Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper: 53
`Entered: October 11, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`TELEBRANDS CORP.,
`Petitioner,
`
`v.
`
`
`
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner.
`____________
`
`Case PGR2017-00015
`U.S. Patent No. 9,527,612
`_____________
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`DECISION ON PATENT OWNER’S APPLICATION FOR ATTORNEY’S
`FEES PURSUANT TO THE EQUAL ACCESS TO JUSTICE ACT,
`5 U.S.C. § 504
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`Tel: 571-272-7822
`
`Paper: 53
`Entered: October 11, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`TELEBRANDS CORP.,
`Petitioner,
`
`v.
`
`
`
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner.
`____________
`
`Case PGR2017-00015
`U.S. Patent No. 9,527,612
`_____________
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`DECISION ON PATENT OWNER’S APPLICATION FOR ATTORNEY’S
`FEES PURSUANT TO THE EQUAL ACCESS TO JUSTICE ACT,
`5 U.S.C. § 504
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`PGR2017-00015
`Patent 9,527,612 B2
`
`
`I. INTRODUCTION
`On March 22, 2017, Telebrands Corp. (“Petitioner”) filed a Petition
`for Post-Grant Review Pursuant to 35 U.S.C. §§ 321–328 and 37 C.F.R.
`§ 42.200 et seq. on U.S. Patent No. 9,527,612. Paper 1. The Petition
`challenged the following claims on the following grounds:
`
`Reference(s)
`
`Basis
`
`Claims
`Challenged
`
`
`
`
`
`Saggio and Donaldson
`Saggio and Lee
`Saggio, Cooper or Weir, and
`Lee or Donaldson
`
`§ 112(a) for lack of
`written description
`§ 112(b) for
`indefiniteness
`§ 103
`§ 103
`
`§ 103
`
`3
`
`3
`
`1–4
`1–4
`
`3
`
`On July 12, 2017, Patent Owner filed a Patent Owner Preliminary Response.
`Paper 13. On October 11, 2017, pursuant to 35 U.S.C. § 324(a), based on
`the arguments and evidence in the record at that time, and also under the
`standards and rules applicable at that time, the Board instituted a trial limited
`to one dependent claim, on only one ground, as follows:
`For the foregoing reasons, we determine that Petitioner has
`established that it is more likely than not of prevailing on its
`challenge, under 35 U.S.C. § 112(b), that claim 3 is unpatentable
`for indefiniteness. The Board has not made a final determination
`concerning patentability of any of the challenged claims.
`Paper 16, 24; “Inst. Dec.”
`On January 11, 2018, Patent Owner filed a Response (Paper 23)
`including two new Declarations (Exs. 2031–2033), the transcript from one
`deposition (Ex. 2030), and two other Exhibits (Exs. 2028, 2029). On April
`
`2
`
`
`
`PGR2017-00015
`Patent 9,527,612 B2
`
`11, 2018, Petitioner filed a Reply (Paper 28) including one new Exhibit
`(Ex. 1033). On April 24, 2018, the Supreme Court held that a decision to
`institute under 35 U.S.C. § 314, the statute governing the related type of
`post-grant proceedings known as inter partes reviews, may not institute on
`less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138
`S. Ct. 1348, 1369–70 (2018). On May 3, 2018, we determined that SAS
`governed post-grant reviews as well, and issued an order instituting on all of
`claims and all of the grounds of the Petition as suggested by SAS. Paper 30
`(“SAS Order”).
`On May 31, 2018, we issued a revised schedule. Paper 36 (“Order”).
`As we explained in our Order, Patent Owner had informed us that it would
`not participate any further in these proceedings. Order 3–4. We allowed
`Patent Owner to rely on its arguments submitted in its Preliminary Response
`regarding the previously un-instituted grounds and claims. Order 4. We
`further allowed Petitioner to submit a Supplemental Reply (Paper 37). An
`oral hearing was held on August 31, 2018. Paper 45.
`On October 10, 2018, after considering all arguments and evidence
`submitted both before and after institution of trial, and under the
`preponderance of evidence standard, the Board issued a Final Written
`Decision indicating the following:
`For the foregoing reasons, we determine that Petitioner has
`failed to establish by a preponderance of the evidence that claims
`1–4 is unpatentable as obvious over Saggio and Donaldson or
`Saggio and Lee. Petitioner has further failed to establish by a
`preponderance of the evidence that claim 3 is indefinite under 35
`U.S.C. § 112(b), lacks written description support under 35
`U.S.C. § 112(a), or is unpatentable as obvious under 35 U.S.C.
`
`3
`
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`PGR2017-00015
`Patent 9,527,612 B2
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`
`§ 103 over the combinations of Saggio, Donaldson or Lee, and
`Cooper or Weir.
`Paper 47 at 46–47 (“Final Dec.”).
`On January 11, 2019, Patent Owner emailed, to trials@uspto.gov, a
`paper entitled Patent Owner’s Application for Attorney’s Fees Pursuant to
`the Equal Access to Justice Act, 5 U.S.C. § 504, which the Board has
`entered in to the record as Exhibit 3001 (hereinafter “Application” or
`“App.”).1
`
`II. ANALYSIS
`Patent Owner’s Application is based on the Equal Access to Justice
`Act (“EAJA”), which reads, in relevant part, as follows:
`An agency that conducts an adversary adjudication shall
`award, to a prevailing party other than the United States, fees and
`other expenses . . . unless the adjudicative officer of the agency
`finds that the position of the agency was substantially justified or
`that special circumstances make an award unjust.
`5 U.S.C. § 504(a)(1).2 EAJA expressly defines “adversary adjudication” to
`include, among other things, “an adjudication under section 554 of this title
`in which the position of the United States is represented by counsel or
`otherwise.” 5 U.S.C. § 504(b)(1)(C).
`
`
`1 Patent Owner filed a previous application in PGR2016-00030 and
`PGR2016-00031. See e.g., Ex. 3002 in PGR2016-00030 (same exhibit
`number in PGR2016-00031). The application was denied. See e.g.,
`Telebrand Corp. v. Tinnus Enterprises, LLC, PGR2016-00030 (PTAB Aug.
`31, 2018) (Paper 110) (“EAJA Decision”) (also addressed same application
`in PGR2016-00031).
`2 The Office has determined that this panel is the appropriate “adjudicative
`officer[s] of the agency” to decide this Application.
`
`4
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`PGR2017-00015
`Patent 9,527,612 B2
`
`
`Preliminary Analysis
`A.
`Before delving into the merits of the Application, we opine that, based
`on the express terms of the aforementioned portions of the statute alone,
`denial of the Application is proper, in that this proceeding is an adversarial
`proceeding between two private entities, Telebrands, Inc. and Tinnus
`Enterprises, LLC. See PPC Broadband, Inc. v. Corning Optical Commc’ns
`RF, LLC, 815 F.3d 734, 741 (Fed. Cir. 2016) (noting for related inter partes
`review proceedings that “[o]ne hallmark of these proceedings is their
`adversarial nature” (citing H.R. Rep. No. 112–98, at 46–47)). The positions
`adverse to Patent Owner, in this proceeding, were advanced by Telebrands
`alone, and, thus, did not constitute “the position of the United States.”3
`The only role played by the United States in this proceeding, to the
`extent there is any, was by the Board as employees of a federal agency in an
`adjudicative role. The function of the Board, in that adjudicative role, is to
`
`
`3 As the Supreme Court explained in SAS, 138 S. Ct. at 1355, with respect to
`inter partes review proceedings:
`From the outset, we see that Congress chose to structure a
`process in which it’s the petitioner, not the Director, who gets to
`define the contours of the proceeding . . . It’s telling, too, to
`compare this structure with what came before. In the ex parte
`reexamination statute, Congress embraced an inquisitorial
`approach, authorizing the Director to investigate a question of
`patentability “[o]n his own initiative, and at any time.” [35
`U.S.C.] § 303(a). If Congress had wanted to give the Director
`similar authority over the institution of inter partes review, it
`knew exactly how to do so—it could have simply borrowed from
`the statute next door. But rather than create (another) agency-
`led, inquisitorial process for reconsidering patents, Congress
`opted for a party-directed, adversarial process.
`
`5
`
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`PGR2017-00015
`Patent 9,527,612 B2
`
`apply legal and evidentiary standards, set forth in statutes and promulgated
`in rules, to the positions advanced by the parties. Patent Owner, thus,
`appears to be essentially seeking fees from a tribunal for performing its
`fundamentally impartial duties. “The bare fact that an agency acting in an
`adjudicatory capacity rules against a private party, unjustifiably, is
`insufficient, absent the sovereign’s adversary participation, to support a fee
`award under section 504.” In re Perry, 882 F.2d 534, 540 (1st Cir. 1989)
`(concluding that the actions of a purely adjudicatory entity taken in the
`course of an adjudication are beyond the reach of EAJA); see also Pollgreen
`v. Morris, 911 F.2d 527, 533 (11th Cir. 1990) (“[t]he crucial distinction
`between the role of counsel and that of an adjudicator is that the former
`advocates a particular position while the latter independently assesses the
`evidence before it to reach a result that is dictated by its understanding of the
`law.”).
`Nevertheless, the Office has determined that this panel is the
`appropriate “adjudicative officer[s] of the agency” to decide this
`Application. Consequently, we decide the Application, despite the unusual
`circumstances.4
`
`
`4 “Each appeal, derivation proceeding, post-grant review, and inter partes
`review shall be heard by at least 3 members of the Patent Trial and Appeal
`Board, who shall be designated by the Director.” 35 U.S.C. § 6(c); see also
`Patent Trial and Appeal Board, Standard Operating Procedure 1 (Revision
`15), Assignment of Judges to Panels (Sept. 20, 2018) (available at
`https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20
`FINAL.pdf) (“The Director’s authority under 35 U.S.C. § 6(c) to designate
`panels has been delegated to the Chief Judge. The Chief Judge may further
`delegate the authority delegated by the Director as explained in further detail
`in the next section.”).
`
`6
`
`
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`PGR2017-00015
`Patent 9,527,612 B2
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`
`Analysis of Application
`B.
`Delving into the merits of the Application, Patent Owner’s assertion
`that a PGR proceeding is an “adversary adjudication” is premised on the fact
`that, at the point of institution, “the Director is ‘represented’ as ‘otherwise’
`because the Director’s delegates [i.e., the Board] advance the position that
`one or more claims of the challenged patent are not patentable.” App. 6–7.
`We are not persuaded. As the Supreme Court explained in SAS, the Director
`(and the Board acting as his or her delegate) does not advance his or her own
`position, but rather simply makes a “binary choice—either institute or
`don’t,” and that “[n]othing suggests the Director enjoys a license to depart
`from the petition and institute a different [proceeding] of his [or her] own
`design.” SAS, 138 S. Ct. at 1355–56. Moreover, as noted above, Patent
`Owner’s assertion is illogical, because it is akin to saying that a party in
`district court who receives a preliminary injunction or favorable claim
`construction ruling via a Markman hearing is advancing a district court’s
`position during summary judgment or trial. Ethicon Endo-Surgery, Inc. v.
`Covidien LP, 812 F.3d 1023, 1030 (Fed. Cir. 2016) (analogizing the inter
`partes review procedure to a court first determining whether to grant a
`preliminary injunction and then later deciding the merits of the case).
`Patent Owner further argues that once the proceeding is instituted,
`“[t]he interest of the Director is represented by the petitioner seeking to
`challenge the patent.” App. 7. According to Patent Owner, “[t]he petitioner,
`in essence, fills in for the PTO Director and works to support the rationale
`the Director advanced in the institution decision.” App. 7. We disagree
`with Patent Owner’s analysis.
`
`7
`
`
`
`PGR2017-00015
`Patent 9,527,612 B2
`
`
`An “adversary adjudication” requires “that the government direct
`some purposeful advocacy at the decision-maker, whether written or in
`person.” Handron, 677 F.3d at 155. While the “otherwise” in the definition
`indicates that the advocacy does not need to come from an attorney, courts
`have read that language to refer to “an individual who represents the position
`of the United States in a manner similar to that of counsel.” Pollgreen, 911
`F.2d at 533; see also Handron, 677 F.3d at 152 (explaining that the
`“otherwise” means that “the government’s position is represented in a
`manner akin to the representation counsel would provide”). To that end, we
`disagree that Petitioner advanced a position of the government at any point
`in the proceeding because, among other reasons, the government has no say
`in the positions advanced by Petitioner. See SAS, 138 S. Ct. 1355 (“Nothing
`suggests the Director enjoys a license to depart from the petition and
`institute a different [proceeding] of his own design.”). It “is basic fairness
`that the United States not be liable in an administrative proceeding in which
`its interests are not represented.” Id. at 146; see also Perry, 882 F.2d at 540
`(explaining that EAJA does not apply in “administrative proceedings in
`which the government does not appear in an adversary role”). The same is
`true for the Board. See Ethicon Endo-Surgery, Inc., 812 F.3d at 1030 (Fed.
`Cir. 2016) (explaining that “[b]oth the decision to institute and the final
`decision are adjudicatory decisions and do not involving combining
`investigative and/or prosecutorial functions with an adjudicatory function”).
`Patent Owner cites amicus briefing filed by the United States in Saint
`Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc. and Regents of the
`University of Minnesota v. LSI Corp. in support of its theory. App. 14–17.
`Specifically, Patent Owner asserts that this briefing shows that “the
`
`8
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`PGR2017-00015
`Patent 9,527,612 B2
`
`government, through the Director, takes a position and agrees with the
`petitioner that the challenged patent should be reviewed by the Board.”
`App. 15–16. That is correct. It is also inapposite, as Patent Owner does not
`cite any authority for the proposition that “agreement” with a position is the
`same as “purposeful advocacy” in support of that position by one in an
`“adversary role.” Specifically, the decision to institute itself is a preliminary
`proceeding that is adjudicatory in nature. See 37 C.F.R. § 42.2
`(“Preliminary Proceeding begins with the filing of a petition for instituting a
`trial and ends with a written decision as to whether a trial will be
`instituted.”). In that preliminary proceeding, the Board decides whether to
`institute trial on behalf of the Director. See 37 C.F.R. § 42.4(a). In that role,
`the Board is the adjudicator, and not an “adversary,” in that the Board makes
`a decision based on “purposeful advocacy” of parties in an “adversary role,”
`neither of which is the Director. Certainly an adjudicatory decision
`necessarily indicates agreement with one adversary over another. But that is
`the nature of any adjudication. And Patent Owner has not provided adequate
`reasoning as to why the decision on institution should be treated differently.
`Relatedly, Patent Owner asserts also that “the decision to institute review
`leading to invalidation of a patent is controlled by the Director, not the
`private parties.” App. 16. That is also correct. It is also inapposite for the
`same reasons set forth above.
`Patent Owner further asserts that “[i]f the Director disagreed with the
`arguments and evidence presented by the petitioner, the Director could–and
`should–exercise his discretion and deny review or should actively participate
`in the proceeding. Otherwise, the subsequent arguments presented by the
`petitioner must be assumed to be consistent with the Director’s position.”
`
`9
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`PGR2017-00015
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`
`App. 17. Patent Owner does not cite any authority for this position.
`Specifically, Patent Owner does not point to any statute, rule, case law, or
`otherwise that allows the Director to “actively participate in the proceeding”
`in an “adversary role.” Indeed, we find this prospect extremely troubling,
`for the Director is also a statutory member of the Board. 35 U.S.C. § 6(a)
`(“The Director, the Deputy Director, the Commissioner for Patents, the
`Commissioner for Trademarks, and the administrative patent judges shall
`constitute the Patent Trial and Appeal Board.”). In that scenario, the
`Director would “actively participate” in an “adversary role” in a proceeding
`where the Director may also be the adjudicator. Patent Owner has not
`explained adequately how this scenario comports with basic tenets of due
`process.
`Patent Owner also contests our reliance on case law cited in our
`previous EAJA Decision. App. 21–26. For Handron, Patent Owner asserts
`that the holding there is limited to whether certain written documents
`prepared by an agency could substitute for human-presence advocacy at an
`oral hearing. App. 22. We disagree. Although Patent Owner correctly
`identifies the narrow issue decided in that case, in order to reach that issue,
`the Third Circuit opined on the overarching principles to be considered. It is
`those overarching principles which are relevant and applied here.
`For Pollgreen, Patent Owner asserts that unlike, the administrative
`proceeding at issue there where the Eleventh Circuit held that an
`immigration official conducting an interview did not represent the position
`of the United States government, here, the government’s position was
`represented by Petitioner in an adversarial adjudication. App. 23–24.
`Again, as explained above, Petitioner was advancing Petitioner’s own
`
`10
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`PGR2017-00015
`Patent 9,527,612 B2
`
`positions, not those of the government. Patent Owner advances a similar
`assertion concerning Perry. It is unpersuasive for the same reasons.
`Patent Owner additionally argues that the role of Petitioner in post-
`grant proceedings is analogous to the “private attorney general” theory.
`App. 19. We understand that Patent Owner does not seek fees under this
`theory but “merely notes the analogy.” App. 20. Nevertheless, we are
`unpersuaded of the analogy’s relevance. Citing Spencer v. NLRB, 712 F.2d
`539 (D.C. Cir. 1983), Patent Owner asserts that “courts could award fees to
`the private party who successfully advanced the arguments an attorney
`general would make when enforcing a public law.” But in Spencer, the
`Circuit Court noted that, in 1975, the Supreme Court revoked the common-
`law doctrine that serves as the underlying basis for the “private attorney
`general” theory, leaving explicitly to Congress’s determination “the award
`of attorneys’ fees and the range of discretion of the courts in making those
`awards.” 712 F.2d at 544 (quoting Alyeska Pipeline Serv. Co. v. Wilderness
`Soc’y, 421 U.S. 240, 262 (1975)). In connection with that ruling, Congress
`passed the Equal Access to Justice Act in 1979—the very Act under which
`Patent Owner seeks attorney’s fees today. Patent Owner has not apprised us
`of the relevance here of a common-law doctrine rejected by the Supreme
`Court and left uncodified by Congress.
`Finally, with respect to the assertion that the Office’s position, at
`institution, was not substantially justified, Patent Owner offers several
`rationales. First, Patent Owner asserts that the Board’s only basis for
`instituting trial was “for an alleged failure of claim 3 to comply with the
`definiteness requirement of 35 U.S.C. § 112(b).” App. 27. That is correct.
`It is also irrelevant, as under 35 U.S.C. § 324 and SAS, all that is required to
`
`11
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`PGR2017-00015
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`
`institute is a petition showing that it is more likely than not that one
`challenged claim is unpatentable on one ground. That standard was met
`here. See Dec. 24 (“we are persuaded Petitioner has demonstrated, on this
`preliminary record, that it is more likely than not to prevail on its challenge
`that claim 3 of the ’612 patent is indefinite.”).
`Relatedly, Patent Owner asserts that, in instituting trial, the Board
`“disregarded the fact that the patent examiner was the one who suggested the
`claim limitation alleged to be indefinite.” App. 28. As an initial matter, this
`is erroneous because the Board did not disregard this fact. Indeed, we
`expressly considered it. Dec. 9 (“Patent Owner also argues that we should
`deny the indefiniteness ground asserted in the Petition because ‘the
`Examiner amended claim 1 to add the detach-by-filling limitation (see
`Ex. 1008 at 19–20), illustrating that he understood the ‘fill’ limitation in
`these claims to be not indefinite.’ Id. at 21.”). We determined it was not
`dispositive at that point in the proceeding, as follows:
`As for the § 112(b) ground, we determine that given the lack of
`evidence of express consideration by the Examiner of whether the
`“filled state” limitation was indefinite, that the interests of finality
`do not weigh in favor of exercising our discretion to deny
`institution. In addition, as we explain below, we determine that
`Petitioner has shown that it is more likely than not that the “filled
`state” limitation is indefinite. Thus, given the lack of evidence of
`finality and the stronger showing on the merits, we decline to
`exercise our discretion under § 325(d) with respect to the § 112(b)
`ground.
`Dec. 12.
`Instead, what Patent Owner appears to be asserting is that claim
`limitations suggested by the Examiner are per se definite. In support of this
`position, Patent Owner cites two cases: Rein v. USPTO, 553 F.3d 353 (4th
`
`12
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`Cir. 2009); and W. Elec. Co. v. Piezo Tech., Inc., 860 F.2d 428 (Fed. Cir.
`1988). We have considered both cases. The first involves the sufficiency of
`a search for documents by the Office in response to a request under the
`Freedom for Information Act. 553 F.3d at 357. The second involves
`“[w]hether a patent examiner may be compelled to answer questions during
`a deposition which probe the examiner’s technical knowledge of the subject
`matter of the patent.” 860 F.2d at 430. We do not see how either case is
`relevant to the issue at hand.
`Next, Patent Owner asserts that the Office’s position, at institution,
`was not substantially justified because the Board did not sufficiently
`consider prior Federal Circuit opinions that considered the indefiniteness of
`other claim terms in related patents. App. 28–29. Specifically, Patent
`Owner asserts that the Board gave “mere lip service” to those opinions, and
`did not substantively respond to their reasoning. App. 29. We disagree.
`The Board stated expressly that such opinions were considered, as follows:
`We acknowledge, however, that the district court and Federal
`Circuit has considered the indefiniteness of other claim terms in
`related patents, and some of their findings weigh against our
`preliminary determination. See Ex. 1016 (district court claim
`construction opinion for ’282 and ’749 patents); Ex. 1023 (report
`and recommendation regarding preliminary injunction for ’282
`and ’749 patents); Ex. 1027 (Federal Circuit opinion affirming
`preliminary injunction related to ’066 patent); Ex. 1031 (district
`court claim construction order regarding ’066 patent).
`Dec. 23. And the Board stated candidly in the very next sentence that “we,
`of course, do not take lightly that our preliminary determination appears to
`differ from that of the findings of the courts.” Dec. 23. The Board then
`
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`explained the exact reasons why such opinions were not dispositive at that
`point in the proceeding, as follows:
`While we, of course, do not take lightly that our preliminary
`determination appears to differ from that of the findings of the
`courts, we note that there are differences in the claims at issue,
`evidentiary records, and procedural burdens.
` See, e.g.,
`Telebrands Corp. v. Tinnus Enterprises, LLC, Case PGR2016-
`00031, slip op. at 2–7 (PTAB May 5, 2017) (Paper 31)
`(mandamus denied). In particular, we note that the record before
`us includes the as-yet unchallenged testimony of Petitioner’s
`Declarant, Dr. Kamrin, as to how one of ordinary skill in the art
`would have understood “filled state,” testimony that, at this stage
`of the proceeding, we determine is credible. Ex. 1022 ¶¶ 39–44.
`Dec. 23–24. We disagree that such an explanation, which also refers to the
`relevant explanation in a previous decision (on which a mandamus petition
`to the Federal Circuit was explicitly denied), is mere “lip service.”
`Patent Owner additionally takes issue with the fact that the Board
`came to the opposite conclusion in its Final Written Decision, including
`disavowing its previous reliance on Dr. Kamrin’s testimony. App. 29–30.
`Patent Owner’s underlying observation is accurate. It is also inapposite
`because, as we stated at institution, “the record before us includes the as-yet
`unchallenged testimony of Petitioner’s Declarant, Dr. Kamrin, as to how one
`of ordinary skill in the art would have understood ‘filled state,’ testimony
`that, at this stage of the proceeding, we determine is credible.” Dec. 24;
`emphases added. In other words, we were only able to determine that
`Dr. Kamrin’s testimony was irrelevant after it was challenged, both in
`briefing and with opposing evidence. See e.g., Ex. 2030 (cross-examination
`of Dr. Kamrin).
`
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`
`Relatedly, Patent Owner faults the Board for only relying, in its Final
`Written Decision, on evidence that was available to it at the time of
`institution. App. 30–31. That is correct, but also misleading. It is only after
`conducting a full trial on this issue, with complete briefing that included
`challenges to the relevant evidence, that the Board was able to determine
`that it only needed to rely on evidence that was available to it at the time of
`institution.
`For the reasons explained above, we are unpersuaded that Patent
`Owner has met its burden of showing that this proceeding was an “adversary
`adjudication,” or that the Office’s position, at institution, was not
`substantially justified.
`
`III. ORDER
`For the foregoing reasons, it is:
`ORDERED that Patent Owner’s Application for Attorney’s Fees
`Pursuant to the Equal Access to Justice Act is denied.
`
`
`
`15
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`PETITIONER:
`
`Robert Maldonado
`rmaldonado@cooperdunham.com
`
`Tonia Sayour
`tsayour@cooperdunham.com
`
`PATENT OWNER:
`
`Robert Sterne
`rsterne-ptab@sternekessler.com
`
`Thomas Croft
`tcroft@dbllawyers.com
`
`Robert Spendlove
`rspendlove@laubscherlaw.com
`
`Jeffrey D. Ahdoot
`jahdoot@dbllawyers.com
`
`Brian Koide
`bkoide@dbllawyers.com
`
`Jason Eisenberg
`jasone-ptab@sternekessler.com
`
`Jonathan Tuminaro
`jtuminar-ptab@sternekessler.com
`
`Dallin Glenn
`dglenn-ptab@sternekessler.com
`
`Trent Merrell
`tmerrell-ptab@sternekessler.com
`
`
`
`
`16
`
`
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