UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`RETAILMENOT,INC.,
`Petitioner,
`v.
`HONEY SCIENCE CORP.,
`Patent Owner.
`_____________________
`Case PGR2019-00060
`PGR2019-00061
`Patent 10,140,625
`_____________________
`
`TELEPHONIC CONFERENCE BEFORE A THREE-JUDGE PANEL
`Washington, DC
`Tuesday, February 11, 2020
`11:30 a.m.
`
`Job No.: 287236
`Pages: 1 - 34
`Reported By: Christine G. Griffin
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`Honey Science Corp.
`Exhibit 2023
`RetailMeNot v. Honey
`PGR2019-00060
`
`Ex. 2023-0001
`
`
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`RETAILMENOT,INC.,
`Petitioner,
`v.
`HONEY SCIENCE CORP.,
`Patent Owner.
`_____________________
`Case PGR2019-00060
`PGR2019-00061
`Patent 10,140,625
`_____________________
`
`TELEPHONIC CONFERENCE BEFORE A THREE-JUDGE PANEL
`Washington, DC
`Tuesday, February 11, 2020
`11:30 a.m.
`
`Job No.: 287236
`Pages: 1 - 34
`Reported By: Christine G. Griffin
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`Honey Science Corp.
`Exhibit 2023
`RetailMeNot v. Honey
`PGR2019-00060
`
`Ex. 2023-0001
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`2
`
` TELEPHONIC CONFERENCE held before the
`Honorable JUDGE LINDA E. HORNER, the Honorable
`JUDGE PATRICK R. SCANLON, and the Honorable JUDGE
`BRENT M. DOUGAL.
`
` Pursuant to Notice, before Christine G.
`Griffin, Notary Public in and for the District of
`Columbia.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0002
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`3
`
` A P P E A R A N C E S
` ON BEHALF OF PETITIONER:
` JON CARTER, ESQUIRE
` JEANNIE HEFFERNAN, ESQUIRE
` KIRKLAND & ELLIS LLP
` 601 Lexington Avenue
` New York, NY 10022
` Telephone: (212) 446-4800
`
`ON BEHALF OF THE PATENT OWNER:
` ROBERT STEINBERG, ESQUIRE
` MIKE FLEMING, ESQURE
` LATHAM & WATKINS LLP
` 355 South Grand Avenue
` Los Angeles, CA 90071-1560
` Telephone: (213) 891-1560
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0003
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`4
`
` C O N T E N T S
`TELEPHONIC CONFERENCE PAGE
`Proceedings 5
`
` E X H I B I T S
` (None marked.)
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0004
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`5
`
` P R O C E E D I N G S
` THE COURT: This is Judge Linda Horner
`with the Patent Trial and Appeal Board. With me
`on the line are Judges Scanlon and Dougal.
` Could we have appearances for the
`parties? For petitioner, who do we have on the
`line?
` MR. CARTER: Yes, Your Honor. This is
`Jon Carter from Kirkland & Ellis here on behalf of
`petitioner, and also on the line, I believe,
`listening in is my partner Jeannie Heffernan.
` MS. HEFFERNAN: Thank you. That's
`correct. Thanks.
` THE COURT: And for patent owner?
`Anyone on the line for patent owner? It says we
`have six parties on the call. There should be one
`more person on the call. We'll wait just one
`moment.
` MR. FLEMING: This is Mike Fleming.
`We -- we're expecting Bob Steinberg to be on the
`phone call. I represent the client in the
`litigation only, and Bob is the lead and should be
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0005
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`6
`
`handling this so I'm hoping he will get on the
`line. I'll send him a message.
` THE COURT: Okay. Okay. Great. Thank
`you.
` MR. STEINBERG: Yes. Hello. This is
`Bob Steinberg with Latham, and --
` THE COURT: Hi, Mr. Steinberg.
` MR. STEINBERG: -- I do know that Mike
`is on the call and he does represent the client,
`as well, in the litigation.
` THE COURT: Okay. Great. So we have
`everyone. Did anyone arrange for a court reporter
`for the call?
` MR. STEINBERG: Indeed. This is Bob
`Steinberg. Yes, the patent owner has.
` THE COURT: Okay. Is the court reporter
`on the line?
` THE COURT REPORTER: Yes, ma'am. My
`name is Christie Griffin. Good morning.
` THE COURT: Good morning. All right.
`Very well. We'll go ahead and get started.
` So thank you all for being on the call.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0006
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`7
`
`We convened the call because -- well, let me back
`up. On -- so on August 23rd, 2019, the petitioner
`filed two petitions for post-grant review, U.S.
`Patent 10 million -- or 10,140,625. Each of these
`petitions challenge all the claims of the -625
`patent under different grounds, and as the
`petitioner noted in the petition, the post-grant
`review provisions apply to any patent containing a
`claim with an effective filing date after March
`16th of 2013, and also this challenged patent
`claims priority to applications filed prior to
`that critical date of March 16, 2013. The
`petitioner asserts in each petition that the
`patent is eligible for post-grant review because
`of Claims 8 and 17, which the petitioner asserted
`were entitled to a priority date after, and had an
`effective filing date after March 16th of 2016.
` According to the official file of the
`patent office for the -625 patent, the patent
`owner filed a statutory disclaimer of Claims 8 and
`17 on December 5th, so prior to filing their
`patent owner preliminary response in this matter.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0007
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`8
`
`And as I'm sure the parties are aware, under the
`Board's rule of 37 CFR 42.2 at 7(e), no post-grant
`review will be instituted based on disclaimed
`claims, and because these claims form the basis
`for the petitioner's assertion of eligibility of
`the patent for post-grant review, we wanted to
`have this call to hear from the parties as to
`their positions on the impact of the statutory
`disclaimer on these two post-grant review
`petitions.
` So I'll go ahead and ask if petitioner
`could address the matter first and then I'll have
`patent owner respond.
` MR. CARTER: Certainly, Your Honor, and,
`again, this is Jon Carter on behalf of petitioner.
`It is petitioner's position the statutory
`disclaimer should not play any role in the
`determination of PGR eligibility here, and the
`reason for that is at 3N1 -- that's 3 November
`1 -- of the AIA makes clear that PGR eligibility
`under the AIA is based on a patent or patent
`application, quote: That contains or contained at
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0008
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`9
`
`any time a claim to a claimed invention that had
`an effective filing date on or after March 16,
`2013.
` And so in this instance, certainly the
`-625 patent that's at issue here contained at one
`time -- regardless of the statutory disclaimer,
`contained at one time these Claims 8 and 17, and
`we've laid out in our petition why we believe that
`neither of those claims are entitled to a priority
`date before March of 2013.
` And I think that one thing that's
`helpful here is when we -- when we look at this
`provision of the AIA that does govern the
`eligibility, if we look at just the legislative
`history of the AIA, the Senate actually made
`clear -- and it's in Congressional Record Volume
`157, No. 34, Page S1373, quote: As a practical
`matter, this allows applicants to flip their
`applications forward to the first-to-file system
`but prevents them from flipping backward into the
`first-to-invent universe once they are already
`subject to first-to-file rules, period.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0009
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`10
`
` And so from our perspective, it's our
`position that the fact that the -625 patent as
`issued and, indeed, the applications -- the
`continuation in-part application from which it
`issued included these claims that provides the
`statutory basis under Section 3N1 of the AIA for
`PGR eligibility, and we would submit that the
`decision -- or a helpful or informative decision
`here is the Board's decision in Core Survival v.
`SNS Precision, which is PGR 2015-00022, Paper
`No. 8. That decision's dated February 19th, 2016,
`and in that instance we had a very similar
`situation in which a patent owner actually
`cancelled the claim that was pointed to by
`petitioner as forming the basis for PGR
`eligibility, and the Board in that instance cited,
`too, Section 3N1 of the AIA and agreed with
`petitioner on that basis, that because at one
`point in time the application included this claim
`that had not been cancelled, that was sufficient
`statutory basis for PGR eligibility.
` And I think one last point I'll make,
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0010
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`11
`
`Your Honor, is that I don't believe the patent
`owner's actually challenged PGR eligibility in
`either of its preliminary responses in these -- in
`these two proceedings; instead, I think that the
`patent owner did not address the -- the grounds
`set forth in petitioner's petitions that were
`specifically directed to Claims 8 and 17. I think
`that is what really the -- the 37 CFR 42.207(e)
`really gets to, which is that rule certainly does
`not supersede the statutory basis for PGR
`eligibility. It is our understanding that that's
`a procedural rule that basically says once a claim
`has been statutorily disclaimed, then there's no
`need for the Board to subsequently review that
`claim or those claims. However, that is not --
`that is not a threshold issue for PGR eligibility,
`only the AIA speaks to that.
` THE COURT: All right. Thank you.
` Mr. Steinberg?
` MR. STEINBERG: Yeah, okay. So let me
`take some of these points one at a time. First of
`all, we agree with you, the panel, that 37 CFR
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0011
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`12
`
`42.207(e) simply states that no post-grant review
`will be instituted based on disclaimed claims. We
`provided the disclaimer. It was part -- during
`the timeframe when the preliminary response was
`provided under the statutory sections and the reg.
`Nothing more was required. We believe the PTAB
`does not have jurisdiction now under its own
`rules, this one included, to -- to institute this
`post-grant proceeding because the petition only
`relied on one or more claims in the patent that
`now have been disclaimed. Disclaimer is a
`statutory section, 35 U.S.C. 253 -- two hundred
`and fifty-three -- and that section provides that
`when you disclaim the claims, they are no longer
`in the patent or the original patent which is the
`original prosecution of the application.
` The case that petitioner cites with
`respect to this issue is misplaced. They cite to
`Core Survival versus SNS Precision. In that case
`during the prosecution, not in a disclaimer
`scenario post-issuance, a claim was -- was
`cancelled, and in that circumstance, that patent
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0012
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`13
`
`was considered eligible for PGR. That is a
`different set of facts than the one -- the ones
`that we're dealing with here.
` In fact, there's another case that came
`later, and it is to Crescendo Bioscience versus
`Douglas Grand, and it is dated -- it is dated
`October 17th, 2017. And in this case, there was
`an issued patent, there was a statutory disclaimer
`under 253 -- 35 U.S.C. 253, and in this case the
`PTAB did not institute the PGR because it found
`that a statutory disclaimer with a preliminary
`response provides no post-grant review will be
`instituted based on disclaimed claims.
` Our position is disclaimer of Claims 8
`and 17, which were the only claims in the
`petition, both of them, that petitioner relied
`upon for proving the post-AIA stature. Now that
`they have it disclaimed no longer exists for any
`purpose with this patent. And then to 37 CFR
`42.207(e), we did what was required to preclude
`granting institution on these post-grant reviews.
`Thank you.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0013
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`14
`
` MR. CARTER: Your Honor, if I -- this is
`Jon Carter again. If I may respond?
` THE COURT: Yes, you may in one moment.
`I just had a follow-up question for Mr. Steinberg
`on the case he mentioned, Crescendo Bioscience. I
`was wondering if he had a case number for that
`case.
` MR. STEINBERG: I do. Case No. PGR
`2017-0002, Patent No. 9,387,246, and I'm gonna
`spell the author of the opinion, the last name,
`because I will pronounce it wrong, Christopher
`P-A-U-L-R-A-J.
` THE COURT: Thank you.
` Mr. Carter?
` MR. CARTER: Thank you, Your Honor. So
`I think that there are two questions that are
`really before the Board on this -- on this issue.
`One is the PGR eligibility and I think that the
`AIA statute is very clear, and there are -- there
`are several Board decisions that point to this,
`but it's very clear. It says that -- Section 3N1
`says that the AIA attaches, PGR eligibility
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0014
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`15
`
`attaches if an application, a patent, or a patent
`application contains or contained at any time, and
`the statutory disclaimer does not have the effect
`of completely removing it as though the
`continuation in-part application, which does still
`exist as if -- as though those claims should
`disappear forever.
` The PGR case, the Crescendo Bioscience
`case, and several of the others on this point have
`looked to the CDM context to address the question
`of -- of institution, but I think the -- the
`threshold issue of PGR eligibility, I don't think
`Crescendo Bioscience speaks to. I think what it's
`talking about is whether or not to substantively
`address the disclaimed claims, which I think is
`perfectly in keeping with and consistent with not
`only the AIA Section 3N1 but also is consistent
`with the Board's own 37 CFR 42.207(e).
` So the question is is the patent
`PGR-eligible, and then once you get past that
`threshold which Congress has made very clear in
`not only the AIA itself but also in the
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0015
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`16
`
`legislative history which says you can't have
`patent owners that are flipping from one side of
`the line to the other. Once you are in AIA world,
`you are there to stay. You can't cancel claims or
`statutorily disclaim claims to go back behind the
`AIA line, which is what patent owner is trying to
`do here.
` So once you've got AIA, PGR eligibility,
`then the question becomes, okay, what do you do
`substantively with the claims that have been
`cancelled or statutorily disclaimed. And in that
`instance, I think that the -- the CFR that we've
`been talking about is right on point, which says,
`okay, from a substantive perspective, you treat
`them as if -- as if they aren't there, you don't
`have to address them. You don't have to address
`the arguments that are directed to the substance
`of those claims that have now been statutorily
`disclaimed, but I do not think that the CFR can
`undo what Congress clearly intended to do with
`Section 3N1 of the AIA.
` And, in fact, if we want to go a little
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0016
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`17
`
`bit farther back, there are a number of PGR
`decisions from the Board that cite to a federal
`circuit decision. Guinn v. Kopf. That's
`G-U-I-N-N v. K-O-P-F, and that's 96 F. 3d 1419.
`That's from the Federal Circuit in 1996 in
`which -- this was in a -- in an interference
`proceeding but, again, a lot of PGR decisions
`actually cite to this for the proposition that
`cancelled claims can be used to establish
`eligibility for review. From a substantive
`perspective, the Board doesn't necessarily have to
`address them, but in terms of the pure eligibility
`question which is a slightly -- it's a threshold
`issue. It's a different question. Even the
`Federal Circuit has indicated that cancelled
`claims can be used to establish eligibility for
`review, and I would -- I would submit to the Board
`that this is an analogous situation just like the
`Core Survival case that we were talking about
`before. It's not something --
` THE COURT: Mr. Carter?
` MR. CARTER: -- that the Board had
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0017
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`18
`
`positively --
` THE COURT: Sorry to interrupt.
` MR. CARTER: No problem.
` THE COURT: One question I have, since
`you brought up this Guinn vs. Kopf case, was I saw
`a few cases where the Board has cited that for the
`proposition that disclaimed claims are treated as
`though they never existed in the patent, and the
`petition relies on patented Claims 8 and 17 as the
`basis for the eligibility for the post-grant
`review, so how do we reconcile that issue of the
`Federal Circuit telling us that statutory
`disclaimer of granted claims -- we should treat
`those claims as though they never existed?
` MR. CARTER: Certainly, and I think it's
`exactly the distinction that I was talking about a
`moment ago. You've got the question of
`eligibility and then you've got the question of
`substantively addressing them, and what the
`Federal Circuit in the Guinn v. Kopf case said was
`when it comes to eligibility, those even cancelled
`claims can form the basis to provide eligibility
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0018
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`19
`
`for the review. So that gets you over the
`threshold. But then what the Federal Circuit said
`is, okay, now for substantive review, treat them
`as though they aren't there; in other words, you
`don't have to address them from a substantive
`perspective.
` But I think that's how you reconcile
`this. It's -- we don't want to, sort of, throw
`the baby out with the bath water here and say,
`okay, because the Board doesn't have to
`substantively review these now statutorily
`disclaimed claims that that somehow deprives the
`Board of jurisdiction under the clear language of
`the AIA for PGR review in the first place.
` THE COURT: Mr. Steinberg, do you have
`any response to that argument?
` MR. STEINBERG: Yeah, well, we obviously
`disagree. I mean, it sounds like they're trying
`to -- the petitioner is trying to thread several
`needles with one piece of thread separating
`eligibility and the statutory language and so
`forth. I think it's really simple. With a
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0019
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`20
`
`disclaimer post-issuance, it's clear that the
`claim never existed now within the application or
`the issuing patent. That should be enough and
`that is what exactly is being taken care of in 37
`CFR 42.207. That's the language in Section E,
`that if you basically take out the claims that
`purportedly don't have, you know, a basis in the
`original applications, then no post-grant review
`should institute.
` Now, what they're saying is maybe there
`were some CBM cases from the PTAB that said
`otherwise or -- this is a PGR case that I cited to
`you. This Crescendo Biosciences has to do with
`the PGR institute and denial. This is not a CBM
`case.
` Also, I don't think that
`Section 42.207(e) is talking about separating out
`8 and 17 in this case from the rest of the claims,
`and even if it was, and I don't think it is,
`nothing in the petition addresses any other claims
`with respect to whether or not petitioner believes
`that he didn't have the original provisional
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0020
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`21
`
`application priority date. So at this point
`there's nothing more in the record to rely upon
`other than 8 and 17. That's all that was relied
`upon. And even if you read it, that section,
`Section E really narrow, and we don't believe
`that's how it should be read, there's nothing more
`in the petition that would point to any other
`claims for the purpose of getting past AIA.
` So it's our interpretation that if you
`file a disclaimer at the time of the preliminary
`response, on or before, no post-grant review can
`be instituted under the regs. That's where we
`come out.
` MR. CARTER: Your Honors, if I can
`respond?
` THE COURT: Yes, Mr. Carter.
` MR. CARTER: Thank you. Just a couple
`of quick points. I -- I don't -- I don't hear
`patent owner arguing and I don't -- I'm not sure
`that anybody on this phone would argue that 37 CFR
`42.207(e) can overrule Congress' language in
`Section 3N1 of the AIA, and I don't hear patent
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0021
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`22
`
`owner even addressing that. Now, I think one
`critical point here is that the PGR that patent
`owner cites -- and, indeed, some of the other
`cases that the Board may be familiar with that are
`in not only the PGR context but also the CBM
`context -- when they talk about disclaimer and
`cancellation, they talk about treating the patent
`as though that claim never existed. What it
`doesn't say is that you can treat it as though it
`never existed in the file history. Now, the
`continuation in-part application that petitioner
`points to is the basis for post March 2013
`priority date for patent owner's patent. That
`continuation in-part application still exists and
`I don't believe that -- that anybody's pointed to
`any law saying that that's -- somehow disappears.
` But I think more to the point, if -- if
`the Board believes that it does not have
`jurisdiction under the CFR, notwithstanding the
`clear language of Section 3N1 of the AIA,
`petitioner believes that there are, in fact, other
`claims in the patent that would provide a basis
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0022
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`23
`
`for PGR eligibility. Under the rules, petitioner
`only needed to identify one claim that would not
`be able to claim priority before March of 2013 and
`get us into the AIA world. And, indeed, that's
`entirely consistent with the plain language of the
`AIA and also the legislative history that we
`talked about a minute ago. However, if it would
`be helpful to the Board for petitioner to submit a
`very, very short less-than-five-pages supplement
`identifying the reason why there are other claims
`in addition to 8 and 17 that have this same issue,
`namely that they cannot establish priority before
`March of 2013 and, therefore, firmly keep us in
`post-AIA world and, therefore, establish PGR
`eligibility in addition to all the things that
`we've already talked about, petitioner would be
`happy to do that, as well.
` THE COURT: All right. Counsel, let me
`put you on hold for just a moment and I'm gonna
`confer with my co-panel members to see if -- if
`any of them wanted any additional briefing, and
`we'll respond in a moment, so please hold on.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0023
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`24
`
` (Pause in proceedings.)
` THE COURT: All right. We're back. Do
`I have counsel for -- Mr. Carter, are you on the
`line?
` MR. CARTER: Yes, I am.
` THE COURT: Mr. Steinberg, are you still
`there?
` MR. STEINBERG: I am.
` THE COURT: Very good. Okay. We have
`two follow-up questions, one for each of you.
` So, Mr. Carter, if you could respond and
`inform the panel as to why -- why there were no
`other arguments made for patent eligibility apart
`from reliance on patented Claims 8 and 17 in your
`petition?
` MR. CARTER: Certainly, Your Honors. So
`it is our understanding under the -- the
`requirements for the petition that we only needed
`to identify just one, quite frankly, and we
`identified two because Claims 8 and 17, as Your
`Honors are aware, are basically two versions of
`the same claim, but we only needed to identify one
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0024
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`25
`
`to get us into PGR world, for lack of a better
`phrase, and especially in light of the clear
`statutory language in Section 3N1 of the AIA.
` It is petitioner's position that once we
`point to that claim and there has been -- there's
`been no argument from patent owner that those
`claims are somehow entitled to priority before
`March of 2013, and so that gets us over the
`threshold from petitioner's perspective. And so
`we only identified that one because that was --
`that was the threshold that we needed to meet as
`we understand the statute. But, as I said, if it
`would be helpful to the Board for us to provide
`additional information about other claims that we
`believe fall into that same category, we would be
`happy to do so.
` THE COURT: Okay. Mr. Carter, I think
`the panel is -- is inclined to decide this issue
`based on what was presented in the petition, so
`we'll be looking at this from the perspective of
`patented Claims 8 and 17 only and the arguments
`that you've made as to the statutory language of
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0025
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`26
`
`3N1.
` Mr. Steinberg, can you respond to the
`argument that we heard from petitioner's counsel
`as to the impact of disclaimer and the language of
`3N1 that deals with claims contained at any time
`in the patent or application? So the disclaimed
`claims are treated as though they never existed in
`the patent, but how does that impact the language
`of 3N1?
` MR. STEINBERG: Three and one? I'm not
`following you. I'm sorry.
` THE COURT: So the AIA as in Section
`3N1, it states that -- that the AIA is applicable
`to -- or will apply to any application for patent
`and any patent issuing thereon that contains or
`contained at any time a claim to a claimed
`invention that has an effective filing date that's
`on or after March 16th, 2013.
` MR. STEINBERG: Right.
` THE COURT: So the contained at any time
`language is the language we're looking at here.
` MR. STEINBERG: Yeah. It's pretty
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0026
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`27
`
`simple, actually. The cases are pretty
`straightforward. You cited ones that assert the
`case. I agree there's been other PGR cases that
`have done the same thing. It's as if the claim
`never existed. So that language in the AIA
`statutory section that you were referring to, 37
`U.S.C. 100 in the notes, it doesn't apply.
` So here's another case that you should
`look up, Axon Enterprise, Petitioner, versus
`Digital Ally, Patent Owner, Case No. PGR 2018 -- a
`little later than the Crescendo case -- 00052, and
`the patent number is 9,712,730. In fact, it cites
`another PTAB case. The proposition here is
`disclaimed claims must be treated as if they never
`existed. That's consistent with how the PTAB has
`reviewed the decisions consistent with the federal
`circuit law, and it is not inconsistent with the
`AIA statutory section because the claim didn't
`exist in the original application. That's how we
`need to consider it. That's our position, Your
`Honor.
` THE COURT: Okay. Thank you.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0027
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`28
`
` Mr. Carter, anything further to add
`there?
` MR. CARTER: Yes, certainly. So
`specifically with respect to the Axon Enterprise
`PGR that patent owner just read, a couple of
`points. Number one, we will note that's -- it --
`that is a distinguishable case. First of all, PGR
`was instituted in that case, so the case doesn't
`even get to the question of PGR eligibility based
`on statutory disclaimer. In that case, the Board
`found that even though certain claims had been
`statutorily disclaimed, one of the remaining
`claims, Claim 15, nevertheless provided basis, and
`so the Board didn't actually even address the
`question of whether or not the statutorily
`disclaimed claims took the -- the patent outside
`the PGR world, so to speak. So that case is -- is
`not helpful for patent owner at all. In addition,
`earlier I mentioned that this has come up more in
`the CBM context than in the PGR context, and in
`the Axon Enterprise case that patent owner just
`mentioned, the Board actually relies on CBM
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0028
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`29
`
`reasoning and points to arguments -- or points to
`CBM decisions as the basis for it, so that's a
`distinguishable case for a number of reasons.
` But I think, fundamentally, patent owner
`has not pointed to, nor am I aware of, any PGR
`decisions or any decisions by the Board that have
`taken the decision that statutorily disclaimer or
`cancellation somehow negates that plain language
`of Section 3N1 of the AIA. I'm not aware of any
`precedent that says that the, quote, contained at
`any time language of the statute is somehow -- can
`be circumvented through statutory disclaimer. In
`fact, doing that is precisely the kind of thing
`that Congress warned about in the congressional
`record for that very section of the AIA. Congress
`warned against allowing patent owners, quote, from
`flipping backward into the first-to-invent
`universe once they are already subject to
`first-to-file rules.
` MR. STEINBERG: Can I respond, Your
`Honor? This is Bob Steinberg.
` THE COURT: Yes. We'll have one more --
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Ex. 2023-0029
`
`
`
`Transcript of Telephonic Conference
`Conducted on February 11, 2020
`
`30
`
`one more round of responses. Go ahead,
`Mr. Steinberg.
` MR. STEINBERG: Very briefly.
`Petitioner made two claims. Let me address the
`second. I think that they're saying or trying to
`argue that somehow the AIA statutory language
`trumps, you know, the reg language and the
`application of disclaimer. Obviously, we disagree
`with that because of the reasons we talked
`about -- it's as if the claims never existed --
`but really what they're trying to argue now, I
`think, is can they get another bite of the apple
`and rewrite the petition to add support for an
`argument that, perhaps, other claims in -- in the
`patent being challenged are subject to a later
`filing date. That's -- that's what I hear them
`saying with respect to the case that I cited to
`you. In tha
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
