly distinguished over the prior art.
`And we know that. And the reason we know that is that, if we turn
`our attention to slide No. 6, Petitioner's slide No. 6, what you will see, we
`prepared a claim matrix of all the limitations of all the challenged claims.
`And throughout the briefing process, it has become quite clear that they
`only -- they, Fraunhofer -- only challenge a handful of limitations that relate
`to the encoder, the partitioner, and these generator polynomials.
`And, Your Honors, what I'm going to take you through today is that
`those aspects, the data preparation piece of what they claim their invention
`is, there is no question was known in the art, and there was incredible
`motivation to combine the data preparation piece with the transmit piece that
`gets to the entirety of this invention.
`With that, Your Honors, I'd like to turn your attention to our slide
`No. 7, which identifies our first round of invalidity, the Chen patent in view
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`of the Campanella patent. Now what we've done here on slide 7, and some
`of the earlier slides, we've summarized all of the parties' arguments and what
`the key arguments are and our arguments and their arguments. And I think
`that can be a useful roadmap for this Board when it goes back to deliberate
`and decide this.
`But, for purposes of today, I want to highlight a handful of what I
`think are the key dispositive issues here. And one of them, as I mentioned
`before, goes to the claimed partitioner. And there are a couple of points
`here. I think what Fraunhofer has done here has misconstrued what
`Petitioner does in the context of the '289 patent to try to avoid the Chen
`reference. It fundamentally misunderstands what Chen does in comparison
`to the '289 patent as it relates to the partitioner, and it, critically, ignores the
`express motivation not only in Chen, but in other prior art references that
`chose to use Chen's coding scheme in the context of a satellite-based
`communication system. And I don't know, there may be a handful of other
`items I'll have to address in rebuttal, but what I want to do is focus on the
`Chen-Campanella combination in the first instance and, ultimately, how we
`believe in the first instance Fraunhofer is misconstruing the claimed
`limitations to try to avoid Chen.
`With that, Your Honors, if you could turn to slide No. 7? And slide
`No. 7 is a table comparing what Fraunhofer's contention is with respect to
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`the partitioner from the Chen reference. And I'll get into specifically the
`Chen reference in a minute.
`But, on the lefthand side here -- and they've said this a number of
`times in their papers -- they say, the claimed convolutional encoder takes
`input bits and generates two portions of output bits which are then split into
`two signals, via the partitioner, which are transmitted over two channels.
`The problem with that statement, Your Honors, is the partitioner is
`not involved in splitting things into signals. It's not involved in signal
`generation. It's just you have two sets of output bits that are joined together
`and you split them. That's what a partitioner does. Now, ultimately,
`they're transmitted, two signals that are transmitted via satellite, but the
`partitioner is not involved in that. That's what the transmitter does here.
`And that's what we have on the righthand side of our slide No. 8
`here. The partitioner is very simple: "a partitioner for partitioning the
`second number of output bits into two portions of output bits". That's all it
`does. And then, you have a transmitter, the very next limitation in the
`challenged claims here, the transmitter for transmitting the output in the first
`channel and via a second channel. That's all it has to do here. It's just that
`simple. And I don't think Fraunhofer responds to that.
`But let's pause for a second and say, well, maybe the partitioner does
`do that. Well, you know something? Chen does that, too, because Chen
`needs to transmit its output bits as well and it uses a modulator to do that.
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`So, this is a version of a heads, I win; tails, you lose argument. If a
`partitioner just does the splitting, as Petitioner says it does, well, Chen does
`that. Well, but if it's involved in signal generation, splitting the signals and
`transmitting it, well, Chen does that, too. It does that in the context of the
`modulator.
`So, that seems to be their primary argument. But I think it makes
`sense to get into a little more detail and highlight how the '289 patent and the
`Chen patent encode puncture and partition, which are really the key
`elements. That's the data preparation piece of it that I was talking about.
`And if you would turn to our slide No. 9, this is where we are
`showing a side-by-side comparison of the steps of the data preparation that
`the '289 patent goes through and, ultimately, what Chen does. And what
`we will see is they match up. They're on all fours. They match up
`perfectly.
`Here, what we've labeled as step 1, it encodes the bitstream. You'll
`see here on the lefthand side of our slide the '289 patent from Figure 4.
`You're encoding an input bit into output bits. It's a one-third rate encoder.
`So, for every one input bit, you get three output bits. The '289 patent, three
`input bits gives you nine output bits. That's what's shown here with the Es,
`Ls, and Xs. The Es are the early satellite bits; the Ls are the late satellite
`bits, and the X, what we'll see is ultimately the punctured bit.
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`When we look at the right side of our slide here -- (telephonic
`interference) -- and does a one-third rate encoder. But it takes four input
`bits and, ultimately, outputs 12 output bits. And that's what you're seeing
`here. It's the same exact thing. And that's really not in dispute. That's
`really not in dispute here.
`The next step, if we could turn to slide 10, is the puncturing. The
`puncturing is just simply bleeding out a bit. Bleeding out bits, that's all
`that's happening here. And what we've shown you in a side-by-side
`comparison here, Figure 4 of the '289 patent, and from the Chen reference,
`you take those nine bits that you ultimately outputted from '289 patent and
`you puncture one bit. In the Chen patent, you have these 12 output bits,
`and what you've done here is puncture two of the bits. It matches up
`perfectly. It is the same type of data preparation.
`The next step, what we've labeled as step 3 on our slide No. 11 here,
`we're demonstrating that we have two portions of output bits. On the left
`side, from the '289 patent, Figure 4, what we've done is color-code this to
`highlight the two portions of bits. In blue, you'll see the E bits. In green,
`you'll see the L bits. And now, what we've done in red here is highlight the
`punctured bit. So, from the '289 patent, the blue E bits are one set of output
`bits, one portion of output bits; the L green bits are the second portion of
`output bits.
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`When we look at Chen, once again, we have two portions of output
`bits, and you can see there's an upper band and there's a lower band. And
`you can see how it matches up with the color-coding, the blue bits and the
`green bits, and, also, the red punctured bits. It is the same output of two
`portions of bits. They're also going to be transmitted. There's really no
`difference between how Chen and the '289 patent are preparing the data.
`JUDGE WHITE: Well, Counselor? Counselor, I think one of
`Patent Owner's issues with Chen is that Patent Owner asserts that Chen is
`really transmitting the same stream of bits in two places and it's not two
`different ways. Let me get the exact language of the claim, that it's two
`different ways, I think is what they said. Yes.
`The first portion of the output bit being coded based on a bitstream
`in a different way with respect to the second portion. So, they're saying it's
`just the same thing twice and there's no difference.
`MR. BAGHDASSARIAN: Your Honor, it's not. It's just not.
`When you look at the Chen reference, they are complementary. They're
`called complementary code pairs. It's not just duplicating the same thing.
`It is splitting it into two portions of output bits that have been encoded
`differently.
`If you just look, the image on slide 11 is directly from the Chen
`reference and cited in our expert's declaration. They are differently
`encoded, different sets of output bits. And you can look just from the
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`numbering scheme here, and we can direct you to Dr. Lyon's declaration,
`paragraphs 69 to 71, as well as portions of Chen. They are different.
`In fact, because of that, the other argument they make is, well, you're
`not going, it's not to be done at the add-in encoder. You can't get back,
`when they're transmitted, the original sets of bits. Again, incorrect. That's
`an incorrect reading of Chen.
`I hope I answered your question, Your Honor.
`JUDGE WHITE: Yes.
`MR. BAGHDASSARIAN: Thank you.
`So, with that, on slide 11, as we have two sets of output bits, this is
`the upper band and the lower band. It's two sets of output bits. We
`ultimately now have to -- we go through, and if you go to slide 12, it goes
`through a parallel-to-serial converter. It basically rearranges the bits and
`gets it ready for the partitioning, the breaking. And that's ultimately what
`happens here on slide 12 in our step 3b. This is set up for partitioning.
`And then, when you go to slide 13, it partitions them. It separates
`them out. It gets them ready to be transmitted over separate channels.
`And, Your Honor, to your question, if you can look on slide 13 here,
`the bits are not the same between the lower band and the upper band. You
`can just look, based on the nomenclature, that they are, in fact, not the same,
`which demonstrates why they're encoded differently.
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`So, ultimately, what we've said, that data preparation in Chen
`matches up perfectly with the data preparation in the '289 patent. So, we
`have that piece of it. Now the question is, well, Chen is not a satellite-
`based transmission system over multiple satellites on the transmit side, as I
`mentioned before. But that's okay because we're not using Chen for that
`point. We are using Chen in combination with Campanella or, ultimately,
`with a known prior art; for example, in Figure 7 of the '289 patent.
`And so, what we need to do, it is our burden to show that there's a
`link between the two; that there is motivation in the art to use Chen's coding
`scheme in combination with satellite-based communication systems. And
`the answer to that is, absolutely, yes.
`So, if we could turn to slide 14, there are multiple instances of
`motivation to combine a coding scheme, as disclosed in Chen, with satellite-
`based communication systems. And our starting point on slide 14 is Chen
`itself. Chen itself provides explicit motivation to use complementary code
`pairs that we just talked about in systems that use space and time diversity
`instead of the frequency diversity disclosed in Chen. If you look, we've
`quoted right on the slide here two portions from Chen that say that
`explicitly. It says here that this relates, that the "invention relates to
`convolutional codes for use in communication systems, and more
`particularly to punctured convolutional codes optimized for use in
`conjunction with digital audio broadcasting and other types of
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`communication system applications which utilize diversity in frequency,"
`time and space diversity. It's used there. Chen is telling the world, Chen
`is telling a person of ordinary skill in the art, you can use my coding scheme
`in systems that use space and time diversity.
`But we don't stop there, Your Honors. We turn to the next slide.
`We've introduced the Yi patent, which, again, provides confirmation of this
`motivation to use the coding scheme as disclosed in Chen, a very similar
`coding scheme, to use it in connection with satellite-based and terrestrial-
`based communication systems.
`So, the two pieces we're talking about, the data preparation piece and
`the transmit piece, we have both those pieces in the art. And now, we have
`not only Chen telling us, motivating one of ordinary skill in the art to
`combine those two, but we also have Yi explicitly motivating one of
`ordinary skill in the art to combine those two teachings.
`If you'll look on the figure here on slide 15, it has the satellite-based
`transmission system, the terrestrial-based transmission system, and the
`repeaters.
`JUDGE SMITH: Counsel, let me just interrupt you because you
`have about 20 minutes left. I mean, you can spend your time however you
`want to. I don't want to tell you how to spend your time. But I'm just
`going to point out to you that one of the issues -- you know, let's say we
`agree with you that Chen and Campanella have everything and there's reason
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`to combine them. I mean, one of the issues that's really looming large over
`this ground specifically is that Campanella, according to Patent Owner, is
`not prior art. So, I mean, before you get too into does Campanella have
`what's missing from Chen, can you speak to, is it even true that Campanella
`is prior art?
`MR. BAGHDASSARIAN: So, Your Honor, to answer your
`question, Campanella is prior art. Before I answer that question, the good
`news is, whether or not Campanella is prior art, I think we can get to the
`same result. And the reason we can get to the same result is that the known
`prior art was disclosed in the '289 patent itself, was disclosed in the Yi
`reference, was disclosed in the Sklar reference. All of those, all those
`references teach exactly what Campanella teaches and what we cited it for.
`And in fact, if you would turn your attention to slide 19, Your
`Honors --
`JUDGE WHITE: Counselor? Counselor what is our authority for
`switching up the grounds in light of the Supreme Court's decision in SAS?
`What gives us the room to deviate from the Chen-Campanella combination
`and go on a Chen alone or a Chen and some other combination?
`MR. BAGHDASSARIAN: Your Honor, I think we have cited
`those cases to you. I think the Fed Circuit has ruled post-SAS that doing
`that would be proper, raising additional arguments or even introducing new
`evidence would be proper in that context.
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`IPR 2018-00690
`Patent 6,314,289 B1
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`JUDGE SMITH: Let's assume you're correct. Raising new
`arguments may be proper; raising new evidence may be proper. When has
`any court ever said that raising a new ground that wasn't submitted in the
`petition would be proper?
`MR. BAGHDASSARIAN: Well, Your Honor, I don't think we're
`saying it's a new ground that wasn't submitted in the petition. This is the
`same ground, but just doing it Chen alone as opposed to Chen in
`combination with Campanella. It is effectively the same ground.
`Assuming Campanella is not prior art, you're just not using Campanella, but
`you can get to the same result.
`JUDGE SMITH: How would that be the same ground? I mean,
`you were relying on Campanella to show the transmitter. Now you're not
`relying on Campanella to show the transmitter. I mean, it's not clear to me
`that it's the same ground. You no longer have a reference to show
`that -- what's missing in Chen is the transmitter, and to make up for that
`difference, you're bringing in Campanella now. If Campanella is gone,
`there's no transmitter.
`MR. BAGHDASSARIAN: Your Honor, I think the issue here is, is
`the transmit side of this something that is known in the art? And that is
`something the Fed Circuit Court has said that this Board can use in order to
`come to an invalidity finding, so long as the Patent Owner here, Fraunhofer,
`has been put on notice of that art. We have put Patent Owner on notice of
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`IPR 2018-00690
`Patent 6,314,289 B1
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`this art from the very outset, from the petition. And certainly, now that we
`put on the notice in the petition, in the reply, they have had a full and fair
`opportunity to respond to that. The issue is, Your Honors, they have
`nothing to say about that art. So, what I think this boils down to is a point
`of form over substance because the petition only had the Chen-Campanella
`ground, but Campanella is just duplicative of what is already in the prior art.
`JUDGE WHITE: But, Counselor, sometimes form is an important
`thing and cannot be ignored. We have portions of your petition where you
`explicitly state that certain things are not in Chen. And being that you have
`statements saying, for example, Chen does not explicitly disclose the second
`channel, and then, you go into what Campanella discloses, if we excise
`Campanella from the grounds, don't we have holes, based on what you have
`represented in the petition? Not based on what maybe someone could have
`gleaned and what could have been put together, but based on what you have
`put forth in your ground, do we not have holes now because you were
`relying on a piece of art, and now you're saying we can go by without
`relying on that piece of art?
`MR. BAGHDASSARIAN: Well, Your Honor, I don't think there
`are any holes here because, as we went through in the '289 patent, the art
`that we're relying on here, okay, we're right now assuming Campanella is not
`prior art. That's the hypothetical that we have right now. But what we are
`saying is that we cited to, and provided notice of, the admitted prior art from
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`Patent 6,314,289 B1
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`the '289 patent that I went over at the outset of this hearing. We disclosed
`Yi, that, quote-unquote, "fills in another hole," as you mentioned, and Sklar
`did that as well.
`These were all cited in the original petition, and we have
`summarized that for this Board on slide 19, which lays out all the elements
`that Campanella was theoretically used for. All of that was cited in our
`original petition. And the point of that --
`JUDGE SMITH: I think when you say it was cited in your petition,
`let me just read real quickly, this is a quote from SAS. This is what the
`Supreme Court told us. "The statute envisions that a petitioner will seek an
`inter partes review of a particular kind, one guided by a petition describing
`each claimed challenge and the grounds on which the challenge to each
`claim is based." And then, the Supreme Court goes on to say, "It is the
`petition, not the Board's discretion, that defines the metes and bounds of an
`inter partes review."
`And then, the Federal Circuit has gone on to say, you know, that the
`cases where you're citing, bringing in additional evidence -- one of the cases
`you cite to is Genzyme, and this is a case, Philips v. Google from the Federal
`Circuit, where the Federal Circuit said that reliance on Genzyme is
`misplaced because Genzyme relates to "circumstances under which the
`Board can rely on evidence not raised in the petition to support grounds that
`were raised in the petition." "These cases do not concern whether the
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`Board has discretion to institute an inter partes review on a ground of
`unpatentability not raised in petitioner's petition."
`I mean, that's what we're looking at in terms of when you say these
`are known in the prior art. We're looking at the Supreme Court telling us
`the petition has to identify the grounds, and you haven't identified this as the
`grounds in the petition.
`MR. BAGHDASSARIAN: Your Honor, in our view, the ground
`identified was Chen in view of Campanella. We think in light of the
`Supreme Court opinion and subsequent Fed Circuit case law, which I can
`cite to you, using Chen alone in view of the prior art would be proper.
`Chen was raised as a ground in combination with Campanella. If Chen
`alone invalidates without Campanella in view of the prior art, we don't see
`that as a separate ground of unpatentability. We think it's part of the same
`ground. And I think there is case law that we have cited to this panel to say
`that you can use fewer than the total references.
`JUDGE SMITH: I haven't seen the case law that said we can
`institute on the ground that uses fewer than -- well, the case that I just cited
`to you, Philips v. Google, is the case where the petition actually stated a
`single reference by itself in view of one of skill in the art. And the Board
`went on to institute on that ground and, also, a second ground, in view of
`additional references cited in the petition. And the Federal Circuit said that
`adding that second ground was impermissible.
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`Anyway, I just want to highlight to you this is our concern. You
`have about 11 minutes left, maybe if there are other things you want to
`address.
`JUDGE WHITE: Counsel, which case were you referring to
`specifically?
`MR. BAGHDASSARIAN: I think there's the Fed Circuit's Lone
`Star case that has raised and found that additional arguments that are made
`post-petition are properly considered, so long as the patent owner has an
`opportunity to respond. I believe we have raised in re Genzyme, the
`Genzyme case as well that His Honor referred to. In fact, it says the Fed
`Circuit said in the context of the Genzyme case that the introduction of new
`evidence is perfectly permissible, so long as the patent owner had an
`opportunity to respond.
`And I believe there's additional case law, including the Philips v.
`Google case, where the panel in that case in the Fed Circuit found this
`permissible, was to use other prior art, well-known prior art, to assist in the
`invalidity of the challenged claim. Now the issue that the panel is raising
`about us raising Chen alone in the original petition, as I said, I believe we
`did put the Board, and ultimately Fraunhofer, on notice for that ground.
`They did have an opportunity to respond, and we believe that is permissible
`under the circumstances here.
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