[00:00:00] Speaker 04:
please call our first case for argument.

[00:00:02] Speaker 04:
It is 20-1932 Baker Hughes Oil Field versus Hirsch Field.

[00:00:10] Speaker 04:
Please come forward.

[00:00:43] Speaker 03:
Ms.

[00:00:43] Speaker 03:
Cameron, please proceed as inertia ready.

[00:01:12] Speaker 00:
Good morning, Your Honors.

[00:01:13] Speaker 00:
May it please the Court.

[00:01:14] Speaker 00:
My name is Curie Cameron, and along with John Barr, we represent Baker Hughes.

[00:01:19] Speaker 00:
There are two issues before the Court this morning.

[00:01:23] Speaker 00:
First is the Board's determination that N of X's obviousness challenge was deficient.

[00:01:29] Speaker 00:
And second is the Board's construction of tool as a means plus function term.

[00:01:35] Speaker 00:
Turning first to the procedural issue, at institutions

[00:01:40] Speaker 00:
The board was firm and unequivocal in its decision that N of X's obviousness challenge was deficient, that it did not meet the pleading requirements.

[00:01:50] Speaker 00:
That decision should have been final.

[00:01:53] Speaker 00:
Specifically, at appendix pages 364 through 366, the board said, and I quote, it was unclear how the teachings of each particular combination of references were mapped to the tool limitation.

[00:02:07] Speaker 02:
Petitioner lumped its-

[00:02:09] Speaker 02:
Is it your position that, you know, when the board in its institution decision makes some sort of statement about the petition, that then it's bound by that, it can't later

[00:02:22] Speaker 02:
look at after it looks at the references and considers the case more, make a determination when it does, in fact, institute on those grounds that it thinks actually and looking at it again and knowing the art, it actually is clear and rule on those grounds, particularly where the petitioner, in fact, has argument.

[00:02:46] Speaker 02:
And even the patent winner has some argument in their briefing on it.

[00:02:50] Speaker 00:
not when they do so without notice.

[00:02:52] Speaker 00:
Now, we do think that because the board's statement regarding deficiency was related to the pleading requirements and that the pleadings are final at the time that the board makes its institution decision, we do think that that deficiency determination at that point has some finality.

[00:03:09] Speaker 00:
But we recognize that there have been instances in which the board has later

[00:03:15] Speaker 00:
clarified its understanding and has taken a different position but has given notice to the parties of that.

[00:03:21] Speaker 00:
In fact, the director hasn't cited a single case in which the board made an unequivocal determination that grounds were deficient and then later, at the final written decision,

[00:03:34] Speaker 00:
found that those grounds were not only sufficient, but met a preponderance of the evidence standard.

[00:03:39] Speaker 00:
Ms.

[00:03:39] Speaker 05:
Cameron, I'm not sure I'm following.

[00:03:40] Speaker 05:
Maybe I'm just not clear on what the record is here.

[00:03:44] Speaker 05:
But your preliminary response specifically broke up the petitioners' combinations into two anticipation grounds and six obviousness grounds, right?

[00:03:54] Speaker 00:
That's correct, Your Honor.

[00:03:55] Speaker 05:
And the institution decision also broke these out, right?

[00:03:59] Speaker 05:
That's correct, Your Honor.

[00:04:00] Speaker 05:
And the institution decision said it was instituting on all of them, as it must under SAS.

[00:04:07] Speaker 05:
So why weren't you on notice of what the obvious combinations were?

[00:04:13] Speaker 00:
Well, respectfully, Your Honor, because it was Baker Hughes and the board who had to sift through the arguments and try and put any semblance

[00:04:21] Speaker 00:
into an organization of what the obviousness challenges were really.

[00:04:25] Speaker 00:
The petitioner presented those obviousness grounds as one lumped together obviousness challenge with five references that could be used in what Baker Hughes thought to be six combinations potentially.

[00:04:37] Speaker 00:
But what the board said and what this court knows is that while SAS did look at statute 318 and say that it requires institution to be an all or nothing decision, it did not eradicate the pleading requirements

[00:04:51] Speaker 00:
incumbent upon petitioners to enter Farte's review proceedings.

[00:04:55] Speaker 00:
If this court found that the board could make a statement about deficiency and find it the ground.

[00:05:02] Speaker 05:
I thought we were talking about notice, just the notice portion of it.

[00:05:05] Speaker 05:
And if your response and what the board said gave you notice of all of these combinations, I'm not sure what your notice requirement is, your notice argument is.

[00:05:17] Speaker 00:
Our argument is really twofold, Your Honor.

[00:05:19] Speaker 00:
The first point of our argument is that a deficiency determination under the pleading standards at that snapshot in time when the pleadings are all that's before the board should be final.

[00:05:29] Speaker 04:
But our second point is that- But SAS made it clear it's not final because SAS has made it clear that the board is forced to institute on everything.

[00:05:40] Speaker 04:
So how do we get around the Supreme Court?

[00:05:43] Speaker 00:
You're exactly right, Your Honor, that SAS did make institution an all or nothing decision

[00:05:48] Speaker 00:
based on the court's interpretation of Section 318.

[00:05:52] Speaker 00:
But what SAS did not do is say that the pleading requirements for interparties review petitions were eradicated.

[00:06:00] Speaker 00:
In fact, the Supreme Court cited 35 USC 312, which lists the pleading requirements several times in the SAS decision.

[00:06:09] Speaker 00:
So SAS, while it made institution an all or nothing decision, did not say that grounds that are deficient at pleading

[00:06:16] Speaker 00:
can then later not be deficient at the final written decision when we know that you can't make your prima facie case in your subsequent briefing and interparties review proceedings.

[00:06:25] Speaker 04:
But compliance with 312 is not subject to judicial review.

[00:06:29] Speaker 00:
That's correct.

[00:06:30] Speaker 00:
And we are not challenging the decision under 312.

[00:06:33] Speaker 00:
What we're here before this court to say is that when the board found under 312 that the grounds were deficient, that should have been final.

[00:06:41] Speaker 00:
The parties, especially Baker Hughes, relied on the board's unequivocal determination.

[00:06:46] Speaker 04:
When you didn't rely on it, you then spoke to those combinations in your subsequent pleadings.

[00:06:52] Speaker 04:
And you shouldn't have relied on it, because while the board said there were deficiencies in the way it was argued, it went on to say it was nonetheless instituting on those specific grounds, and it enumerated them.

[00:07:04] Speaker 04:
And then your response actually responded to those grounds.

[00:07:08] Speaker 04:
Didn't your briefing respond to those grounds?

[00:07:10] Speaker 00:
Well, respectfully, Your Honor, our briefing responded to those grounds and emphasized the procedural failures under the pleading requirements and confirmed what the board had found that, and elaborated on what the board had found, that the petitioner had not put forward those grounds with any particularity.

[00:07:26] Speaker 00:
They had not said how specific combinations of references... Didn't you also make substantive arguments with regard to those grounds?

[00:07:34] Speaker 00:
We made substantive arguments in the sense that we relied on the same substantive grounds that related to the references that were also being used in Petitioner's anticipation challenge, and at times addressed the combinations generally, but mostly relied upon the board's determination that procedurally Petitioner had failed.

[00:07:57] Speaker 00:
And Baker Hughes did so reasonably.

[00:08:00] Speaker 00:
The Patent Trial and Appeal Board's own guidance says that the words they use in their institution decision should be relied on by the parties to govern how they address the grounds in their briefing and throughout the proceedings.

[00:08:13] Speaker 05:
So what is your argument precisely?

[00:08:14] Speaker 05:
Is your argument that they should have never gone there at all?

[00:08:18] Speaker 05:
Or is your argument that, yeah, you did kind of address them, but since you weren't sure whether you needed to, you didn't have a fulsome opportunity to address them?

[00:08:29] Speaker 05:
Where are we going with this?

[00:08:30] Speaker 00:
Our argument is twofold, Your Honor.

[00:08:32] Speaker 00:
It's first that because the board found them to be deficient, and SAS didn't change the pleading requirements, that the board should not then have substantively reviewed those grounds.

[00:08:42] Speaker 05:
But where do we have the authority to review that determination?

[00:08:47] Speaker 05:
You're saying that we should say, board, you shouldn't have instituted on this, or you maybe had to institute, but you shouldn't have decided these, and you should have just dismissed them.

[00:09:00] Speaker 00:
I think that's precisely the point, Your Honor, that we're not challenging the decision itself.

[00:09:05] Speaker 00:
We're asking this Court to hold the Board accountable to its words.

[00:09:09] Speaker 00:
The Board didn't have to say that Petitioner's Obviousness Challenge was deficient.

[00:09:15] Speaker 00:
Well, but the Board is always permitted.

[00:09:17] Speaker 04:
It's never bound by what it says in an institution decision.

[00:09:20] Speaker 04:
It's always permitted upon further briefing to change its mind about what it held in the institution decision.

[00:09:28] Speaker 04:
So you would like some rule that holds them bound to whatever they say in the institution decision.

[00:09:33] Speaker 04:
That has never been the case.

[00:09:36] Speaker 00:
And that's not what we're asking this court to do.

[00:09:38] Speaker 00:
What we're asking this court to say is that at a minimum, if the board is going to take an inconsistent position, a wholly inconsistent position, later in the proceeding, that it give the parties notice as it's required to do under the Administrative Procedure Act.

[00:09:54] Speaker 00:
and under due process.

[00:09:56] Speaker 04:
Well, arguably the board took that very inconsistent position in the document itself, in the institution decision, because while they say it's unclear how to understand petitioners' specific arguments, it says despite the deficiency in petitioners' obviousness showing for the claims we institute, one claims 1 through 23 as obvious based on head and

[00:10:19] Speaker 04:
It goes through every single one of them and says, even though there's got some deficiencies, we're still instituting on all of these.

[00:10:32] Speaker 04:
So why didn't that put you on notice?

[00:10:35] Speaker 00:
Well, we know that the board had to institute all grounds under SAS.

[00:10:40] Speaker 00:
But that didn't mean that the board was thereby putting Baker Hughes on notice, that when it found grounds to be deficient under a likelihood of success standard,

[00:10:49] Speaker 00:
institution that it was going to take a wholly inconsistent position and find those grounds to not only be sufficient under likelihood of success but to meet a preponderance of the evidence standard.

[00:11:01] Speaker 00:
At a minimum all we're asking this court to say is that the board should have given the parties notice but it didn't and it was not for lack of effort on Baker Hughes's part to get that clarification.

[00:11:11] Speaker 04:
Do you have any cases that you can point to that you can analogize between

[00:11:16] Speaker 04:
the facts of this case and those cases where we've held that what the board did in the institution decision and then when they did something different in the final decision, it wasn't sufficient notice.

[00:11:30] Speaker 04:
Do you have any particular cases that you think strongly support what you're asking for?

[00:11:34] Speaker 00:
Frankly, Your Honor, no.

[00:11:37] Speaker 00:
We looked hard to see if there were any cases that were postured like this one where at institution, the board made an unequivocal statement

[00:11:44] Speaker 00:
that the pleading of certain grounds was deficient and then found those grounds to not be deficient and to meet the preponderance of the evidence standard at final written decision.

[00:11:54] Speaker 00:
We do have several cases that have been before this court where this court has said that the petition is what it is, that you cannot make your prima facie case later on in the pleadings.

[00:12:05] Speaker 00:
Now to be clear and to be fair and frank with this court, this morning the director a couple of hours ago sent over one case that it has identified post briefing.

[00:12:14] Speaker 00:
where the PTAB in the institution decision found that one element of one anticipation reference was not met, and then in the final written decision found that that element of the claims was satisfied.

[00:12:29] Speaker 00:
But that's a wholly different case than the case before this court.

[00:12:33] Speaker 00:
The PTAB in that case did not say, these grounds are deficient.

[00:12:38] Speaker 00:
We can't even sort through them and make out what their combinations and proof of those combinations is.

[00:12:44] Speaker 00:
They didn't say any of that.

[00:12:46] Speaker 04:
Can I ask a procedural question?

[00:12:48] Speaker 04:
I have absolutely no idea what you're talking about.

[00:12:50] Speaker 04:
Was something submitted to the court?

[00:12:52] Speaker 00:
This morning, the director served by email on us as Baker Hughes Council an additional PTAB proceeding that it identified.

[00:13:00] Speaker 04:
To your knowledge, was this provided to the court?

[00:13:02] Speaker 04:
I'm not sure because I'm not aware of it and I just pinged my clerk and he says this is news to him he doesn't see any 28 jail itters having been filed so okay I'm sorry please proceed could I ask you a question about claim construction quickly before your time runs out I would like to know

[00:13:19] Speaker 02:
How does your interpretation of tool impact either the anticipation or obviousness issues in this case?

[00:13:26] Speaker 02:
Your interpretation looks pretty broad.

[00:13:28] Speaker 02:
I'm just having a hard time understanding how your proposed interpretation would alter the result.

[00:13:36] Speaker 00:
Sure.

[00:13:38] Speaker 00:
Our interpretation of the claim term tool is supported by not only the specification.

[00:13:43] Speaker 02:
That's not my question.

[00:13:44] Speaker 02:
My question is, if you offer, you ask us to review a claim construction, it has to actually have meaning in the case in which it's argued.

[00:13:57] Speaker 02:
And so how does your, for example, if we were to adopt your claim construction, how would that impact the obviousness and anticipation issues before the board?

[00:14:08] Speaker 00:
Claims 1 through 23 would therefore be patentable if this court agrees with our construction.

[00:14:14] Speaker 00:
That's because the experts in this party, in this case uniquely, agreed that tool has a meaning to persons of ordinary skill in the arc.

[00:14:23] Speaker 00:
The director takes issue with the fact that they were talking about down hole tool and the word down hole is not before the word tool in our claim, but that ignores Markman versus Westview, which says we can't read the claims in a vacuum.

[00:14:35] Speaker 00:
But both experts agree that downhole tool has a meaning to persons of ordinary skill in the art.

[00:14:41] Speaker 02:
And your proffered construction has the word downhole tool, and it's your position that the prior art doesn't teach a downhole tool.

[00:14:47] Speaker 00:
That's correct.

[00:14:48] Speaker 00:
And to be clear, even petitioners expert in the IPR agreed that the prior art references that have been cited do not teach tools as would be understood by persons of ordinary skill in the art using that plain and ordinary meaning.

[00:15:05] Speaker 03:
Okay, thank you, Council.

[00:15:06] Speaker 03:
Let's save the rest of your time for bottle.

[00:15:08] Speaker 03:
Thank you.

[00:15:09] Speaker 03:
Let's hear from Mr. Ayers.

[00:15:36] Speaker 01:
May it please the Court, Peter Ayers on behalf of the Office Acting Director, Andrew Hirschfeld.

[00:15:43] Speaker 01:
Let me first address your point, Your Honor, about the Rule 27J letter.

[00:15:49] Speaker 01:
Obviously, these facts are somewhat unique in this case.

[00:15:52] Speaker 01:
And they had, Baker and Hughes had asked for a case, an example where the board had changed positions.

[00:16:03] Speaker 01:
Found something deficient in the Institution asked for a case in their briefing well to identify a case where this particular circumstance had occurred where the board had said something was deficient at institution and then found its

[00:16:25] Speaker 01:
nonetheless unpatentable on the higher standard at final written decision and it was literally just through my research that I found a case from the board where as a counselor points out that the board instituted on an anticipation ground

[00:16:44] Speaker 01:
even though it found an element missing.

[00:16:47] Speaker 01:
But then, in the final written decision, found that.

[00:16:50] Speaker 05:
No, no.

[00:16:50] Speaker 05:
But I think what Chief Judge Moore and I, too, was confused about is, did you submit that to the court?

[00:16:56] Speaker 01:
I did not, Your Honor.

[00:16:57] Speaker 05:
So you just gave it to the other side for purposes?

[00:17:00] Speaker 01:
Yes, I did not have an opportunity this morning to either print it out and bring it here personally.

[00:17:05] Speaker 01:
And I won't refer to that case and rely on it.

[00:17:11] Speaker 01:
Passed it along to to counsel in the case that That issue didn't come up.

[00:17:16] Speaker 01:
So my apologies.

[00:17:17] Speaker 01:
I'll be happy to file a rule 27 J letter with that case site if 28 J letter, I'm sorry

[00:17:27] Speaker 01:
So with that, let me address both the two issues that are before this.

[00:17:32] Speaker 05:
Well, can I start off by asking you a question about the discussion we were having with your friend?

[00:17:37] Speaker 01:
Yes.

[00:17:37] Speaker 05:
And I understand you made clear you've got to institute this no matter what under SAS.

[00:17:43] Speaker 05:
And that may have been enough to put them on notice.

[00:17:47] Speaker 05:
But there's one statement that the board made in its institution decision that I'm kind of confused by.

[00:17:54] Speaker 05:
It says, quote, petitioner is essentially inviting us to sift through its arguments and evidence in order to piece together its best arguments for each of the proposed combinations of references, which we declined to do.

[00:18:10] Speaker 05:
So the board was declining to sift through the arguments and come up with anything.

[00:18:18] Speaker 05:
But it was expecting the patent owner to do that.

[00:18:23] Speaker 05:
I mean, wasn't the patent owner, in essence, required to do what the board itself said it was declining to do?

[00:18:31] Speaker 01:
Yes, Your Honor.

[00:18:33] Speaker 01:
I think you have to step back and look at the patent owner's preliminary response to put that board statement in context.

[00:18:41] Speaker 01:
The patent owner had argued in its preliminary

[00:18:44] Speaker 01:
response that the board should not institute because the grounds that were presented were both horizontally and vertically redundant.

[00:18:54] Speaker 01:
And so they well understood the specific combinations as you pointed out.

[00:18:59] Speaker 01:
They listed them and it's explicitly in their preliminary patented response and then argued that there's really no distinction between them and the petitioner doesn't make any distinction between one

[00:19:13] Speaker 01:
one combination or another.

[00:19:15] Speaker 01:
And the board shouldn't have to go through in its institution decision and sort through which is the best argument of the six.

[00:19:26] Speaker 01:
So there was never any question about whether or not the patent owner understood the combinations and the issues that were presented.

[00:19:36] Speaker 01:
by this combination.

[00:19:37] Speaker 01:
And that's really the critical question, as this court has said, that compliance with the APA in due process is whether a party received adequate notice of the issues that would be considered and ultimately resolved at the hearing.

[00:19:52] Speaker 01:
That's Genzyme.

[00:19:54] Speaker 04:
I don't understand your response to Judge Post.

[00:19:57] Speaker 04:
I'm on the patent owner's response.

[00:19:59] Speaker 04:
I'm on appendix page 312.

[00:20:01] Speaker 04:
This is their preliminary response that you just referred to.

[00:20:05] Speaker 04:
I'm on page 312 of the appendix, and their entire analysis with regard to the eight obviousness challenges seems quite clearly that these, I'll just read from it, you know.

[00:20:20] Speaker 04:
Redundant challenges are those that assert different references against the same claims and between which petitioner has made no distinctions.

[00:20:28] Speaker 04:
These include challenges in which different sets of references are applied to the same claims as distinct and separate alternatives.

[00:20:35] Speaker 04:
Such challenges are horizontally redundant absent an explanation as to why one reference more closely satisfies a claim limitation in some respect than the other references.

[00:20:46] Speaker 04:
What they're complaining about is exactly what the board found

[00:20:50] Speaker 04:
which is the petition just alleged eight possible combinations without ever explaining in any detail how you could find particular elements satisfied by any of the particular references.

[00:21:03] Speaker 04:
It was just like I said, hey, this is obviousness in light of this, that and the other thing without any analysis whatsoever as to how those particular references read on particular claim limitations.

[00:21:16] Speaker 04:
So I understand their response not to just be these are redundant, but rather they're redundant in that all eight of them just make blanket assertions with no level of detail that allows us to understand and respond to how these combinations specifically read on the claims.

[00:21:37] Speaker 04:
And that's what I understood the board to pretty much agree exactly with, especially in the sentence to the Judge Prost

[00:21:46] Speaker 04:
Read about petitioners is essentially inviting us to sit through its arguments and piece together arguments for each of these combinations Because petitioner didn't do it themselves and the board said we declined to do so So i'm in the same place.

[00:21:59] Speaker 04:
Judge prost is I really want to know from you Why in the world the patent owner should have been on notice?

[00:22:06] Speaker 04:
That it had to do Exactly what the board declined to do

[00:22:12] Speaker 04:
which it had itself argued to the board, the board should decline to do because there was no specificity in the arguments as made in the petition.

[00:22:21] Speaker 04:
Why should the patent owner have known it was required thereafter to give that degree of specificity that the petition itself did not provide?

[00:22:31] Speaker 01:
a couple responses, Your Honor.

[00:22:33] Speaker 01:
First, I think it's important to understand that the petition's obviousness ground built upon the two anticipation grounds.

[00:22:42] Speaker 01:
So clearly, and there's no dispute, that the mapping of the claims 1, 7, through 23 were specific enough with respect to both head and star.

[00:22:56] Speaker 01:
The only new

[00:22:59] Speaker 01:
The only new primary reference that was introduced in the obviousness ground was Stout's.

[00:23:04] Speaker 01:
And there too, they acknowledged the structural elements that the claims were mapped to.

[00:23:11] Speaker 01:
So I think, again, if we look at their preliminary response and their patented response, they clearly were on notice of how the claims were mapped to that third primary reference.

[00:23:22] Speaker 01:
The only question then is, how were those secondary references used?

[00:23:27] Speaker 01:
And again, they were quite clear in their preliminary patented response.

[00:23:32] Speaker 01:
This is their quote from them.

[00:23:34] Speaker 01:
Zoo and Homes, which were the two primary references,

[00:23:41] Speaker 01:
are each relied on as disclosing the claim disintegrable material.

[00:23:45] Speaker 01:
Those are the specific limitations presented just in the deep pending claims two through six.

[00:23:51] Speaker 04:
And with respect to zoo in particular, I think that- Okay, so now you're suggesting contrary to the board's own institution decision that the petition itself was crystal clear and absolutely put the patentee on notice.

[00:24:06] Speaker 04:
And so as you stand here today, are you saying

[00:24:09] Speaker 04:
Everything the board said about the deficiencies it found in the petition in terms of whether it or a patent owner could understand exactly how those eight obviousness combinations could come together to render the claims obvious.

[00:24:25] Speaker 04:
Are you now as you stand here today representing the agency saying the board was completely wrong when it reached that conclusion?

[00:24:33] Speaker 04:
Because your personal review of the documents demonstrates that it was discernible.

[00:24:39] Speaker 01:
No, Your Honor.

[00:24:41] Speaker 01:
I think different minds could come to different conclusions about the specificity of that obviousness grounds.

[00:24:49] Speaker 01:
And we're not endorsing what the petitioner did in this case of combining six combinations in a single grant.

[00:24:56] Speaker 01:
Certainly, it would have been better for them to break those out individually.

[00:25:01] Speaker 01:
But I don't think it is improper for the board

[00:25:08] Speaker 01:
criticize the petition and thereby perhaps even focus the trial even more on the issues in that which is I think what the what the petitioner did in reply they came back to you read the institution decision as

[00:25:24] Speaker 04:
focusing the patent team more clearly on the obviousness of the combinations?

[00:25:29] Speaker 04:
You read this decision as giving them notice that this is exactly what they should be focusing on?

[00:25:34] Speaker 01:
No, not at all, Your Honor.

[00:25:36] Speaker 04:
Don't you think it's fair to say if anything, it gave them reason to believe they didn't need to focus on these?

[00:25:42] Speaker 01:
See, I don't, Your Honor, for the points that have already been made, given the language in the institution that says, despite these deficiencies, we're instituting.

[00:25:50] Speaker 01:
And that ain't.

[00:25:51] Speaker 04:
Why do they say despite these deficiencies, we're instituting?

[00:25:54] Speaker 04:
And there's a footnote to SAS that says, because we don't have a choice.

[00:25:58] Speaker 01:
Right.

[00:25:59] Speaker 01:
And so I think if, and I'm not.

[00:26:04] Speaker 04:
I guess here's what it comes down to for me, Mr. Harris.

[00:26:06] Speaker 04:
What it comes down to for me is not that the board necessarily got any of this wrong,

[00:26:12] Speaker 04:
At a minimum, wouldn't it be fairer to a patent owner after the board in an institution decision says, as alleged in the petition, this thing is completely deficient?

[00:26:24] Speaker 04:
We have no choice but to institute on everything because of SAS.

[00:26:28] Speaker 04:
But doesn't that convey to the average person that they don't need to worry about those grounds necessarily, and they should focus all of their energy on the other things?

[00:26:38] Speaker 04:
And if the board at some point changes its mind

[00:26:41] Speaker 04:
wouldn't you, if you were the patentee, wouldn't you like a heads up about that?

[00:26:45] Speaker 04:
I mean, wouldn't it seem like that would be a better way for this to work, is that the board would then say, you know, we said all that stuff about it being deficient, and we may have given you the impression you'll have to look at it.

[00:26:57] Speaker 04:
But now that the situation's evolved, we're starting to see these combinations and how they come together.

[00:27:02] Speaker 04:
I mean, what is the harm in instituting into this process

[00:27:08] Speaker 04:
the obligation on the board when it has said something as strong as it did in this institution decision to follow up with notice to the advocate on the other side if it has changed its mind.

[00:27:23] Speaker 01:
I guess I would, first of all, disagree that the board changed its mind.

[00:27:27] Speaker 01:
It did institute on these specific grounds, agree they did criticize the petition's presentation.

[00:27:35] Speaker 01:
And to the extent that there was any concern about the clarity of those grounds, I think the burden is on the petitioner to come forward and clarify those, which

[00:27:48] Speaker 01:
They did.

[00:27:49] Speaker 01:
And the limit on that, though, and that this court has made clear, is that you can't introduce new issues or new evidence.

[00:27:57] Speaker 01:
And they did not.

[00:27:59] Speaker 01:
They just clarified.

[00:28:00] Speaker 01:
They marched through what they had originally presented in their petition.

[00:28:05] Speaker 05:
So at some point, there wasn't.

[00:28:07] Speaker 05:
I mean, they filed a response.

[00:28:09] Speaker 05:
There was a sir reply here.

[00:28:10] Speaker 05:
And I guess there was a fairly robust oral argument which discussed some of these issues.

[00:28:19] Speaker 05:
even if the process maybe was confusing at the beginning, it was cured.

[00:28:24] Speaker 05:
Yes, I think that's fair.

[00:28:26] Speaker 01:
I think that's fair, Your Honor.

[00:28:28] Speaker 01:
And this court made clear in Waseka Continental, 853 F.

[00:28:35] Speaker 01:
3rd, 1286, there's nothing improper about a petitioner, quote, explaining how the original petition was correct.

[00:28:48] Speaker 01:
And we believe that's what happened.

[00:28:50] Speaker 05:
But do you understand, as I understand,

[00:28:53] Speaker 05:
the other side's argument, which was effectively clarified this morning.

[00:28:58] Speaker 05:
They're not saying, obviously, under SAS, they're not saying that because we know that the board wasn't going to institute on these, and SAS made them do it, we can ignore all of that stuff, because we know they don't think that's worthy.

[00:29:12] Speaker 05:
That's not this argument.

[00:29:14] Speaker 05:
Their argument is that when the board is a pleading decision,

[00:29:18] Speaker 05:
says it wasn't pled correctly, that they can rely on.

[00:29:26] Speaker 05:
Isn't that whether the distinction is outcome-determined in this case, that's an important distinction, is it not?

[00:29:34] Speaker 01:
We agree that that is part of the totality of the circumstances that go into adequate notice of the issues joined.

[00:29:42] Speaker 01:
But I think you have to look at,

[00:29:46] Speaker 01:
At the institution decision itself, you have to look at the course of the conduct in these cases.

[00:29:51] Speaker 01:
As Gensheim makes clear that this court pointed to

[00:29:56] Speaker 01:
the fact that the patent owner itself identified certain prior references that the board relied on.

[00:30:02] Speaker 01:
So you can look to the actions of the parties to determine whether or not the party had adequate notice and an opportunity to respond.

[00:30:13] Speaker 01:
And we believe that they did in this case.

[00:30:17] Speaker 01:
If you'd like, with my remaining time, I only have 15 seconds.

[00:30:20] Speaker 01:
I'm happy to answer any questions about the claim construction issue.

[00:30:24] Speaker 01:
But those two are independent, and the process argument only really affects

[00:30:34] Speaker 01:
The dependent claims two through six, which are obviousness only, that the board, to the extent this court affirms the claim construction, it can affirm the anticipation of one, claims one, seven through 23, regardless.

[00:30:54] Speaker 04:
OK, thank you, Mr. Ayers.

[00:30:55] Speaker 04:
Thank you.

[00:30:56] Speaker 04:
Ms.

[00:30:57] Speaker 04:
Cameron will restore two minutes.

[00:31:17] Speaker 00:
Thank you, Your Honors.

[00:31:18] Speaker 00:
Just briefly on rebuttal, I think it's important for this court to note that the mapping that the director spoke of in its argument happened in the petitioner's reply brief.

[00:31:31] Speaker 00:
In response to that reply brief, Baker Hughes again asked the board if it was going to consider what those obviousness challenges that it found to be deficient, even after Baker Hughes did petitioners work for it,

[00:31:45] Speaker 00:
They give the party's notice it was going to do so specifically in this in Baker Hughes certified appendix 649 after that mapping was done the board did not come back after that and change Yes The board never replied to that request in Baker Hughes sir replied

[00:32:09] Speaker 00:
Again, the petitioner, I'm sorry, again, Baker Hughes asked the board whether it was going to consider the obviousness grounds that it found to be deficient before the oral hearing.

[00:32:20] Speaker 04:
Hold on for a sec.

[00:32:21] Speaker 04:
So you're, at page 649, I see where you say, should the board nevertheless choose to entertain petitioner's new Stout-Zeu theory.

[00:32:33] Speaker 04:
Patent requests the opportunity to address it including new evidence that was not permitted in a sir apply.

[00:32:38] Speaker 04:
So if this had been flushed out I agree with you that their reply flushes it out in a way that their petition never did.

[00:32:49] Speaker 04:
So if are you saying then that you made the argument very clearly preserved to the board that if you're going to consider these new flushed out arguments

[00:32:59] Speaker 04:
we not only wanted a chance to respond to them because it seems like a syrup like you can't respond right but we want to introduce evidence which we could have done it in the beginning that's correct we could have expert more clearly

[00:33:15] Speaker 00:
understand and expound about the particular references and particular combinations that were first introduced in the petitioner's reply.

[00:33:24] Speaker 00:
But we didn't have the opportunity to do that in our surreply where surreply evidence wasn't permitted.

[00:33:30] Speaker 04:
Because you get that a surreply does give you a chance to respond, right?

[00:33:33] Speaker 04:
Like, so you are having an opportunity to make arguments, maybe not as fulsome as you'd like given page limit requirements and otherwise, but you're saying you would have introduced additional evidence.

[00:33:44] Speaker 00:
We would have liked the opportunity to do so, Your Honor, yet.

[00:33:47] Speaker 05:
Was this just to clarify?

[00:33:49] Speaker 05:
I'm not as familiar with the record as you are.

[00:33:51] Speaker 05:
Is the petitioner's new stout zoo theory, was that one that was embraced by the board at the end?

[00:34:00] Speaker 00:
Embraced by the board in its final written decision, Your Honor?

[00:34:03] Speaker 00:
Yes, it was, Your Honor.

[00:34:04] Speaker 02:
And when you say new evidence, are you talking about expert testimony?

[00:34:09] Speaker 02:
What specifically?

[00:34:11] Speaker 02:
I mean, it can be with generality, but what are you referring to?

[00:34:14] Speaker 00:
Certainly, we would have liked the opportunity to have our expert offer opinions about those particular new mappings that were offered by the petitioner and any other evidence.

[00:34:23] Speaker 00:
There's definitely a lot of evidence in the art that may have shown why these combinations were not susceptible to being combined, why it wouldn't be obvious to a person of ordinary skill in the art to do that.

[00:34:34] Speaker 00:
But we didn't have that chance.

[00:34:36] Speaker 00:
And we relied on what the board stated unequivocally, but it didn't have to state that the grounds were deficient.

[00:34:42] Speaker 00:
As this court recognized just in July in Qualcomm versus Intel, patent owners are afforded a limited number of words and a limited number of times to protect their patent rights from being stripped away.

[00:34:54] Speaker 00:
In this case, Baker Hughes had no notice.

[00:34:57] Speaker 00:
that those rights would potentially be stripped away on grounds that were not sufficiently pled at the pleading requirement.

[00:35:04] Speaker 00:
Thank you, Your Honor.

[00:35:05] Speaker 05:
Well, I just want to clarify, because I'm looking at the beginning.

[00:35:09] Speaker 05:
I mean, you're making a lot of arguments.

[00:35:11] Speaker 05:
And the main argument is really the argument you made earlier today, that they shouldn't be doing this in reply.

[00:35:21] Speaker 05:
What you're arguing now is different than that, right?

[00:35:26] Speaker 05:
That even though, even if they did it in reply, there was stuff that we should have had the right to introduce new evidence.

[00:35:33] Speaker 05:
That's only found in that one sentence that Chief Judge Moore pointed out, right?

[00:35:38] Speaker 00:
That's correct.

[00:35:39] Speaker 00:
We do think that the board erred first, and when they said the grounds were deficient, that should have been final, that the board again erred by not

[00:35:48] Speaker 00:
giving notice to Baker Hughes that it should substantively respond to these grounds and then it also erred in permitting the petitioner and of x

[00:35:57] Speaker 00:
to flesh out these challenges that were not sufficiently pleaded the pleading requirement.

[00:36:02] Speaker 05:
Can I ask you just, your friend on the other side clarified in terms of what claims are affected by what.

[00:36:08] Speaker 00:
Yes.

[00:36:09] Speaker 05:
So if we're talking about exclusively this one combination.

[00:36:13] Speaker 05:
Yes.

[00:36:14] Speaker 05:
Which claims, I guess it's just the dependent claims.

[00:36:17] Speaker 05:
Claims two through six.

[00:36:18] Speaker 05:
The new stout zoo theory.

[00:36:20] Speaker 05:
What claims were affected by that?

[00:36:22] Speaker 00:
Claims two through six, importantly for this court, is claims two through six.

[00:36:26] Speaker 00:
Because claims two through six were only challenged under those obviousness grounds.

[00:36:31] Speaker 00:
Petitioner didn't proffer any anticipation challenges to those claims.

[00:36:35] Speaker 00:
So if the board's determination that they were deficient had been upheld, then claims two through six should be patentable.

[00:36:45] Speaker 03:
Any further questions?

[00:36:46] Speaker 03:
Okay.

[00:36:46] Speaker 03:
Thank you, Ms.

[00:36:47] Speaker 04:
Cameron.

[00:36:47] Speaker 04:
Thank you.

[00:36:48] Speaker 04:
Thank both counsel for their argument in this case.

[00:36:49] Speaker 04:
The case is taken under submission.