[00:00:02] Speaker 04:
stay where you are because the next case is number 18-1710, Purdue former LP versus Yanku.

[00:00:11] Speaker 04:
And again, Ms.

[00:00:11] Speaker 04:
Sweezy.

[00:00:37] Speaker 04:
OK.

[00:00:38] Speaker 01:
Good morning again.

[00:00:38] Speaker 01:
May it please the court?

[00:00:40] Speaker 01:
In these IPRs, there is a central problem with the board's decisions that I would like to focus on, and that is because they rejected these claims on the basis of something that came after our claims, not before.

[00:00:53] Speaker 01:
That's the Joshi published application.

[00:00:56] Speaker 01:
Joshi is not prior art, and Joshi was critical to all three grounds.

[00:01:01] Speaker 01:
And on that basis, the board should not have entered its unpatentability determinations.

[00:01:06] Speaker 01:
And this issue, what I would like to focus on this morning, is that this issue can be fully resolved as a matter of Amniel's failure of proof.

[00:01:17] Speaker 01:
There were two issues with respect to this priority debate.

[00:01:20] Speaker 01:
First, our priority date, and then second, the priority date of the Joshi

[00:01:29] Speaker 01:
prior art reference, the asserted prior art reference.

[00:01:33] Speaker 01:
And where the board erred here is on the first, our priority date.

[00:01:38] Speaker 01:
We should have been given August 6, 2001 as our priority date.

[00:01:44] Speaker 04:
And if you lose on that, Joshi is prior art, right?

[00:01:50] Speaker 01:
We have not disputed that Joshi is entitled to its August 30th date.

[00:01:55] Speaker 01:
So yes, yes, Your Honor.

[00:01:57] Speaker 01:
if the court does not agree with us.

[00:01:58] Speaker 01:
But let me give you several reasons why the court should agree with us.

[00:02:02] Speaker 01:
Specifically, this issue was not disputed.

[00:02:06] Speaker 01:
Amniel never contested our priority date of August 6, 2001.

[00:02:11] Speaker 01:
What the fight was about was whether we were entitled to an even earlier date because of Joshi's earlier date that was asserted by Amniel.

[00:02:20] Speaker 01:
There was no dispute that we were entitled at least to August 6, 2001.

[00:02:25] Speaker 01:
And let me point to some record sites.

[00:02:28] Speaker 04:
But the board concluded you weren't, right?

[00:02:32] Speaker 01:
The board concluded that we weren't, but it shouldn't even have addressed this issue because there was no dispute.

[00:02:38] Speaker 01:
It didn't even have to reach the merits, and it shouldn't have reached the merits.

[00:02:41] Speaker 01:
Because Amniel didn't even tee this up.

[00:02:44] Speaker 01:
In our patent owner response, we couldn't have been clearer to put Amniel on notice that we understood Amniel to have agreed to our August 6, 2001 date.

[00:02:55] Speaker 04:
And the burden's on you to establish the earlier date, right?

[00:02:59] Speaker 01:
Only if there is a dispute about this, Your Honor.

[00:03:02] Speaker 01:
First, the burden of persuasion is always on annual, but second, annual didn't even try to dispute this.

[00:03:07] Speaker 04:
I'm not sure that's true with respect to this issue, but go ahead.

[00:03:10] Speaker 01:
I believe that's what the dynamic drinkware says, because the burden always rests on annual to establish that it has a prior art reference.

[00:03:19] Speaker 01:
And when we said in our patent owner response, we said at appendix 2718,

[00:03:24] Speaker 01:
AMUEL is not contesting that the 376 patent is entitled to priority of August 6, 2001.

[00:03:33] Speaker 01:
That gave AMUEL an opportunity in its reply to actually contest that.

[00:03:38] Speaker 01:
And it did not.

[00:03:39] Speaker 01:
And its expert did not.

[00:03:41] Speaker 01:
In its reply at appendix 4294, it applied our August 6, 2001 date.

[00:03:48] Speaker 01:
Again, there was a fight about April, but not about August 6, 2001.

[00:03:53] Speaker 01:
correctly found that Joshi is entitled only to a later date, and that's why Joshi doesn't predate us.

[00:04:00] Speaker 01:
I'll also point the court to Dr. Timko, Amniel's expert, who has said at appendix 4332, the 376 patent claims priority to its own provisional filed on August 6, 2001.

[00:04:13] Speaker 01:
And that's the date to be applied for evaluating the prior art.

[00:04:18] Speaker 04:
So simply as a matter of- So you're not saying that they

[00:04:21] Speaker 04:
stipulated to the earlier date.

[00:04:23] Speaker 04:
You're just saying they didn't raise the issue?

[00:04:26] Speaker 01:
However you want to look at it, Your Honor, that's right.

[00:04:28] Speaker 01:
They didn't put this up before the board.

[00:04:31] Speaker 01:
And one fundamental aspect of IPRs that this court has recognized is that it still is an evidentiary burden-based system.

[00:04:39] Speaker 01:
It's not the board's place to come in and inject itself into an issue that the parties are not disputing.

[00:04:45] Speaker 04:
And there was no- Did you raise this issue in your book, Ray?

[00:04:49] Speaker 01:
We did, Your Honors.

[00:04:51] Speaker 01:
I believe at page 39 of our opening brief.

[00:04:56] Speaker 01:
And again, in our reply, I can get the exact pages for you.

[00:05:04] Speaker 01:
On page 39 of our opening brief, we said in the middle of that full paragraph, Amniel therefore never disputed that the 534 provisional application sufficiently describes the 376 invention, in other words, to give us

[00:05:20] Speaker 01:
the provisional priority date.

[00:05:23] Speaker 01:
And we conclude by saying again, Amniel never contested the relevant issue.

[00:05:27] Speaker 01:
We again, in our reply brief at pages 12 through 14, again point out, critically, neither Amniel nor its expert ever argued or offered evidence that Purdue's provisional application did not support the claims of the 376 patent.

[00:05:44] Speaker 01:
In fact, they firmly agreed.

[00:05:46] Speaker 04:
So your argument is that you didn't have any obligation to

[00:05:50] Speaker 04:
produce evidence on that.

[00:05:53] Speaker 04:
The burden of production does rest on you.

[00:05:56] Speaker 04:
You at least agree with that, right?

[00:05:58] Speaker 01:
Respectfully, Your Honor, only if the issue is teed up.

[00:06:01] Speaker 01:
When the parties take an issue off the table, and these, of course, there's lots of reasons.

[00:06:05] Speaker 04:
I don't know if they took the issue off the table.

[00:06:06] Speaker 04:
You're saying they just didn't raise it.

[00:06:09] Speaker 01:
They didn't raise it or they didn't dispute it, and in fact, they affirmatively embraced it.

[00:06:15] Speaker 01:
If, however, you want to look at it as a matter of burdens, then under that lens as well,

[00:06:19] Speaker 01:
We had a burden of production, and we did point to our provisional specification and how it supports the claims of the 376 patent.

[00:06:29] Speaker 01:
And again, even if you look at it from the burden-shifting framework, Amniel did not come back with any evidence to dispute that.

[00:06:36] Speaker 01:
It was arguing about issue preclusion.

[00:06:38] Speaker 04:
Yeah, but on the face of it, I think what the board is saying is it doesn't provide the required blaze marks, right?

[00:06:45] Speaker 01:
The board was wrong about that, Your Honor.

[00:06:47] Speaker 04:
Why was the board wrong about that?

[00:06:49] Speaker 01:
The board was wrong because our patent very clearly calls out the two gelling agents used in this patent.

[00:06:55] Speaker 01:
Those are PEO and HPMC.

[00:06:58] Speaker 01:
It includes them in a single paragraph that specifically acknowledges that the listed agents can be combined in mixtures.

[00:07:07] Speaker 01:
And then throughout the patent, it repeatedly refers to these two gelling agents as especially preferred, preferred,

[00:07:15] Speaker 01:
the only example that's given that fully meets this court's case law where it talks about, does the patent indicate that certain ingredients are of special interest or emphasized?

[00:07:27] Speaker 01:
And certainly, our specification did not.

[00:07:30] Speaker 02:
With respect to this latter point, you mentioned that not only in that one paragraph where a large number of polymers are mentioned,

[00:07:44] Speaker 02:
that there were other references also in the provisional.

[00:07:48] Speaker 02:
But the board, or at least the PTO, I guess, argues that those were not raised, those other sections of the provisional.

[00:07:59] Speaker 02:
What's your answer to that?

[00:08:00] Speaker 02:
Because I didn't see anything in your reply brief that specifically addressed that response.

[00:08:05] Speaker 01:
I have a couple of responses, and I think we meant to or attempted to, but let me clear it up for the court.

[00:08:12] Speaker 01:
Ran out of words.

[00:08:13] Speaker 01:
Again, because this was never raised by annual, we did a sort of belt and suspenders when we pointed to that paragraph as providing written description support from the provisional for our patent, 376 patent.

[00:08:26] Speaker 01:
But it wasn't teed up.

[00:08:28] Speaker 01:
So in that situation, we're sort of in this hypothetical.

[00:08:30] Speaker 01:
OK.

[00:08:30] Speaker 02:
Well, I understand there may be an explanation.

[00:08:32] Speaker 02:
But to get to the first point first, you didn't

[00:08:36] Speaker 02:
call the board's attention to any of the other pages of the provisional other than the one that you referred to initially that has all the compounds listed?

[00:08:46] Speaker 01:
What I can tell you, Your Honor, we did not specifically refer to other passages, but we did provide expert testimony who evaluated the provisional and the patent and said there is sufficient written description support.

[00:08:59] Speaker 02:
He provided... But did he actually point to those other

[00:09:02] Speaker 02:
He did not.

[00:09:04] Speaker 02:
OK, that's all I needed.

[00:09:06] Speaker 01:
He pointed to a representative example.

[00:09:08] Speaker 01:
But again, because this issue had not been teed up by Amniel, it's sort of hard to fault us.

[00:09:13] Speaker 02:
No, I understand your argument.

[00:09:14] Speaker 02:
I just wanted the factual etiquette for the question.

[00:09:18] Speaker 01:
Yes.

[00:09:19] Speaker 01:
And I would make one more point here, is that again, when this is an issue that the board has no reason, there's no argument from a party that's advancing it, we didn't have notice.

[00:09:31] Speaker 01:
And for it to raise this in its final written decision, that is not how these proceedings should operate.

[00:09:38] Speaker 01:
However, if the board were going to go down this path, if it's going to start looking at evidence, the obligation has to be on the board to look at the evidence as a whole, and certainly in this case where you're talking about a legal document like a specification.

[00:09:52] Speaker 01:
And so if the board is going to somehow put the burden on us when it wasn't even teed up,

[00:09:58] Speaker 01:
It couldn't have just put blinders on and decided that that one paragraph wasn't enough.

[00:10:03] Speaker 01:
It had an obligation to look at the plain face of the specification where these two other ingredients are repeatedly called out as preferred and especially preferred.

[00:10:24] Speaker 04:
discussion in the provisional about combining the two, right?

[00:10:30] Speaker 01:
There is.

[00:10:30] Speaker 01:
On Appendix 107, it says that these different agents can be combined as mixtures.

[00:10:38] Speaker 04:
Yeah, but that's talking about the two large categories of agents, right?

[00:10:45] Speaker 01:
I respectfully, Your Honor, would dispute that those are large categories.

[00:10:48] Speaker 01:
It's a single paragraph.

[00:10:50] Speaker 02:
What list do you want?

[00:10:51] Speaker 02:
I'm sorry.

[00:10:53] Speaker 01:
This is Appendix 1007.

[00:10:54] Speaker 01:
1007.

[00:10:55] Speaker 01:
I'm sorry.

[00:10:57] Speaker 01:
Appendix 1007.

[00:10:57] Speaker 01:
And it's the second full paragraph, the beginning of it, where we talk about, in certain embodiments of the present invention, wherein the dosage form includes an aversive agent comprising a gelling agent.

[00:11:11] Speaker 01:
And we list about 30 agents.

[00:11:14] Speaker 01:
And then we say, at the conclusion, mixtures thereof.

[00:11:17] Speaker 02:
Right.

[00:11:18] Speaker 02:
And that's the page that was called, I guess.

[00:11:22] Speaker 01:
That was.

[00:11:23] Speaker 01:
The next page in the appendix, which is 1019, this is where we talk about preferred sustained release polymers.

[00:11:31] Speaker 01:
This is about five lines down.

[00:11:34] Speaker 01:
And we call out especially, this is in the parentheses, especially hydroxypropyl methyl cellulose, HPMC.

[00:11:44] Speaker 01:
Again, on page 1020 of the appendix, about seven lines down.

[00:11:52] Speaker 01:
We start in certain preferred embodiments.

[00:11:57] Speaker 01:
We list a possible dosage form.

[00:11:59] Speaker 01:
And then there's a sentence that begins, the hydroxyalkyl cellulose is preferably one of these celluloses such as, again, HPMC.

[00:12:11] Speaker 01:
On Appendix 1031, twice we call out PEO, polyethylene oxide, as an example.

[00:12:22] Speaker 01:
And again, on Appendix 1032, we refer multiple times to PEO.

[00:12:29] Speaker 01:
And on Appendix 133, PEO is the only example in the EG parenthetical.

[00:12:37] Speaker 01:
This is about five lines down from the top of that page.

[00:12:42] Speaker 01:
That was plenty of support for a person of ordinary skill in the art to understand that we had possession of these two gelling agents in combination.

[00:12:53] Speaker 03:
And what is your basis again for saying that you didn't waive the argument on that, that you didn't cite those specifically?

[00:13:01] Speaker 01:
I would boil it down to two issues.

[00:13:03] Speaker 01:
One, this was never in dispute.

[00:13:05] Speaker 01:
So the fact that we sort of belt in suspenders this in our patent owner response and annual never came back, the board can't somehow hold us to a standard that we didn't even have to try to meet.

[00:13:18] Speaker 01:
And two, once the board was on that path, it did need to look at the full specifications.

[00:13:23] Speaker 01:
But fundamentally, it was Amneal's failure to even tee this up as an issue.

[00:13:28] Speaker ?:
Right.

[00:13:28] Speaker ?:
OK.

[00:13:28] Speaker 04:
All right, you can save the rest of your time.

[00:13:31] Speaker 01:
Yes, please.

[00:13:32] Speaker 01:
Thank you.

[00:13:41] Speaker 04:
This is Kelly.

[00:13:44] Speaker 00:
Good morning, Your Honors.

[00:13:45] Speaker 00:
May it please the Court, before addressing

[00:13:50] Speaker 00:
statements by my friend across the aisle, I would like to first state that each of the three grounds of invalidity that the board found is based on a strong primary reference.

[00:14:06] Speaker 00:
First you have Palermo that teaches everything about the claimed invention except the use of PEO.

[00:14:13] Speaker 04:
Wouldn't we have to at least send it back if Joshi wasn't prior art?

[00:14:18] Speaker 00:
I don't believe that Your Honors would, and for this reason.

[00:14:21] Speaker 00:
One is a legal reason, and one is a factual reason, according to this case.

[00:14:26] Speaker 00:
I'll start with the factual reason.

[00:14:29] Speaker 00:
The factual reason is that the board, in the third ground of rejection, Royce is the primary reference.

[00:14:36] Speaker 00:
Royce, the board found, teaches everything about the claim invention, but it does not specifically name opioids as the analgesics.

[00:14:47] Speaker 00:
Royce says, oh, you can use PEO and HPMC for the controlled release of analgesics.

[00:14:54] Speaker 00:
But it doesn't say opioids.

[00:14:56] Speaker 00:
But the board, in that case, relied on Hofmeiser as teaching both opioids and the use of HPMC as a gelling agent.

[00:15:10] Speaker 00:
So nowhere to disclose all of the elements are we relying on

[00:15:16] Speaker 00:
Joshi in that case and the board only relies on Joshi and Hofmeister as it characterizes those references as just merely verifying what Royce has already taught and a director honors attention to the board's decisions and

[00:15:45] Speaker 00:
If you look at the board's decision at appendix page 67, you see the board referring to what the petitioners argued as Royce teaching a formulation that includes both PEO and HPMC as claimed, and then it says that Hofmeister and Joshi merely would confirm that both are known gelling agents.

[00:16:10] Speaker 00:
So in this case, they're merely verifying that these things are jelly mages.

[00:16:16] Speaker 00:
But Hofmeister already does that.

[00:16:20] Speaker 00:
We don't need Joshi for that reference, especially since, as the handbook indicates, although not cited in this particular garada of rejection, people with ordinary skill in the art knew that both of these things, both of these compositions,

[00:16:36] Speaker 00:
worked as gelling agents.

[00:16:37] Speaker 00:
They're identified as gelling agents in the pharmaceutical handbook.

[00:16:43] Speaker 00:
And then if you look to the board's decision on page 74 of the appendix, it describes, the board says, as such, Hofmeister and Joshi verified that the materials included in Royce's controlled release formulation

[00:17:04] Speaker 00:
would necessarily provide abuse deterrence.

[00:17:07] Speaker 00:
Again, they were merely confirming what gelling agents do, but you could drop Joshi out of that, and Hofmeister still provides that teaching.

[00:17:20] Speaker 00:
And that also confirms what is already taught about gelling agents and Hofmeister in combined use with opiates.

[00:17:32] Speaker 04:
Getting back to what I said about as a legal sort of matter, at least certainly the- So that might be that the board could have said, well, we conclude the jushy is not prior art.

[00:17:46] Speaker 04:
But nonetheless, this combination renders this obvious because Royce teaches it and Hofmeister or whatever it is tells us that it's a delegation.

[00:18:01] Speaker 04:
So I guess, in a sense, what you're saying is that they made an error about Joshi that's harmless error.

[00:18:07] Speaker 04:
Is that the idea?

[00:18:08] Speaker 00:
That is the idea.

[00:18:09] Speaker 00:
Just as when, in two situations, when the board gets a rejection from the examiner, I would say it's akin to that sort of situation where the examiner may cite a reference as being obvious, and then the board says, no, it actually anticipates an anticipationist epitome of obviousness.

[00:18:28] Speaker 00:
The other time when the board may do that, and I understand that you're reviewing court now, I'll connect the two together in a moment.

[00:18:37] Speaker 00:
But the other time is when the board finds that in a rejection based on multiple references, that one or two of the references may just be duplicative or unnecessary.

[00:18:49] Speaker 00:
The board doesn't affirm the examiner based on those additional references.

[00:18:54] Speaker 00:
And this court has certainly affirmed the board doing so and has never found that that's a new ground of rejection.

[00:19:01] Speaker 04:
What's an example of a case like that?

[00:19:06] Speaker 00:
I'm sure there are examples where this court has affirmed decisions like that and found that they weren't new grounds of rejection.

[00:19:11] Speaker 00:
I'm absolutely sure of that.

[00:19:13] Speaker 00:
I'm not sure about this court doing that in particular.

[00:19:17] Speaker 00:
But if you don't agree that Joshi is prior art,

[00:19:21] Speaker 00:
and you're not satisfied that this is something you can do as a body review, then you can remand to the board to consider the third ground of rejection in the absence of Joshi.

[00:19:38] Speaker 04:
Okay, well let's talk about whether Joshi is prior art.

[00:19:42] Speaker 00:
Okay.

[00:19:42] Speaker 04:
And in particular, whether this issue about whether the 376 patent

[00:19:49] Speaker 04:
find support in the provisional was raised by the petitioner.

[00:19:52] Speaker 04:
Was it raised by the petitioner?

[00:19:57] Speaker 00:
It was not raised by the petitioner.

[00:19:59] Speaker 00:
And the reason for it not being raised is, as Ms.

[00:20:06] Speaker 00:
Swisey notes, neither party challenged either party's ability

[00:20:17] Speaker 00:
For 10 years, this litigation between the parties was going on for 10 years.

[00:20:21] Speaker 00:
Neither party challenged the other party's entitlement to its provisional filing date.

[00:20:27] Speaker 04:
And it wasn't until this proceeding had already been going on when... Well, the petitioner did rely on Joshi as prior art, right?

[00:20:37] Speaker 04:
Yes.

[00:20:38] Speaker 04:
Was there sole theory collateral estoppel, or what was their theory?

[00:20:47] Speaker 00:
I don't think there's a yes or no answer.

[00:20:51] Speaker 00:
So if you'll indulge me, I'd like to take you through what happened.

[00:20:56] Speaker 00:
The petitioner filed three separate petitions.

[00:21:01] Speaker 00:
The one in each joshi is named.

[00:21:04] Speaker 00:
The petitioner then, I'm sorry, two petitions with three grounds rejection total.

[00:21:12] Speaker 00:
The petitioner, a suited joshi, never challenged their ability

[00:21:17] Speaker 00:
get priority to their provisional filing date.

[00:21:20] Speaker 00:
And also in response, in the patent owner's preliminary response to the petitions in both of the IPRs, Purdue never challenged Joshi's entitlement to his priority date, and they also never challenged Joshi's entitlement to its priority date, to its provisional filing date.

[00:21:47] Speaker 00:
Then, once the proceedings had already started, then and only then did Purdue say, wait a second, they have not shown that Joshi is entitled to the provisional filing date based on similarities between this, because their statement.

[00:22:05] Speaker 04:
And the board said that Joshi was not entitled to the date of the provisional filing, right?

[00:22:12] Speaker 00:
No.

[00:22:14] Speaker 00:
What the board actually said was,

[00:22:16] Speaker 00:
that O'Neill had not shown that Joshi was entitled to his provisional filing date by producing a claim chart.

[00:22:26] Speaker 00:
And that is what the board actually said.

[00:22:28] Speaker 00:
They never found that Joshi wasn't entitled to his provisional filing date.

[00:22:36] Speaker 00:
What they found was that O'Neill hadn't carried his burden.

[00:22:39] Speaker 04:
So let me see if I can understand this.

[00:22:43] Speaker 04:
The petitioner was arguing that Joshi was prior based on a theory of collateral estoppel, one, and two, on the theory that Joshi was entitled to the date of its provisional filing?

[00:22:55] Speaker 00:
Yes.

[00:22:57] Speaker 00:
They had asserted in their initial petition that Joshi was entitled to its provisional filing date, but they did so based on their expert witness's statement that the

[00:23:11] Speaker 00:
specifications of both were substantially identical.

[00:23:15] Speaker 00:
And they didn't get into some sort of detailed response.

[00:23:18] Speaker 00:
And then once the proceedings had started, in the patent owner's response, then Purdue said, oh, that expert witness's statement isn't sufficient.

[00:23:30] Speaker 00:
They need to provide more information than just some sort of conclusory statement, which I think both parties are.

[00:23:38] Speaker 04:
I'm sorry, conclusory statements about what?

[00:23:40] Speaker 00:
that Joshi and Joshi's provisional specifications were nearly identical.

[00:23:46] Speaker 00:
And they said, that isn't enough to meet their burden.

[00:23:50] Speaker 00:
And so in response, then Neil came back and said, well, you can't challenge that now.

[00:24:00] Speaker 00:
This has been a settled issue about Joshi being able to climb priority back to its provisional.

[00:24:05] Speaker 00:
That's been settled.

[00:24:07] Speaker 00:
in over 10 years of litigation between the two of us.

[00:24:10] Speaker 00:
So you can't claim that.

[00:24:13] Speaker 00:
And then at oral argument, then for the very first time, Purdue came in and said, well, you know, you look at dynamic readware, and you have to show us that all of the claims, and that was what they had asserted, that all of the claims under dynamic readware must be supported in Joshi's provisional in order for Joshi to be entitled to it.

[00:24:37] Speaker 00:
And even though they may be, they never challenged the substance of whether those claims were, nor could they, as we explained in our brief, because the claims are substantially identical.

[00:24:48] Speaker 00:
I mean, 19 are substantially identical.

[00:24:52] Speaker 00:
That their whole argument was that O'Neill hadn't met its burden.

[00:24:56] Speaker 00:
So it wasn't about the substance.

[00:24:58] Speaker 00:
It was about whether O'Neill had met its burden approving that.

[00:25:03] Speaker 02:
But the board agreed that it hadn't.

[00:25:05] Speaker 00:
The board agreed that it had not met its burden.

[00:25:08] Speaker 00:
But it wasn't an issue of, as a factual matter, there's no support.

[00:25:14] Speaker 00:
Because realistic.

[00:25:16] Speaker 02:
But Amniel never came back and said, well, even if so, Purdue has not established that it's entitled to the priority date of its purview.

[00:25:30] Speaker 00:
No, they did not do that.

[00:25:33] Speaker 04:
What would happen?

[00:25:35] Speaker 04:
here now that the petitioner has dropped out if we were to remand this.

[00:25:39] Speaker 04:
Would the proceeding continue?

[00:25:42] Speaker 00:
I'm not exactly sure how.

[00:25:45] Speaker 00:
I think the proceeding could continue as an ex parte matter.

[00:25:49] Speaker 00:
I don't know exactly how it would proceed if it came back in that particular form.

[00:25:57] Speaker 00:
If your honors want some sort of briefing on that or opinion on that,

[00:26:04] Speaker 00:
Please let the agency know, and we can advise you on that.

[00:26:09] Speaker 00:
Because that's the sticky wicket here, is that we have two parties who, until incredibly recently, never disputed each other's priority claims.

[00:26:22] Speaker 00:
One party never challenged Joshi's claim to his provisional, and the other party never challenged Purdue's priority claim to its provisional.

[00:26:34] Speaker 00:
And then all of that sort of went poof in some sort of legal maneuvering before the board.

[00:26:41] Speaker 02:
Now, you say that the first time that the issue of priority for the Purdue patent was raised explicitly vis-a-vis Joshi was at the oral argument.

[00:27:00] Speaker 00:
They raised it once the inter-parties, Purdue raised it once the inter-parties proceedings had started, but they said only their expert witnesses' statement that the specifications were identical was insufficient.

[00:27:13] Speaker 02:
Then at oral argument.

[00:27:14] Speaker 02:
That speaks to me, the Joshi.

[00:27:16] Speaker 00:
Right.

[00:27:16] Speaker 00:
And then at oral argument before the board, they said, well, you need to provide some sort of claim chart.

[00:27:23] Speaker 00:
You need to show that all the claims, and they maintain this argument again in their blue brief.

[00:27:27] Speaker 00:
You need to show us that all the claims

[00:27:30] Speaker 00:
are supported in Joshi's provisional, and you didn't meet that evidentiary burden.

[00:27:36] Speaker 00:
They never said that you couldn't meet that burden.

[00:27:38] Speaker 04:
So they raised that for the first time, an oral argument before the board.

[00:27:41] Speaker 00:
Right, and then if you look at it.

[00:27:42] Speaker 04:
And at oral argument before the board, the entitlement of the 376 to the provisional date was not raised, right?

[00:27:52] Speaker 00:
I do not recall, but I do not believe that

[00:27:56] Speaker 02:
to be so but I would have to say that everybody had assumed that up to that time that 376 got priority to the provisional date right.

[00:28:05] Speaker 00:
I when going through this case I look at it sort of like it's the goose gander principle I think both parties just up until that point we're just assuming you're not going to

[00:28:19] Speaker 00:
comment on this priority challenge, and I'm not going to comment on your priority challenge.

[00:28:23] Speaker 00:
And I wonder if there's any differences here, though.

[00:28:26] Speaker 00:
And I think it's an important difference to bear in mind.

[00:28:28] Speaker 04:
And if Joshi's entitled to its provisional filing date, then it's irrelevant as to whether 376 is entitled to the provisional filing date.

[00:28:38] Speaker 00:
Yes, that is irrelevant in that case.

[00:28:41] Speaker 00:
And it is also irrelevant.

[00:28:48] Speaker 00:
If you agree that Purdue isn't entitled to its, you know, alternatively, the board knew that its collateral estoppel findings, or I think at least suspected, were really, you know, more of an exception permitted in rare circumstances, but not your typical vanilla flavor of collateral estoppel.

[00:29:14] Speaker 00:
And so they alternatively found that Purdue hadn't met its burden.

[00:29:19] Speaker 00:
And I see that I'm over my time.

[00:29:22] Speaker 00:
Is there anything pressing?

[00:29:25] Speaker 04:
No, I think that's it.

[00:29:27] Speaker 04:
Thank you, Ms.

[00:29:28] Speaker 00:
Kelly.

[00:29:28] Speaker 00:
Thank you.

[00:29:38] Speaker 01:
Thank you.

[00:29:38] Speaker 01:
Let me see if I can clear up a few points.

[00:29:40] Speaker 01:
Let me start first with your question, Judge Bryson.

[00:29:42] Speaker 01:
We did in our reply, perhaps not as clearly as we could have been, in the middle of page 13, we responded to the PTO's argument about us not initially pointing the board to more than the one paragraph by saying that Amniel had forbid this by wholly failing to contest that the 376 patent is entitled to the benefit of its provisional application as page 13 of our reply.

[00:30:06] Speaker 02:
Quickly, what I was concerned with was whether the whole argument about Joshi, and it's entitled to the provisional, on which the whole priority issue now turns, was raised prior to the oral argument for the board.

[00:30:22] Speaker 01:
Yes, and that brings me to my next point.

[00:30:23] Speaker 01:
I can clear that up.

[00:30:25] Speaker 01:
The PTO's argument really rests on us not raising this in our preliminary response.

[00:30:30] Speaker 01:
There's no obligation to do that.

[00:30:31] Speaker 01:
But in our patent owner response,

[00:30:33] Speaker 01:
At appendix 2734 to 2735, we cited the leading cases on this, dynamic drinkware, Giacomini, and a board's decision, Ariosa.

[00:30:44] Speaker 01:
And we said, Ammiel has not met its burden of showing that Joshi is entitled to the benefit of its provisional filing date.

[00:30:52] Speaker 01:
And at the oral hearing, this is at appendix 5227 to 5230, Ammiel understood it had this burden, both of production and persuasion,

[00:31:02] Speaker 01:
And it admitted to the board it had not carried this.

[00:31:05] Speaker 01:
That's fully in accord with this court's case law.

[00:31:07] Speaker 04:
It admitted to the board that it didn't carry it?

[00:31:09] Speaker 01:
Where did it admit that?

[00:31:10] Speaker 01:
It did it.

[00:31:11] Speaker 01:
At those pages 5227 to 5230, it said, we didn't do a comparison between the Joshi provisional and the Joshi patent.

[00:31:19] Speaker 01:
It did not do any sort of.

[00:31:20] Speaker 04:
Well, that's not quite the same thing.

[00:31:22] Speaker 04:
It's saying they didn't carry their burden.

[00:31:25] Speaker 02:
Where is this?

[00:31:29] Speaker 02:
5227, did you say?

[00:31:30] Speaker 01:
Yes, 5227.

[00:31:34] Speaker 01:
This is from the board's oral hearing, and they say at, this is line, it starts on the 55227, line 12, we need to show the identity of the disclosures, and we believe we have done that, and then the judge says, but you need to show the identity of the disclosures with the claims of the Joshi Publication, correct?

[00:32:00] Speaker 01:
Ammuel's counsel agrees that that's what this court's case law requires.

[00:32:03] Speaker 01:
And then on page 5228.

[00:32:04] Speaker 04:
Well, he says, now we meet that test.

[00:32:08] Speaker 04:
So it doesn't sound like a concession to me.

[00:32:11] Speaker 01:
Where is the concession?

[00:32:12] Speaker 01:
He doesn't have anything to back that up.

[00:32:13] Speaker 04:
You aren't on that.

[00:32:15] Speaker 04:
But maybe that's a different argument.

[00:32:17] Speaker 04:
It's not a concession that they haven't met their burden.

[00:32:23] Speaker 01:
Let me then put it more crisply.

[00:32:25] Speaker 01:
They did not have any evidence.

[00:32:27] Speaker 01:
They had not submitted any evidence to the board.

[00:32:30] Speaker 04:
So you have the provisional and Joshi.

[00:32:34] Speaker 04:
And the provisional itself is evidence, isn't it?

[00:32:37] Speaker 01:
It is, Your Honor.

[00:32:40] Speaker 01:
But Amule ultimately carries both the burden of production and the burden of persuasion.

[00:32:45] Speaker 01:
And this is where I want to be very clear.

[00:32:46] Speaker 01:
There is no goose gander rule here.

[00:32:49] Speaker 01:
Because for our priority date, it was- What is it?

[00:32:52] Speaker 04:
In what respect?

[00:32:53] Speaker 04:
If we consider the Joshi reference and the Joshi provisional, in what respect does the provisional not support the Joshi reference?

[00:33:03] Speaker 01:
There are four claims in the Joshi reference that have limitations that are not recited in the Joshi provisional claims.

[00:33:11] Speaker 01:
I believe it's 17, 18, 19, 20, or thereabouts.

[00:33:17] Speaker 04:
So the argument depends entirely on the notion that dynamic drinkware

[00:33:22] Speaker 04:
requires that every single claim be supported by the provisional.

[00:33:27] Speaker 01:
No, in fact we don't need to reach that issue because our position is that Emile did not try to attempt any claim comparison between the patent and the... Put that aside.

[00:33:40] Speaker 04:
I'm asking you in what respect is Joshi not supported by the Joshi provisional and you say well there are four claims

[00:33:48] Speaker 04:
that weren't in the provisional.

[00:33:49] Speaker 04:
And I said that depends on a reading of dynamic drinkware that every claim has to be supported.

[00:33:54] Speaker 04:
Okay, put that argument to one side, okay?

[00:33:58] Speaker 04:
What other argument is there for the theory that Joshi wasn't supported by the provisional?

[00:34:07] Speaker 01:
What we would have argued if this had been presented is that Joshi has examples

[00:34:12] Speaker 01:
that are in the later reference, but not in the Joshi publication.

[00:34:17] Speaker 01:
But Ammiel never tried to establish a similarity.

[00:34:19] Speaker 01:
No, no, no.

[00:34:20] Speaker 04:
I understand your argument about, in your view, not properly raising this.

[00:34:27] Speaker 04:
But let's assume we conclude that it is properly raised, that the provisional is evidence.

[00:34:32] Speaker 04:
What's wrong with the theory that relevant claims of Joshi are supported by the provisional?

[00:34:40] Speaker 01:
because there is not specification support for claims.

[00:34:44] Speaker 01:
And you can see this in the addendum.

[00:34:46] Speaker 04:
What do you mean there's not?

[00:34:47] Speaker 04:
Some of the claims are identical.

[00:34:49] Speaker 01:
Some of them are.

[00:34:49] Speaker 04:
19 of them are identical.

[00:34:51] Speaker 01:
But some of them are not.

[00:34:53] Speaker 02:
But that goes back to the argument, the first argument, which is dynamic drinkware, in your view, requires that all of the claims be supported.

[00:35:00] Speaker 02:
If that argument is wrong, if we reject that argument as a reading of dynamic drinkware, then what's left?

[00:35:08] Speaker 01:
I would still reiterate our point that this is Amiel's burden to prove.

[00:35:12] Speaker 01:
So that's why, I mean, if this bit of hypothetical.

[00:35:14] Speaker 01:
But those are your two arguments then.

[00:35:16] Speaker 01:
Right, because they had never teed this up.

[00:35:17] Speaker 01:
So I can't point you to our response, because they had not sufficiently presented this.

[00:35:22] Speaker 01:
And the board found this.

[00:35:23] Speaker 01:
The board, of course, on this fact question, determined that Amiel had not borne its burden of proving judging.

[00:35:30] Speaker 04:
So if we conclude that the issue is properly before the board,

[00:35:36] Speaker 04:
and that the provisional is evidence, then your only argument as to why Joshi is not supported by the provisional is that it's not every single claim.

[00:35:47] Speaker 04:
Is that correct?

[00:35:48] Speaker 01:
And there are different aspects of the specification.

[00:35:51] Speaker 01:
And Amiel relied on certain aspects of the later reference for some of our claims.

[00:35:56] Speaker 04:
What do you mean, different aspects of the specification?

[00:36:00] Speaker 01:
The other aspect of considering priority is whether what AMUEL is relying on for its asserted prior art can be traced back or the other way is to say it carries forward.

[00:36:12] Speaker 04:
But if the claims are identical, what difference does it make about the specification?

[00:36:17] Speaker 04:
You mean that there's no written description support for the claims that were in the provisional?

[00:36:24] Speaker 04:
That can't be the argument because it's the same specification.

[00:36:26] Speaker 04:
What's the argument?

[00:36:28] Speaker 01:
It's not the same specification, Your Honor.

[00:36:30] Speaker 01:
There are additional examples in the later reference that Amule relied on in this proceeding that are not in the original Joshi application.

[00:36:41] Speaker 01:
Examples four, five, and six.

[00:36:42] Speaker 04:
Rely on for what purpose?

[00:36:45] Speaker 01:
As asserting that those examples could be relied on to determine that our claims were not obvious.

[00:36:51] Speaker 01:
So the ultimate merits question.

[00:36:53] Speaker 04:
I'm sorry.

[00:36:54] Speaker 04:
There are 19 claims that are the same.

[00:36:57] Speaker 04:
Are those 19 claims not supported by the provisional?

[00:37:02] Speaker 01:
Respectfully, Your Honor, I can't answer that because this issue wasn't teed up.

[00:37:05] Speaker 01:
So I'm not in a position to answer that.

[00:37:07] Speaker 01:
And there are two different inquiries going on here.

[00:37:09] Speaker 01:
The first is whether any amul show that any claim in the later reference is supported by the specification.

[00:37:17] Speaker 01:
And then the other is in the later reference, what amul is relying on, claims, specification, whatever.

[00:37:25] Speaker 01:
is what AMUEL is relying on, can it be traced back to the provisional?

[00:37:29] Speaker 01:
Because for the later reference to have the benefit of that earlier date, it had to have been disclosed then.

[00:37:37] Speaker 01:
It wouldn't otherwise be entitled to that earlier date if it only came in the later.

[00:37:42] Speaker 04:
Could you spend a minute addressing the PTO's harmless error argument?

[00:37:47] Speaker 01:
Yes, thank you.

[00:37:48] Speaker 01:
And I did want to get to that, so I appreciate that.

[00:37:50] Speaker 01:
We can agree on one thing.

[00:37:52] Speaker 01:
If Joshi is not prior art,

[00:37:54] Speaker 01:
This court doesn't need to remand.

[00:37:56] Speaker 01:
It should instead reverse, because Joshi was critical to every ground.

[00:38:00] Speaker 01:
And I can point the court specifically to Appendix 74.

[00:38:04] Speaker 04:
Suppose we were to conclude that it wasn't critical to every ground.

[00:38:07] Speaker 04:
That's the question I'm asking.

[00:38:10] Speaker 04:
If we assume that Joshi just was surplusage and it wasn't critical to any of the grounds, can we affirm?

[00:38:17] Speaker 01:
Your Honor, I think that would be overstepping the bounds of this court, because it is.

[00:38:23] Speaker 01:
Why?

[00:38:23] Speaker 01:
It is Ammiel's burden as the petitioner.

[00:38:25] Speaker 01:
Ammiel presented all three grounds as relying on Joshi.

[00:38:29] Speaker 04:
Ammiel knew that we were... Well, if one of the grounds falls out, if one of the references falls out, you can still find it obvious based on the others, right?

[00:38:38] Speaker 01:
I would point this court to a case... No, no, but try to answer my question.

[00:38:43] Speaker 01:
Okay.

[00:38:43] Speaker 01:
If one of the references falls out, no, you cannot

[00:38:47] Speaker 01:
affirm unless there's some indication in the record that that reference was cumulative or duplicative.

[00:38:53] Speaker 02:
I mean, we couldn't make a determination ourselves that a particular reference was plainly duplicative.

[00:39:00] Speaker 02:
I mean, suppose you had two different versions of the PDR as references, and one of them for some reason fell out.

[00:39:08] Speaker 02:
You can't be really arguing that under no circumstances, if a reference falls out, can we affirm.

[00:39:15] Speaker 01:
I don't mean to go that far, but on this... So how far are you going?

[00:39:19] Speaker 01:
I'm going as far as this case, because in this case, Joshi was always asserted as critical.

[00:39:25] Speaker 04:
Amiel never tried to argue... Okay, but suppose we disagree with that.

[00:39:29] Speaker 04:
Suppose we do conclude that it's cumulative and that the question of whether it's prior or it really doesn't make a difference in terms of the obviousness determination.

[00:39:38] Speaker 04:
Can we affirm?

[00:39:40] Speaker 01:
Under your hypothetical, Your Honor, premised on that you have the

[00:39:45] Speaker 01:
authority and the role to do that, I would have to agree.

[00:39:49] Speaker 01:
But I do not think that is the appropriate role, particularly when the petitioner here never, knowing that its principal prior reference was challenged as prior, never came up with a combination.

[00:40:01] Speaker 01:
And the board itself did not either.

[00:40:02] Speaker 01:
And I will note, at the oral hearing, this came up.

[00:40:06] Speaker 01:
The board was concerned about notice to us as to any sort of combination without Joshi

[00:40:12] Speaker 01:
And the board specifically asked Amiel, did you ever raise this in your reply?

[00:40:15] Speaker 01:
Because at least Purdue could have come back with a sir reply and addressed this.

[00:40:18] Speaker 01:
We had no opportunity to do that.

[00:40:20] Speaker 01:
And respectfully, that would be the same if this court were to step in and decide that here.

[00:40:26] Speaker 04:
All right.

[00:40:28] Speaker 04:
Thank you, Ms.

[00:40:29] Speaker 01:
Sweezy.

[00:40:29] Speaker 04:
Thank you, counsel.

[00:40:30] Speaker 04:
The case is submitted.