[00:00:04] Speaker 00: Next case for argument is 20-2163, Hunting Titan versus Dyna Energetics Europe. [00:00:42] Speaker 00: Mr. Saunders, whenever you're ready. [00:01:06] Speaker 04: May it please the court, my name is Jason Saunders and I'm here representing Huntington. [00:01:11] Speaker 04: I'd like to start with a discussion of the presidential opinion panel decision on the proposed amended claims. [00:01:17] Speaker 04: I think the first thing for us to remember here is these amended claims added only three elements to the original claims. [00:01:24] Speaker 04: A perforating gun housing, a carrying device for shape charges, and where the detonator assembly is entirely within the perforating gun housing. [00:01:33] Speaker 04: I think it's critical for us to realize [00:01:35] Speaker 05: Can I just, our time is short and I asked too many questions probably, but just to clarify this, the board found the new amended claims were unpatentable over the prior arc. [00:01:49] Speaker 05: The POP, did they ever say the board's reasoning is wrong on that point or just that the board shouldn't have reached those arguments and that the arguments proposed by you all were wrong? [00:02:04] Speaker 04: That is precisely correct, John. [00:02:06] Speaker 05: Right. [00:02:06] Speaker 05: So the board, as a whole, the POP panel never said these claims are patentable over Schoracher. [00:02:14] Speaker 05: They're just not unpatentable over the arguments advanced by you. [00:02:18] Speaker 04: That's correct. [00:02:19] Speaker 04: And we believe, I think you've properly identified the general issue here with the POP decision is that [00:02:28] Speaker 04: is whether the board can make a decision on patentability of amended claims. [00:02:32] Speaker 05: Again, I get that's your argument, sorry to cut you short, but here's where I'm struggling with this whole case, which is I read through the POP decision and its general principles of this is when the board can do it, this is when the board doesn't have to do it. [00:02:46] Speaker 05: I think you probably would agree there's no requirement to do a scorcher look at this to determine the new claims and that the board has discretion and that the board can place limitations on that discretion. [00:02:58] Speaker 05: My question is, is this really just a case about whether the POP panel abused its discretion in not applying this newly announced rule? [00:03:08] Speaker 05: Because it seems like there's a portion of it that's directly applicable here, which is, even if the petitioner didn't raise the argument, where the record readily and persuasively establishes that the substitute claims are unpatentable for the same reasons corresponding to the original claims. [00:03:25] Speaker 05: And it seems like the board said the original claims are unpatentable over Scheracher, and your new amendments don't add anything to get you out of Scheracher. [00:03:37] Speaker 05: Now, why you didn't make that argument is probably a failing on your part, and whether you get saved for that is a different story. [00:03:44] Speaker 05: But that seems to specifically address that. [00:03:48] Speaker 05: that last exception, and I know this is better directed to your friend sitting there, but why did the POP panel not apply that exception that the record readily discloses that Sherlocker still discloses these attempted new claim limitations? [00:04:08] Speaker 04: I personally don't understand why they didn't apply that. [00:04:10] Speaker 04: I think this case is exactly that. [00:04:14] Speaker 04: rare circumstance that the POP identified. [00:04:17] Speaker 00: It's very nice that you say that now, but I didn't see that argument made anywhere in the briefs. [00:04:22] Speaker 00: Your argument was all global. [00:04:23] Speaker 00: They have to look at it in every case. [00:04:26] Speaker 00: You didn't take on, alternatively, even if the rule is legit, we fall within the rule and they abuse their discretion in that regard. [00:04:36] Speaker 00: I didn't see you make any argument that sounded like that in the briefs, so tell me where it is if I'm missing something. [00:04:43] Speaker 04: I can't cite to the exact page of the brief, but I think that's the general principle we argued that aqua products in Nike require that they look at the entirety of the record. [00:04:54] Speaker 05: No, but see, this is the problem. [00:04:56] Speaker 05: Nobody disagrees with that. [00:04:57] Speaker 05: The board didn't say that they don't have to look at the entirety of the record. [00:05:02] Speaker 05: They said they attempted to follow Nike. [00:05:05] Speaker 05: And even if they had said, we will never look outside the petitioner's arguments in response to the motion and amend, even if it's obvious on the record that the new limitations don't make it patentable. [00:05:18] Speaker 05: If they'd said that, they might be in trouble. [00:05:20] Speaker 05: But they have this loophole that says, if it's readily ascertainable from the record, and it's not patentable over the prior arguments, [00:05:30] Speaker 05: then they can do that without any argument from you and whatsoever. [00:05:40] Speaker 05: Again, I didn't see anything in your blue brief either about this being an abuse of discretion, which is a higher standard. [00:05:45] Speaker 05: I know you don't want to argue it, but that seems to be the problem here. [00:05:49] Speaker 05: It might be a substantial evidence case too, but whatever. [00:05:53] Speaker 05: It's a deferential center. [00:05:54] Speaker 05: But is it anywhere in your blue brief that even if the rule is correct, [00:05:59] Speaker 05: that they still misapplied it? [00:06:02] Speaker 04: I don't recall if that's specifically in our brief, Your Honor. [00:06:06] Speaker 00: Well, what I recall, and maybe I'm wrong, is that the other side, both green and red, made the argument that you forfeit it, said in passing that you forfeited any argument about this. [00:06:16] Speaker 00: And I didn't recall seeing in gray that you came up and said, no, we didn't. [00:06:21] Speaker 00: No, we didn't. [00:06:21] Speaker 00: This is our argument. [00:06:23] Speaker 04: Well, I think [00:06:24] Speaker 04: Frankly, it doesn't really matter since the board didn't address the evidence, or I'm sorry, the POP didn't address the evidence and didn't make a finding of patentability based on the entirety of the record. [00:06:36] Speaker 04: They skipped that entirely. [00:06:44] Speaker 00: And, I mean, as this court said... Isn't that, I mean, I guess the problem for you is I'm kind of seeing that as a different argument. [00:06:51] Speaker 00: That argument that you clearly made concerns the board's obligation to consider the entirety of the record, but not whether the specific evidence of anticipation was readily identifiable or persuasive. [00:07:04] Speaker 00: And it's a big deal, because under the first part, we'd have to strike down the whole red, or the pop. [00:07:12] Speaker 00: Under the second argument, the pop lives. [00:07:14] Speaker 00: It's just a matter of missupplying it. [00:07:16] Speaker 00: So that really is a big deal in terms of what we're looking at here. [00:07:21] Speaker 04: Well, I think we're not looking to strike down the presidential opinion panel as an entity. [00:07:30] Speaker 04: What we're saying is their decision in this particular case was wrong. [00:07:34] Speaker 04: Their decision in this case was based on willfully blinding themselves to the evidence. [00:07:39] Speaker 04: And I think we did say in our brief fairly clearly that the board had already identified that evidence and found it persuasive. [00:07:47] Speaker 04: So the idea that somehow now later it's not readily identifiable and persuasive enough is an abuse of discretion and it is arbitrary and capricious because they've refused to look at that evidence. [00:08:00] Speaker 04: They refuse to address the evidence. [00:08:02] Speaker 04: Instead, contrary to aquaproducts and Nike, they made a decision based solely on an opposition to a motion to amend and that's improper. [00:08:16] Speaker 04: And this court found in Nike expressly that the board should not be constrained to arguments and theories raised in the petition or in the opposition to the motion to amend. [00:08:27] Speaker 04: And the POP expressly said, we're not looking at the petition. [00:08:32] Speaker 04: It doesn't matter because the claims are different now. [00:08:35] Speaker 00: There's a little confusion in Nike. [00:08:37] Speaker 00: Is there not using the word may and using the word should? [00:08:41] Speaker 00: And I think the other side argues that not just that it's dicta because the issue was limited, but even language in Nike, which says they may do it, which after all was the case before it. [00:08:53] Speaker 00: It was a question of whether or not the board was allowed to do this, not whether it had to do this. [00:08:59] Speaker 00: That was the issue of Nike, right? [00:09:01] Speaker 04: That's correct. [00:09:02] Speaker 00: So if we said, leaving aside the different language that Leckie used, if we had said clearly, deciding this case, all we have to decide is whether the board was allowed, may have considered this, and we conclude that yes, they may have, that's not your case, because the pop at least didn't. [00:09:25] Speaker 00: The board may have done it, but the pop didn't. [00:09:28] Speaker 04: I think that highlights one of the differences or one of the issues in our case, which is the POP said, talk to us about two issues. [00:09:36] Speaker 04: We're going to decide two issues. [00:09:38] Speaker 04: May we do this? [00:09:39] Speaker 04: And what kind of notice do we have to give? [00:09:41] Speaker 04: Nike answered the question clearly, yes, you may. [00:09:44] Speaker 04: And I think in this quote says you should, it doesn't say, [00:09:49] Speaker 04: you should sometimes go beyond or you should sometimes or most of the time constrain yourself to this. [00:09:56] Speaker 04: It says you should not constrain yourself to these delimited arguments. [00:10:02] Speaker 05: I'm still struggling with what the board did here or the POP panel. [00:10:06] Speaker 05: I know it because it's different. [00:10:08] Speaker 05: because they do have this L, but then they also seem to go back and say, since you didn't raise these arguments, we're not going to consider them. [00:10:18] Speaker 05: Did they specifically say, and also, these are not [00:10:24] Speaker 05: The grounds of unpatentability found by the board are not readily identifiable from the record. [00:10:32] Speaker 04: No, they did not. [00:10:33] Speaker 04: They made a critically different statement, which was that they weren't readily identifiable and persuasive enough to justify us bringing them up. [00:10:44] Speaker 05: Can you point to where in the pop panel that is to give us some context? [00:10:51] Speaker 05: I mean, I think, I've got your yellow brief up, and I think this paragraph you're talking about, it sites 652 and 53. [00:10:58] Speaker 05: Does that sound right? [00:11:00] Speaker 04: That sounds right. [00:11:07] Speaker 04: I'm sorry, I don't believe I have that citation in front of me. [00:11:09] Speaker 05: You don't have the POP decision in front of you? [00:11:12] Speaker 04: No, I don't. [00:11:14] Speaker 05: You don't need to bring your stuff here. [00:11:15] Speaker 05: This is a decision we're reviewing. [00:11:18] Speaker 00: Well, they did. [00:11:18] Speaker 00: I mean, in response to, I'll answer Judge Hughes' question, since I do have the pot panel. [00:11:23] Speaker 00: I mean, it does say at 52, they did seem to analyze why it's not readily identifiable and persuasive. [00:11:35] Speaker 04: But I think they also said, I mean, I think their ultimate conclusion was that it wasn't readily identifiable and persuasive enough, which is a different question than is it readily identifiable and persuasive. [00:11:48] Speaker 04: And I think the board clearly found it readily identifiable. [00:11:52] Speaker 00: Well, they said this is far from sufficient, which I think is a fair way to apply the standard, right? [00:11:59] Speaker 05: I mean, this turns this into a completely different case if we're talking about whether the board has either abused its discretion or the pop panel has abused its discretion or lacks substantial evidence in applying this rule, rather than the articulation of the rule itself is inconsistent with the statute and our interpretation of the statute in Nike. [00:12:22] Speaker 04: I think that's correct. [00:12:23] Speaker 04: And I don't think we're not trying to make the argument that the rule itself [00:12:29] Speaker 04: is an abuse of discretion or inconsistent. [00:12:33] Speaker 04: What we're arguing is that in this particular case, they did not make a decision on patentability. [00:12:40] Speaker 04: The POP did not based on the entirety of the record. [00:12:43] Speaker 04: They limited themselves just to the opposition to the motion. [00:12:46] Speaker 05: But again, let me back up because I want to be clear about this. [00:12:50] Speaker 05: Let's assume they don't have to do that in every instance. [00:12:54] Speaker 05: They can, and they have discretion, and then the POP panel put some limits on that discretion. [00:13:01] Speaker 05: One of the limits is the board can't raise new arguments about patentability on new claims unless it's the sort of whatever, that readily identifiable language. [00:13:15] Speaker 05: Let's assume that limitation on the board's discretion is okay. [00:13:21] Speaker 05: then doesn't the fact that they've referenced that limitation and said, well, that doesn't show it enough, so the board should not have exercised its discretion here. [00:13:31] Speaker 05: Doesn't that turn it into whether there's substantial evidence supporting that decision or abuse of discretion? [00:13:37] Speaker 05: I don't know. [00:13:37] Speaker 05: This is a new issue. [00:13:38] Speaker 05: So I don't think we've discussed what standard applies to it, but it would be one of those two. [00:13:43] Speaker 04: I think that's correct, but I think in this particular case, where the board has already identified the evidence and found it persuasive, what the POP did was contrary to Nike and Octopartics to willfully blind itself to the evidence. [00:13:56] Speaker 05: See, that's the problem. [00:13:57] Speaker 05: I think you're arguing this in an incorrect way. [00:14:01] Speaker 05: It baffles me that the POP panel came in and said, look, the board's already found these unpatentable over the prior art. [00:14:07] Speaker 05: We're not going to say they're wrong on that. [00:14:09] Speaker 05: We're just going to say they shouldn't have done that. [00:14:10] Speaker 05: That's baffling, but if they're allowed to put in place a rule that limits the board's discretion, when to do that, and this case falls into that discretion, then what you need to be arguing is that the POP panel abused its discretion in not allowing the board to exercise its discretion, I think, rather than [00:14:34] Speaker 05: The POP panel should have looked at the whole record because the rule they announced doesn't require anybody to look at the whole record in every single case. [00:14:42] Speaker 05: It allows the board to have discretion to look at it in certain instances and they determined it didn't fall within that instance. [00:14:50] Speaker 04: So I think this is a difference here where the POP and the patent owner want to say this is about new arguments. [00:14:59] Speaker 04: And it's not really about new arguments, this has been the same argument. [00:15:02] Speaker 05: I agree entirely with you, but you didn't argue the case that way. [00:15:06] Speaker 05: You know, the facts are the board found these unpatentable. [00:15:10] Speaker 05: And again, it baffles me why the POP would want to let these in the solicitor's office would now want to let claims go forward that are clearly unpatentable or the prior art as determined by three of its expert judges. [00:15:23] Speaker 05: But they're allowed to do that. [00:15:24] Speaker 05: And you didn't argue that it was an abuse of discretion for the POP panel. [00:15:27] Speaker 05: You're trying to say they shouldn't have done that as a matter of law. [00:15:32] Speaker 05: But they're allowed to do that as a matter of law if that pop panel decision and the new rule are correct. [00:15:39] Speaker 04: The pop panel, the United States Patent Office, they don't have the discretion to decide not to review the entirety of the record. [00:15:47] Speaker 04: That's what Opera Products and Nike said. [00:15:49] Speaker 05: I don't think that's what those cases say. [00:15:51] Speaker 05: They can, they have, you're stating it in a negative. [00:15:55] Speaker 05: The cases say they have the discretion to review the record and raise grounds of patentability, but I don't think they say there's an affirmative obligation to do some kind of full look at the entire record and do kind of their own determination of patentability. [00:16:11] Speaker 04: So, I mean, what offer product said is the final substantive decision must be based on the entirety of the record. [00:16:17] Speaker 04: Basic principles of administrative law compel this conclusion. [00:16:21] Speaker 04: Okay. [00:16:24] Speaker 00: Anything else? [00:16:26] Speaker 04: I think I would just point out that in this case, the notice requirements were satisfied per Nike. [00:16:38] Speaker 04: This was ground one of the IPR. [00:16:40] Speaker 04: The patent owner addressed it in their motion to amend and at the hearing. [00:16:45] Speaker 04: We think they clearly had notice of this. [00:16:47] Speaker 04: Thank you. [00:16:58] Speaker 01: Good morning, Your Honors, and may it please the Court. [00:17:01] Speaker 01: I'd like to clearly separate the two issues there are in this case. [00:17:04] Speaker 01: First, the standard [00:17:05] Speaker 01: that the POP established from when the board may raise its own grounds of unpatentability. [00:17:10] Speaker 01: And the second, then, is the specific application of the standard to the specific facts of this case. [00:17:14] Speaker 01: And I hear this court would like to discuss the second, some concerns about the application in this case. [00:17:21] Speaker 01: So I'll start there. [00:17:23] Speaker 05: Well, look, now, can you start with, because I'm a little concerned, too, about, I find this a little unclear about what discretion the POP panel and your new regulation are giving the board. [00:17:34] Speaker 05: And it is, are they confining the board to arguments raised by the petitioner, either in the petition or in the reply to the motion to amend? [00:17:45] Speaker 05: Or is this last part, what I keep calling the safety valve, does that let board members say, even if nobody has argued this before, in the petition or the like, if it goes to the same grounds and is readily apparent from the record, the board has the discretion to raise that. [00:18:04] Speaker 05: Is it that that they're allowed to do, the latter? [00:18:06] Speaker 01: Yes, they are allowed. [00:18:07] Speaker 01: The POP decision makes clear that when there's a failure of the adversarial process, when the board thinks that the best arguments and evidence haven't been brought by the parties that the board made. [00:18:17] Speaker 05: So hypothetically, if you have original claims, the board finds them anticipated by one prior art reference and says all the limitations are disclosed in here. [00:18:31] Speaker 05: But the patent owner says, well, I want to amend. [00:18:34] Speaker 05: I'm going to add these three new limitations. [00:18:36] Speaker 05: And the petitioner doesn't drop out. [00:18:40] Speaker 05: They file a reply. [00:18:41] Speaker 05: But it's insufficient or doesn't respond. [00:18:46] Speaker 05: the board can still look at the prior art reference, look at the limitations, and say, these limitations are still in that prior art reference. [00:18:55] Speaker 05: Can the board do that? [00:18:56] Speaker 01: Yes, the board may do that under the POP decision and the regulations. [00:19:00] Speaker 00: OK, I actually have to pull back a minute. [00:19:03] Speaker 00: Let's just talk about discretion, because I'm completely unclear about what the discretion is under the POP opinion. [00:19:09] Speaker 00: Firstly, the most obvious, the POP opinion, as I understand it, says, if the petitioner is dropped out, [00:19:16] Speaker 00: or if he or she has not responded, then the board goes forward and does its relatively searching review. [00:19:25] Speaker 00: Is that discretionary, or is that a rule? [00:19:28] Speaker 00: If the petitioner is gone, is the board obligated to do its own search, or is the pop panel saying only, well, it's up to the board. [00:19:36] Speaker 00: If they want to, they can. [00:19:37] Speaker 00: If they don't want to, they don't have to. [00:19:38] Speaker 01: I think looking to the regulation that's now in effect, the POP panel doesn't say one way or the other, but looking to the regulation that went into effect in January, the discretion has been limited to only when there's readily identifiable and persuasive evidence on the record. [00:19:54] Speaker 01: And that would be the policy of the board staying their discretion is to encourage [00:20:00] Speaker 01: the parties to remain in and oppose the motion. [00:20:03] Speaker 00: So let me be clear, because I actually thought the answer was different. [00:20:08] Speaker 00: If there's no petitioner, or if the petitioner doesn't respond, is the board required to do a review? [00:20:19] Speaker 00: If your answer is no, then my question is, so what are the limitations? [00:20:25] Speaker 00: Is it completely within their discretion? [00:20:27] Speaker 00: Do we then apply this readily identifiable thing? [00:20:30] Speaker 00: I misunderstood the POP to say that these two categories, no petitioner, board has to act. [00:20:38] Speaker 00: Then this is other category when the petitioner is an active participant, and then if he doesn't raise the right stuff, the board can add this different stuff. [00:20:46] Speaker 00: You're telling me something different, right? [00:20:47] Speaker 01: Well, there is a regulation now that is in effect. [00:20:49] Speaker 01: The regulation doesn't dictate this case, and the POP panel doesn't [00:20:55] Speaker 01: get to what the board should do when there is not a petitioner in the case, because the petitioner was in the case and did oppose the motion to amend it in this case. [00:21:03] Speaker 01: So you're saying under the reg? [00:21:04] Speaker 01: Right. [00:21:04] Speaker 01: So the reg does limit the board's discretion to readily identifiable and persuasive evidence. [00:21:09] Speaker 00: Even when the petitioner has dropped out? [00:21:11] Speaker 01: That's correct. [00:21:12] Speaker 01: The regulation reads, in the interest of justice, the board may exercise [00:21:16] Speaker 01: discretion to raise a ground based on readily identifiable and persuasive evidence. [00:21:21] Speaker 05: Is that regulation, is it before the support? [00:21:23] Speaker 05: Can you clarify, does it have to raise it if it's readily identifiable? [00:21:28] Speaker 05: So it's completely discretionary. [00:21:30] Speaker 05: So a board can look at this, back to my hypothetical, and look at it and say, it's clear to us that these are patentable over the same prior art that was cited, but we're just not going to raise it in our discretion. [00:21:43] Speaker 01: Well, I think the board does want to do the right thing. [00:21:48] Speaker 01: It is discretionary. [00:21:49] Speaker 01: It's set up as discretionary. [00:21:50] Speaker 01: But the goal is that the parties will be incentivized to participate in the adversarial process, because there's nothing we can do. [00:21:57] Speaker 05: What about the goal of making sure only valid claims are issued? [00:22:02] Speaker 05: Isn't that more important than the goal of having parties participate? [00:22:05] Speaker 01: But the point of the AIA is to be a party-driven process and giving the incentive to the parties to bring the best evidence and argument. [00:22:13] Speaker 00: So you're saying that under the regulation, I'm sorry, I'm still overwhelmed by this. [00:22:17] Speaker 00: Under the regulation, if the petitioner has dropped out, the board can maybe look at it. [00:22:23] Speaker 00: But even if there is readily identifiable information, and even if the petitioner has dropped out, [00:22:31] Speaker 00: The board still has the discretion to say, interest to justice? [00:22:36] Speaker 00: Nah, we're not going there. [00:22:37] Speaker 00: And presumably, that would never be reviewable, because if the petitioner is dropped out, nobody's there to appeal it. [00:22:44] Speaker 00: So the board has the complete, unfettered, unreviewable discretion to do that and therefore issue the amendment even when the petitioner is dropped out. [00:22:55] Speaker 00: In other words, no one has made a case for the amendment. [00:22:57] Speaker 01: That's how the regulations set it up. [00:22:59] Speaker 01: The regulation is not before the court. [00:23:00] Speaker 01: It is the POP panel right now. [00:23:02] Speaker 01: And the POP panel doesn't decide for when a petitioner is dropped out. [00:23:05] Speaker 01: because the petitioner was still in this case. [00:23:08] Speaker 01: Again, the policy decision of the regulation and the POP panel is to incentivize Hardee's to participate in this process. [00:23:17] Speaker 00: Let me ask you then about how the POP panel works, in this case, since we're not dealing with when a petitioner drops out. [00:23:24] Speaker 00: In this case, and I think maybe you've already discussed this with Judge Hughes, and I apologize, but under the POP panel, [00:23:32] Speaker 00: Are they saying that even if there is readily identifiable information, it's completely within the unreviewable discretion of the board to decide whether they want to do any kind of review with respect to the prior art relevant to the amendment? [00:23:49] Speaker 01: The panel is dealing with a situation where the petitioner filed the opposition to a motion to amend, and is that the board may [00:23:58] Speaker 01: it raised its own grounds of patentability despite that opposition when there's readily identifiable and persuasive evidence on the record. [00:24:05] Speaker 00: May or may not? [00:24:06] Speaker 00: May. [00:24:07] Speaker 00: May do its own ground. [00:24:08] Speaker 00: It may do it. [00:24:09] Speaker 00: No, that's my question. [00:24:10] Speaker 00: But does the pop panel say that it's completely within the discretion of the board, even when there's readily identifiable information, whatever that phrase is, does the pop panel mean that even if that exists, [00:24:26] Speaker 00: the board still has the discretion to say, oh, forget it, never mind. [00:24:31] Speaker 01: Well, like your honor says, we'll never know. [00:24:33] Speaker 01: We should take the board as doing its job. [00:24:38] Speaker 01: And it may raise these grounds. [00:24:41] Speaker 01: And I think overall, the board [00:24:43] Speaker 01: again, wants to get the answers right. [00:24:45] Speaker 01: And the idea of incentivizing the parties is that the parties will bring the best arguments and evidence. [00:24:52] Speaker 05: But I see very obvious scenarios where it would incentivize the parties not to do this, which is a patent owner has a specific petitioner that they're suing in court and they don't want to lose their patent. [00:25:07] Speaker 05: So they proposed claim limitations that they know will now make [00:25:12] Speaker 05: that the infringer non-infringing. [00:25:14] Speaker 05: And the infringer has no interest in going forward with the IPR, so they drop out, and they get these new claims issued because there's no obligation of the board to go forward. [00:25:29] Speaker 05: You say the board has no obligation, even if the record [00:25:34] Speaker 05: a hundred percent the limitations are minor and substantial covered by the prior art. [00:25:41] Speaker 05: You say the board doesn't have to look at that. [00:25:43] Speaker 01: The board has the discretion and I think this is a small scenario of cases most petitioners oppose the motions to amend. [00:25:50] Speaker 05: It's not that small of a scenario. [00:25:52] Speaker 05: We get cases up here all the time where [00:25:54] Speaker 05: the petitioner has dropped out for various reasons. [00:25:57] Speaker 05: Either they've settled or the amended claims probably don't. [00:26:00] Speaker 05: We don't know why they've dropped out, but it happens. [00:26:03] Speaker 05: You know, you guys come in and participate in these cases all the time where the petitioner has dropped out. [00:26:08] Speaker 05: So to say that it's not something that's common is not really supported and it seemed really problematic that [00:26:16] Speaker 05: that you could, I don't want to say game the system, but you can use these rules to put in place amended claims without any tests at all as to whether they're patentable. [00:26:28] Speaker 01: Well, there is a test. [00:26:30] Speaker 01: The board is there, and though it doesn't have to, but it may. [00:26:34] Speaker 05: Yes, but you say now they have complete discretion instead of if they're readily discernible. [00:26:40] Speaker 05: Look, if what was the issue was, [00:26:44] Speaker 05: Every time there's an amendment, the board has an obligation to search the record and make sure they're patentable over the entire record. [00:26:51] Speaker 05: I don't think that's what we meant if we said that in October Prize, and I don't think that's right. [00:26:57] Speaker 05: But, you know, that's a different thing. [00:26:59] Speaker 05: But if it's readily [00:27:01] Speaker 05: ascertainable, whatever language you're using here, it seems like the board should have an obligation to do that, at least that minimal searching. [00:27:09] Speaker 05: But you're saying no, that is completely discretionary. [00:27:12] Speaker 01: Well, I think there's nothing in the AIA that requires any particular search by the board or any particular analysis. [00:27:18] Speaker 01: And the [00:27:19] Speaker 01: pop and the regulation make a policy choice that it's better to incentivize the parties and that the board will then make better decisions overall when the petitioner doesn't know. [00:27:28] Speaker 05: But isn't it implicit when the board allows amended claims to go out that the agency should consider them patentable? [00:27:39] Speaker 05: that they should have at least checked them at some minimal level? [00:27:43] Speaker 01: I think the board is going to take that responsibility on it. [00:27:48] Speaker 01: It's a may, but I don't know how this court polices a should or a have to. [00:27:53] Speaker 01: And when there is the evidence on the record, that's all the same. [00:27:57] Speaker 05: If we say that there's a duty to perform whatever this exception [00:28:02] Speaker 05: this ascertainable thing is, if that's not a may, but it's a should, then if you don't do it, and it gets raised somehow, then we can determine whether your decision not to do it was supported by substantial evidence or abuse of discretion. [00:28:19] Speaker 05: Whatever standard we determine, that it's certainly judicially reviewable. [00:28:23] Speaker 01: Well, I think if the board does raise, whether the board raises it and it has to, and then the petitioners [00:28:31] Speaker 01: petition fail, like they oppose and they fail, they're always going to come to support, well they should have raised readily identifiable and persuasive evidence, we didn't recognize it, but they should have raised it. [00:28:40] Speaker 01: So it sort of undermines, any should is going to undermine any forfeiture principles for the petitioner. [00:28:46] Speaker 00: OK, I know I'm repeating myself, and this is proud. [00:28:49] Speaker 00: I just want to really make sure I understand what you're saying. [00:28:53] Speaker 00: Even if Blue, in this case, had made the argument that this was an abuse of discretion in its application because of this other standard, you would say, no, that's not possible. [00:29:06] Speaker 00: Because even if they concluded this was readily identifiable, [00:29:12] Speaker 00: they could have decided not to reach it. [00:29:15] Speaker 00: And a court would have nothing to say on that. [00:29:18] Speaker 01: Once the panel decision reached it, what the pop was saying is asking the question of whether they should have, whether this was readily identifiable and persuasive. [00:29:27] Speaker 01: The pop didn't say, [00:29:28] Speaker 01: you didn't have to do anything and you shouldn't have done anything. [00:29:30] Speaker 01: They said this wasn't readily identifiable and persuasive evidence, and thus you should not have exercised your discretion to raise it. [00:29:37] Speaker 01: But that's a different question than if they hadn't raised anything, or just saying you should never have raised it because we say you don't have to raise anything. [00:29:47] Speaker 01: They are reviewing then the panel articulation of readily identifiable and persuasive and finding in this case that the panel [00:29:54] Speaker 01: It's not readily identifiable and persuasive based on the way the panel had to... And once they do that, that's reviewable by us under some standard. [00:30:02] Speaker 01: Right. [00:30:02] Speaker 05: So you can... You're not arguing that that's wholly insulated from both of you once they make it. [00:30:06] Speaker 01: Right. [00:30:06] Speaker 01: So if Hunting Titan had argued that the POP misapplied its standard in this case, that is reviewable by the school. [00:30:15] Speaker 05: I mean, can you address that, though? [00:30:19] Speaker 05: I mean, the board seemed to do exactly what the POP panel said they should do, which is, [00:30:24] Speaker 05: you know, or were allowed to do, not said they had to, but were allowed to do. [00:30:28] Speaker 05: I'm a little baffled as to why the POP panel said the board's exercise of discretion wasn't correct here. [00:30:34] Speaker 05: It didn't seem like they looked outside the record. [00:30:36] Speaker 05: It didn't seem like they went beyond saying, look, all this is still in Shiraker. [00:30:41] Speaker 05: Why is that not covered in the readily identifiable exception? [00:30:45] Speaker 01: So there's two underlying reasons that the POP gave one that just on the face of Shiraker, it doesn't say, [00:30:53] Speaker 01: that there's a housing that completely contains the detonator, because the panel put together not what is called the housing in Shiroshir, but the connector 30, which is been mapped by... But it's all in Shiroshir. [00:31:05] Speaker 05: They didn't put it elsewhere, so they found it readily identifiable from Shiroshir. [00:31:11] Speaker 01: The panel didn't have the standard but we'll assume that they did because they raised it. [00:31:21] Speaker 05: Can I just ask you this, just to clarify what's in my mind what is the result of this. [00:31:28] Speaker 05: The POP panel didn't affirmatively say these are patentable over Sherrocker. [00:31:34] Speaker 05: They just said [00:31:35] Speaker 05: the arguments raised by the petitioner are insufficient and we're not going to allow the board to make the arguments it made. [00:31:42] Speaker 01: We're not going to let the panel raise its own ground, not that these claims were found to be anticipated. [00:31:47] Speaker 05: Why is it its own ground when it's the same reference? [00:31:51] Speaker 01: I guess it's because it's their own ground. [00:31:53] Speaker 05: It's just different parts of the same. [00:31:55] Speaker 05: We go back and forth with everybody in these IPRs. [00:31:57] Speaker 05: all the time when it's a new argument or it's just further evidence in the same prior art reference to support the same anticipation ground. [00:32:07] Speaker 05: This seems to be clearly in the latter. [00:32:09] Speaker 05: The board, it's not the original arguments against the original claims, but it's the same prior art reference. [00:32:15] Speaker 05: They said, look, we're going to read this prior art reference and nothing you added here is good enough to overcome that. [00:32:22] Speaker 05: And maybe they didn't preserve this argument well enough, but it seems really frustrating that if the board was right, that these claims are going to go out in the world when the board found them invalid and nobody's disagreed with that. [00:32:34] Speaker 05: Yes. [00:32:34] Speaker 01: I hear your frustration. [00:32:35] Speaker 01: I understand that. [00:32:36] Speaker 01: I think the POP is saying not that we, the agency, know these claims are anticipated because there was the APA problem with [00:32:44] Speaker 01: notice to Dynaenergetics about the specific way that the panel rearranged the elements of Scharacher. [00:32:51] Speaker 01: So there's not a panel decision that decided anticipation consistent with the APA and that there had to be a reinterpretation of Scharacher and also that [00:33:03] Speaker 01: Hunting Titans' arguments about Charter never themselves sell us as readily identifiable as a way to meet that limitation. [00:33:10] Speaker 00: Can I just say that clearly, just on Nike and on the relevance of Nike, going forward, in Nike, the board itself said, we're going to review this, we're going to find this. [00:33:20] Speaker 00: And we said, fine. [00:33:22] Speaker 00: Even if it's you may do that, not you shall. [00:33:26] Speaker 00: Following POP, the board's board panels will not be allowed to do that, correct? [00:33:33] Speaker 00: do raise their own grounds. [00:33:35] Speaker 00: They will. [00:33:35] Speaker 00: They have the discretion. [00:33:37] Speaker 00: Only if it's readily identifiable, right? [00:33:40] Speaker 00: Right. [00:33:41] Speaker 01: It's readily identifiable. [00:33:42] Speaker 00: Now, Nike didn't limit that. [00:33:44] Speaker 00: And in Nike, I think you could make an argument that the prior art references were certainly less readily identifiable than they were in this case. [00:33:52] Speaker 00: That's fair, isn't it? [00:33:53] Speaker 01: It may be fair. [00:33:54] Speaker 01: No one has applied that standard to the particular facts of Nike. [00:33:58] Speaker 05: So if we disagree with the pop panel and said, these were readily identifiable, assuming there's no, I mean, I have some problems with the way it was argued, but assuming that that had been the argument, the pop panel was wrong and these were readily identifiable, can we do something about that? [00:34:14] Speaker 05: Can we say, [00:34:16] Speaker 05: Pop panel, we disagree with you. [00:34:17] Speaker 05: The board was right to raise these. [00:34:19] Speaker 05: They were readily identifiable. [00:34:20] Speaker 01: Yes, this court can say that. [00:34:22] Speaker 01: I think then that's when the notice issue comes into play. [00:34:25] Speaker 05: Okay, but let's set that aside too. [00:34:26] Speaker 00: I understand. [00:34:26] Speaker 00: In the future case here, is that only because the pop panel decided to dive in? [00:34:33] Speaker 00: In a future case, [00:34:35] Speaker 00: the pop panel or another panel could say, well, we're not even going to look at whether or not it's readily identifiable or not. [00:34:43] Speaker 00: So there's nothing to review in terms of the readily identified. [00:34:47] Speaker 00: And in a future case, [00:34:49] Speaker 00: That would be fine. [00:34:50] Speaker 00: I mean, under what standard could we review that? [00:34:53] Speaker 01: Well, I think that what is going to happen in the future is when the board wants to raise its own ground, it's going to raise that ground and give the parties notice of that ground. [00:35:00] Speaker 00: OK, and what's going to happen in the future if the board decides not to, doesn't want to raise its own ground? [00:35:05] Speaker 00: Well, then... Even if it's readily identifiable, what happens in those cases? [00:35:10] Speaker 01: then the parties argue what the board decided, unless there's a duty for the board that they have to write. [00:35:17] Speaker 00: No, no, no. [00:35:17] Speaker 00: But just tell me that case. [00:35:18] Speaker 00: We have that case. [00:35:19] Speaker 00: The board says, in this case. [00:35:22] Speaker 00: But let's assume the board, rather than reaching the issue, says, or the board panel says, we're not even going to look at whether or not it's readily identifiable. [00:35:32] Speaker 00: We're moving on. [00:35:34] Speaker 00: Can the petitioner appeal that? [00:35:36] Speaker 00: And what argument can the petitioner make? [00:35:38] Speaker 00: Can he make an abuse of discretion argument? [00:35:41] Speaker 00: But where's the discretion? [00:35:42] Speaker 00: If you're saying the board has discretion to decide or not to decide without any criteria or limits. [00:35:49] Speaker 00: So there can be no abuse of discretion under that theory, right? [00:35:53] Speaker 01: I mean, the petitioner may argue that even though they didn't raise it, that somehow [00:35:58] Speaker 01: If they might try to argue that it was readily identifiable, then the court and the board had to raise it, should have raised it. [00:36:04] Speaker 01: But if it's discretionary, that argument should fail. [00:36:06] Speaker 01: There should be forfeiture for the petitioner when they fail to read these arguments. [00:36:10] Speaker 00: In other words, your reading of POP is that it's completely within the discretion of the panel, even if it's readily identifiable, to decline to apply that and to just let [00:36:22] Speaker 00: I get a yes or no on that. [00:36:24] Speaker 01: Yes, it's discretionary. [00:36:25] Speaker 01: The board is going to decide the parties. [00:36:29] Speaker 05: If your view is it's completely discretionary, what difference does it make if a petitioner raised it or not? [00:36:34] Speaker 05: If it's completely discretionary and overviewable by us, then whether they raise that argument seems to be it doesn't save them on appeal. [00:36:43] Speaker 01: The petitioner, that's correct. [00:36:45] Speaker 01: Right. [00:36:45] Speaker 01: If it is discretionary as opposed to a duty. [00:36:47] Speaker 05: So let me, I think that you've already answered this, but if you answer what I thought you did, I am astounded that you're taking this position. [00:36:55] Speaker 05: But original claims out, amended claims proposed, petitioner says no good, dreadedly inassertainable [00:37:06] Speaker 05: readily identifiable from the record that they're still not patentable. [00:37:12] Speaker 05: And the board just says, no, we're not going to look at that question. [00:37:16] Speaker 05: Not that addressing it just says, no, we're going to exercise our discretion not to look at that question. [00:37:23] Speaker 05: On appeal to us, is that decision reviewable? [00:37:26] Speaker 01: Yes, if the petitioner raises it and says these are readily identical, the petitioner is making the argument themselves, and then the board will review the petitioner's opposition. [00:37:37] Speaker 05: But what's the legal basis for the board having to respond to that argument? [00:37:42] Speaker 01: Because the board is still going to review an opposition to the motion to bend with the petitioner having the burden of proof. [00:37:50] Speaker 01: So if the petitioner just says it's readily identifiable, you board go do it for me. [00:37:57] Speaker 01: No, no, no. [00:37:58] Speaker 05: Let's assume they made the right argument. [00:38:00] Speaker 05: In that case, you're saying the board has an obligation to consider the argument. [00:38:05] Speaker 01: Yes, because the petitioner made the argument. [00:38:06] Speaker 01: It's no longer whether the board may itself raise the ground. [00:38:09] Speaker 05: Then it's not wholly discretionary about the board's [00:38:13] Speaker 05: readily identifiable. [00:38:16] Speaker 05: You're saying it's wholly discretional only if the petitioner doesn't raise it. [00:38:22] Speaker 05: But if they do, then it's not discretionary. [00:38:25] Speaker 05: What makes the sense of that? [00:38:27] Speaker 05: Because the same standard applies in both circumstances, right? [00:38:32] Speaker 05: The board is going to look at whether... Let me just ask this the other way. [00:38:37] Speaker 05: Why shouldn't we just say there is an obligation for the board to look at, and use this readily identifiable standard, whether or not the petitioner raises it because of [00:38:49] Speaker 05: the fact that these are new claims and there should be at least a minimal check on whether you're patentable or not. [00:38:55] Speaker 05: Why shouldn't we do that? [00:38:56] Speaker 05: Because you seem to say in one circumstances the board's required to do that and in one circumstance it's not. [00:39:05] Speaker 01: Well, I think there's two issues. [00:39:07] Speaker 01: This is just about when the board should sua sponte itself raise the ground. [00:39:12] Speaker 01: All the grounds the petitioner raises. [00:39:14] Speaker 05: No, I don't understand why you wouldn't. [00:39:16] Speaker 05: If you're going to say the board has the discretion to do this, then shouldn't they have the discretion to do this and actually have to do this in all cases? [00:39:26] Speaker 05: Why would they do it just to confront a petitioner's argument and then say, well, we could figure this out because it's easy, but we're not going to do it? [00:39:35] Speaker 01: I think I'm a little confused because when the petitioner is opposing the motion to amend, the petitioner bears the burden on that and the board is going to decide that motion on the arguments that the parties make. [00:39:46] Speaker 01: So that all still is in place. [00:39:50] Speaker 01: This is just the board's discretion when the petitioner's not there or when they think the petitioner has missed an argument that's readily identifiable. [00:39:59] Speaker 05: I still don't understand what the distinction is. [00:40:02] Speaker 05: Even if the petitioner doesn't participate at all, there's still a motion to amend that the board has to consider and grant. [00:40:10] Speaker 05: And in granting that motion to amend, [00:40:13] Speaker 05: don't they have to make at least some threshold determination that the new claims are patentable over the prior art that's already been asserted? [00:40:23] Speaker 01: Under 318, there's a requirement to make a determination of patentability. [00:40:27] Speaker 01: The board may raise grounds that are readily identifiable and persuasive on the evidence, and then has to itself justify any of those grounds of patentability when the petitioner drops out. [00:40:39] Speaker 01: If there's an obligation to do so, I don't know where that is in the AIA. [00:40:46] Speaker 01: This is a line drawing, and there's no perfect answer for where to draw the line. [00:40:50] Speaker 01: But the policy the agency is trying to get at is to incentivize the parties to bring the evidence to them, since this is not supposed to be an agency-led process, but a party-driven office. [00:41:01] Speaker 00: But if the petitioner has settled or dropped out, [00:41:04] Speaker 00: And it's not affected by the motions to amend. [00:41:07] Speaker 00: I mean, I can't find it now, but I thought even in the POP opinion, the board took instances where the petitioner is dropped out or is not responding and recognized that it had a responsibility with a public interest in doing some sort of analysis. [00:41:25] Speaker 00: And now you're telling me that, [00:41:27] Speaker 00: If that's true then, it's not true anymore because under the regulation, there's no such obligation. [00:41:33] Speaker 00: Our only obligation is to try to foster an adversarial system in order to protect the public from issuing patents that may not be patentable. [00:41:41] Speaker 01: I mean, the idea is that will encourage... Am I right about that? [00:41:44] Speaker 00: Is anything I said correct? [00:41:45] Speaker 00: Yes. [00:41:45] Speaker 01: The idea is to encourage better arguments and better decisions by the boards overall, even if the case is where the petitioner drops out. [00:41:53] Speaker 05: So the public interest is protected only at the whim of petitioner's counsel and the competency of the petitioner's counsel. [00:42:03] Speaker 05: I'm not speaking to this case, but there are probably cases out there, you've probably seen them, where petitioner's counsel may not be particularly competent. [00:42:13] Speaker 05: And why should we rely on the random draw of petitioner's counsel and their ability to protect the public against [00:42:22] Speaker 05: bascially invalid claims when the board could do it itself. [00:42:27] Speaker 01: I think Congress did set up a party-driven process. [00:42:31] Speaker 05: Well, you say that, but what you had to do with Motions to Men is very thin. [00:42:39] Speaker 05: I mean, they didn't say anything about specifically relying on the adversarial process. [00:42:43] Speaker 05: This is all coming from the POPs view of what it should be. [00:42:46] Speaker 01: That is correct. [00:42:47] Speaker 01: What was the purpose of the AIA? [00:42:50] Speaker 00: Was it not to get the board to take a second look at questionable patents? [00:42:55] Speaker 00: Wasn't the purpose to have the ability for the board to re-examine or take another look at those patents so we can get rid of patents that shouldn't have been issued in the first instance? [00:43:06] Speaker 01: And putting the burden on the petitioner made it a party-driven system. [00:43:09] Speaker 01: And even when the motion to amend is granted, the public still has the advantage of narrower and clarified claims. [00:43:17] Speaker 01: There's intervening rights. [00:43:20] Speaker 01: a re-look at the claims that had issued. [00:43:23] Speaker 01: And they're not the claim, if a motion to amend is granted, they are narrower. [00:43:27] Speaker 01: But there are new claims being issued as a result of this amendment. [00:43:31] Speaker 01: There are claims that overcome the prior art from the petition that was asserted against the original claims. [00:43:39] Speaker 01: And those are narrower. [00:43:40] Speaker 01: They have to be narrower claims that clarify what the patent owner thinks is their [00:43:49] Speaker 01: invention. [00:43:49] Speaker 00: The bottom line of what I'm hearing is that the board does not have to do anything beyond looking at what the petitioner says in its opposition, or if the petitioner says nothing because it's gone, the board doesn't have to do anything. [00:44:04] Speaker 01: The board... Am I hearing that right? [00:44:07] Speaker 01: It is a discretionary. [00:44:08] Speaker 01: Yes, it's discretionary. [00:44:09] Speaker 00: A discretion means the board doesn't have to do anything. [00:44:12] Speaker 00: Are there standards upon which we would evaluate an abuse of discretion? [00:44:16] Speaker 00: Because I'm not hearing any. [00:44:17] Speaker 00: If it's completely discretionary, are there any standards against which we would review this? [00:44:25] Speaker 01: Well, I mean, I don't think the patent owner, if the patent owner gets their motion to amend, there's no one that's going to bring the cases to this court. [00:44:31] Speaker 01: The petitioner, if it's a should, the petitioner is going to say not only they misapplied our motion, but they also should have raised these grounds. [00:44:40] Speaker 01: that were readily identifiable. [00:44:42] Speaker 01: They have this duty and they didn't do it for us. [00:44:46] Speaker 00: And you say, no, we have no duty. [00:44:49] Speaker 00: It's completely discretionary. [00:44:50] Speaker 01: Right. [00:44:51] Speaker 01: The petitioner bears the burden on the motion to amend. [00:44:54] Speaker 01: And if there's a duty on the board that would undermine any forfeiture principles on the petitioner for what grounds that it chooses to raise. [00:45:02] Speaker 01: And the idea is that that's going to undermine the incentives for the petitioner to raise [00:45:07] Speaker 01: what they think are the best arguments and evidence. [00:45:10] Speaker 01: If the board's going to step in and decided on the prior art that was in the petition every time for them, they have different incentives. [00:45:15] Speaker 01: And the policy choice is to incentivize the parties. [00:45:21] Speaker 01: And there's no perfect line. [00:45:22] Speaker 01: I understand that wherever you draw the line, there's going to be difficulties. [00:45:27] Speaker 01: If you say the board always has to do it, that's going to be hard to administer. [00:45:31] Speaker 01: But I don't know what the in-between is other than it's discretionary to put the burden on the petitioner [00:45:37] Speaker 05: And the board, do you think Congress really gave you the policy choice between incentivizing litigation in the adversarial system versus making sure that only valid patents were out there in the world? [00:45:52] Speaker 05: I mean, it seems like the whole point of the AIA was to allow challenge is to patents that should never have been issued in the first place. [00:46:00] Speaker 05: Shouldn't that go also, that policy purpose go to amended claims? [00:46:05] Speaker 01: And I think it is going to amend a claim status. [00:46:08] Speaker 05: We want the agency to want... Senator, if that is the primary purpose, then the word you're proposing does not align with that as well as a should consider rather than can consider. [00:46:21] Speaker 01: I think it's aligned with the purpose of the AI in that it's getting the parties to give us the best arguments and evidence because we have to do this. [00:46:29] Speaker 01: The board has to do this in the year time frame. [00:46:31] Speaker 01: They have limited resources. [00:46:33] Speaker 01: The Congress's purpose was to harness the power of the third parties to bring the best arguments and evidence to the board so that the board will make better decisions overall, even if in this particular case you think that the best decision is not being made. [00:46:47] Speaker 01: And if you let the board step in, [00:46:50] Speaker 01: The petitioner is going to have different incentives, and there's no perfect answer. [00:46:53] Speaker 05: Do you really think so? [00:46:54] Speaker 05: I mean, aren't the petitioners always, if the patent is still going to be, new claims are going to be enforced against them, aren't they still going to have the incentives to make the best arguments they can? [00:47:05] Speaker 01: One would hope, and I think this encourages that, make sure that there's not going to be some... Yes, but you don't need this rule to incentivize them. [00:47:13] Speaker 05: What it does is allow for the board to allow bad [00:47:17] Speaker 05: claims to go forward when they don't do a very good job. [00:47:21] Speaker 01: In those individual cases, but overall, the idea is that it will incentivize people to bring the best arguments to the board so that they will make the decisions overall. [00:47:31] Speaker 05: I don't understand why you need that rule to incentivize petitioners to make their best arguments. [00:47:36] Speaker 05: You think they're going to come in and say, we're not going to make very good arguments here because the board's going to do it itself? [00:47:41] Speaker 01: They may think the board's going to do a certain amount for it, and then we'll focus on new art and bring new art into the policy choices. [00:47:48] Speaker 00: Can I ask you just a housekeeping question? [00:47:51] Speaker 00: Do you know the statistics on this, on taking the past year or whatever, how many motions to amend there are, if there are any that have been done under POP, if there are any that have been adjudicated under the new regulation? [00:48:05] Speaker 01: So the only public data they have, and this is on our website, ends in, I think, March 2020. [00:48:10] Speaker 01: It's 10%. [00:48:12] Speaker 00: 2020, you've got to move updated it for you. [00:48:15] Speaker 00: Your website was always so up to date. [00:48:17] Speaker 01: Yeah. [00:48:17] Speaker 01: This was a special study. [00:48:18] Speaker 01: It's not part of the year, just the quarterly study that's done before March, 2020. [00:48:24] Speaker 01: It was 10% of cases had motions to amend. [00:48:27] Speaker 01: Two thirds of those were decided on the merits as opposed to being decided because the original claims were found. [00:48:33] Speaker 01: to be not unpatentable or a settlement. [00:48:35] Speaker 01: So there's 2 thirds of that. [00:48:36] Speaker 01: 10% are actually being decided on the merits. [00:48:39] Speaker 01: And we don't have any data on how many of those were opposed, though. [00:48:46] Speaker 00: But since March 2020, which is over a year, the PTO doesn't maintain any data on that? [00:48:52] Speaker 01: We don't have any data on the motions to amend. [00:48:53] Speaker 01: There is a pilot program now to increase the number of motions to amend, so patent owners [00:49:02] Speaker 01: will file more motions to amend so that they can get feedback from the board on a motions to amend and respond to feedback from the board. [00:49:08] Speaker 01: And I don't have any public data on how motions to amend have changed. [00:49:13] Speaker 01: What does feedback mean? [00:49:15] Speaker 01: So there's a pilot program, it's way off the case, but where the patent owner can file and get [00:49:25] Speaker 01: feedback from the board and then re-file in response to the board before the board decides the motion to amend. [00:49:33] Speaker 01: Yes, I think the agency was concerned that patent owners didn't feel like they had a chance [00:49:44] Speaker 01: to amend their patents, and the AIA does set out it as a right to amend. [00:49:49] Speaker 00: Well, if the board doesn't have any statistics, at least for almost the last year and a half, how does it make a determination that there are not enough motions to amend? [00:49:56] Speaker 00: We need to incentivize them. [00:49:58] Speaker 00: Well, we know there were 90% of the cases. [00:50:01] Speaker 00: There's only 10% of the cases there were a motion to amend. [00:50:03] Speaker 00: That was as of March 9, 2020. [00:50:06] Speaker 00: I'm sorry, Your Honor. [00:50:07] Speaker 00: I don't think for the POP. [00:50:08] Speaker 00: Maybe the POP incentivized enough people to file motions to amend. [00:50:11] Speaker 01: I'm sorry, Your Honor, I don't have any statistics on that. [00:50:18] Speaker 00: Thank you. [00:50:18] Speaker 01: Thank you, Your Honors. [00:50:25] Speaker 00: Now the split time didn't work out so well. [00:50:28] Speaker 00: So I don't think Mr. Herman, speaking only for myself, we need to retread the ground already tread. [00:50:36] Speaker 00: So were you going to talk about the actual case here? [00:50:39] Speaker 03: I would love to, and in fact, I understand that this court has global implications, but under the facts of what happened here, I think it's clear that the POP, this was a request for rehearing, Judge Hughes, and under, on page 21 of the POP decision, [00:51:01] Speaker 03: The POP did find that there is not the sort of readily identifiable and persuasive evidence of anticipation in the record that would justify the board raising its own grounds of impotentability. [00:51:11] Speaker 03: And then it points to the portion of Chakra that was relied on by the original panel and says this is far from sufficient. [00:51:19] Speaker 03: Though the board decision interpreted Chakra's connector 30 to act as a single housing with housing 26, [00:51:28] Speaker 03: this interpretation is not clearly stated by shocker and does not rise to the level. [00:51:33] Speaker 05: So is that conclusion reviewable by us? [00:51:36] Speaker 03: It is. [00:51:37] Speaker 05: And if so, what standard is it reviewable under? [00:51:40] Speaker 03: Well, I mean, I look at this as the, first of all, this is the only POP decision. [00:51:47] Speaker 03: They've only taken one case after a final written decision. [00:51:50] Speaker 03: This was it. [00:51:51] Speaker 03: There's been four others, one more recent, and it's all on institution decisions. [00:51:55] Speaker 03: i mean you said you were frustrated because you know if it's clearly anticipated these claims are going to get out there and i look at it is we were we were uh... completely shocked because we don't think the original claims are valid which hopefully i'll have time to get to but here the whole argument at oral argument your honor was about obviousness and i said to the judge there might be a notice issue here uh... there might not be let's leave that aside [00:52:23] Speaker 05: That's not what I asked. [00:52:25] Speaker 05: I'm not asking about notice. [00:52:26] Speaker 05: I'm not asking about whether this is not. [00:52:29] Speaker 05: I'm asking about whether when the POP said, this is not a permissible way for the board to look at these new claims, if that's reviewed by us, what standard we review it under and what authority do you have for all of that? [00:52:49] Speaker 05: the p o p not only this is why i went to the office this thing i'm getting the p o p not only ruled that shocker did not anticipate the uh... amended claims it ruled that there was a way to be careful right because they didn't say that shocker didn't anticipate that many claims they said the ground relied upon by the board was one that the board should not have rates right i understand your honor they didn't say the ground relied upon the board was wrong did they [00:53:19] Speaker 03: The language they use is that it's not readily identifiable. [00:53:24] Speaker 03: Right. [00:53:24] Speaker 05: So they didn't disagree with the board. [00:53:26] Speaker 05: They said you shouldn't have raised it. [00:53:28] Speaker 05: They went on and said the arguments raised by the petitioner for unpatentability are incorrect. [00:53:34] Speaker 03: So Your Honor, backing up a couple of pages in the POP decision, they said, and I know you want to do something more globally, but here, Hunting Titan chose not to assert anticipation. [00:53:44] Speaker 03: And the POP took that into account and said, because petitioner [00:53:49] Speaker 03: petitioner affirmatively chose not to raise this. [00:53:51] Speaker 05: I understand. [00:53:52] Speaker 05: Look, we talked about this. [00:53:53] Speaker 05: We know what's going on. [00:53:54] Speaker 05: I just want to try to get an answer to my question, which is the board, even though this exception wasn't in place, let's just assume that this was the type of action they were undertaking that fell within that readily identifiable exception. [00:54:08] Speaker 05: The POP disagreed and said no, it didn't. [00:54:12] Speaker 05: So you said we get to review that decision. [00:54:15] Speaker 05: What standard review do you think should apply to the POP's decision to reject the board's reasoning, and what authority do you have that we get to review it at all, and what the standard is? [00:54:30] Speaker 03: I think you would rely, this would be, you could rely under, or you could review it under abusive discretion, or you could do substantial evidence, because this is, it does shock, is there substantial evidence in the record [00:54:45] Speaker 03: that shocker is readily identifiable. [00:54:51] Speaker 03: You'd have to kind of shoehorn it in, I guess. [00:54:54] Speaker 03: But what the POP did here is they looked at the record and [00:54:59] Speaker 03: ticket can i get to the matter i i wanted your question so that you answered about the the matter here and certainly the president you were a lot of for that but that's all it is that we're only making this up because i'm not sure that i don't know if i had your honor what what the i was hoping you would tie it back into nike but well nike does say that the board may raise this argument and and when you're asking my colleague miss craven about that when in these situations when [00:55:28] Speaker 03: The petitioner has either dropped out or isn't opposing the motion to amend. [00:55:35] Speaker 03: I think it's clear that the POP decision is saying we should look more carefully, and the board should look more carefully in those situations, as opposed to the situation we have here. [00:55:44] Speaker 03: I get that it's discretionary, but Your Honor, what we have here with Shockerer, and this goes to the original claims which we appealed, Shockerer has this huge sub [00:55:56] Speaker 03: that connects two perforating guns together. [00:55:59] Speaker 03: And it put the detonator, if they want to call it wireless, into [00:56:05] Speaker 03: the sub so that the guns could rotate. [00:56:09] Speaker 03: It's a fine invention. [00:56:10] Speaker 03: It has nothing to do with what Dyna Energetics invented on the 422 patent. [00:56:14] Speaker 00: I'm sorry to interrupt. [00:56:15] Speaker 00: I know time is short, and trust us. [00:56:17] Speaker 00: I hope you appreciate it. [00:56:18] Speaker 00: We've read the briefs. [00:56:19] Speaker 00: I understand. [00:56:20] Speaker 00: Thank you, Ron. [00:56:20] Speaker 00: We understand the issues. [00:56:21] Speaker 00: I'm here to answer your questions. [00:56:21] Speaker 00: I wanted to ask you an argument, a question that I really need to be answered. [00:56:25] Speaker 00: There's a requirement in the regs that the patent owner has to show that a proposed substitute claim responds to a ground of unpatentability involved in the trial. [00:56:35] Speaker 00: You familiar with that 42.121? [00:56:36] Speaker 00: Yes, I am, Your Honor. [00:56:38] Speaker 00: What does that actually require in practice? [00:56:41] Speaker 00: Because if that's the requirement, I would read that if you have to respond to a ground of unpatentability involved in the trial, if there was a ground of unpatentability, which is share our anticipation, why would the obligation not have been on you under the reg to deal with that issue? [00:56:59] Speaker 00: We did deal with that issue, in fact. [00:57:01] Speaker 00: But you agreed that the reg, and I should have asked this to the PTO, and I'm sorry, I didn't, and maybe I can. [00:57:08] Speaker 00: You just think about asking her to come back, but their obligation to respond. [00:57:12] Speaker 00: So even though we've talked about burdens and we've said, a lot of people have said a lot of things about burdens. [00:57:17] Speaker 00: It seems to me their obligation is to respond. [00:57:20] Speaker 00: So you have to put that in play. [00:57:22] Speaker 00: You put that in play. [00:57:23] Speaker 00: So it's in play by the time the board looks at it. [00:57:27] Speaker 00: So. [00:57:28] Speaker 03: So it was in play here, your honor. [00:57:30] Speaker 03: We said specifically in our motion to amend. [00:57:33] Speaker 03: that shocker didn't anticipate the new claims. [00:57:35] Speaker 03: We said we don't believe shocker anticipates the original claims, but we made it clear, we've added this language, and we made it much clearer as to what is being covered, and shocker doesn't anticipate that. [00:57:47] Speaker 03: The claims also have to be narrower. [00:57:49] Speaker 00: So in your view, you put before the board the question of whether or not shocker anticipates the amended claims, and that's the issue that was before the board, right? [00:57:59] Speaker 03: That's the way we read the rule, which is to say you have to address an issue of patentability that's been raised. [00:58:05] Speaker 03: And so we said specifically, these claim limitations take it outside of shocker. [00:58:10] Speaker 03: Hunting Titan agreed, and they asserted obviousness. [00:58:13] Speaker 03: But the board disagreed. [00:58:15] Speaker 03: Excuse me? [00:58:16] Speaker 03: But the board disagreed. [00:58:17] Speaker 03: Which is amazing. [00:58:18] Speaker 03: Your Honor, I know you're shocked, but it's shocking that Hunting Titan, with sophisticated patent counsel, would look at the claim limitations and say, [00:58:28] Speaker 03: We're not even going to assert anticipation anymore. [00:58:31] Speaker 03: And the board on its own says, hold on. [00:58:33] Speaker 05: What is that shocking? [00:58:34] Speaker 05: The board's filled with expert judges that do this over and over again. [00:58:38] Speaker 05: And they're embedded in this case in this reference. [00:58:41] Speaker 05: And they see your limitations. [00:58:43] Speaker 05: And they're like, we've read Shocker. [00:58:45] Speaker 05: This doesn't do it for us. [00:58:46] Speaker 03: They read Shocker so broadly, Your Honor, that it completely. [00:58:50] Speaker 05: No, but I get that. [00:58:51] Speaker 05: So that's a merits question, though. [00:58:53] Speaker 05: OK. [00:58:53] Speaker 05: But we're still, I know you want to get on to the merits. [00:58:56] Speaker 05: But it confounds me when the regulation requires you to bear at least some minimal burden initially, which suggests that the board has to look at whether you met that burden, and the board says you haven't met that burden. [00:59:10] Speaker 05: Why the pot panel suddenly takes that whole [00:59:13] Speaker 05: activity away and says the board can't do this at all. [00:59:17] Speaker 05: Why isn't that at least an abuse of discretion on the facts of this case? [00:59:21] Speaker 03: I would take issue your honor with saying the POP said that you can't do this at all. [00:59:25] Speaker 03: They said you can do it if it's readily identifiable and persuasive evidence. [00:59:29] Speaker 03: And for the POP to take away, go ahead. [00:59:33] Speaker 05: I'm going to stop asking this question. [00:59:34] Speaker 05: But does that mean we get to review the POP's panel's decision that this is not readily identifiable for abuse of discretion? [00:59:43] Speaker 05: And if we disagree with them and find that they abuse their discretion, that the board's decision could stand? [00:59:50] Speaker 03: I think in this circumstance, I don't believe that Huntington-Titan raised that argument, so I don't. [00:59:54] Speaker 03: I think they've waived that argument. [00:59:57] Speaker 05: And you won't have another policy in the next... Setting aside the waiver, could we? [01:00:01] Speaker 03: Yeah, I think you could. [01:00:02] Speaker 05: You're not going to have... The problem is Pop wanted to establish a rule, and this is the best case they had, but it [01:00:11] Speaker 05: Going forward, we're not going to... Presumably, I mean, I guess if it happens again, we'll see, but presumably when the board exercises its discretion and says, this is readily identifiable, that's going to be fact specific and the POP panel is not going to say, no, we disagree with you. [01:00:28] Speaker 03: Correct. [01:00:28] Speaker 03: It would just be appealed. [01:00:29] Speaker 03: You would think that then the patent owner would appeal that to the federal circuit and then you could then determine that case on the merits. [01:00:36] Speaker 05: So even if the POP decision is wrong here, [01:00:40] Speaker 05: on whether it was readily identifiable as kind of a one-off. [01:00:44] Speaker 03: I think that's right. [01:00:45] Speaker 03: I would say this. [01:00:47] Speaker 03: The fact that the pop took this case and made this ruling shows you how egregious this panel was. [01:00:55] Speaker 03: And so, yes, I am still trying to get to the merits of this case. [01:00:58] Speaker 03: But I think the best case for the pop to have taken, Judge Hughes, would be to take a situation where the petitioner dropped out and then the board [01:01:10] Speaker 03: went ahead on their own and found something unpatentable. [01:01:13] Speaker 03: And then the POP would have said, that's OK, because this is one of those rare circumstances, because they dropped out. [01:01:25] Speaker 03: I see I've gone over my time. [01:01:26] Speaker 03: I had saved three minutes for rebuttal, if that's still OK. [01:01:31] Speaker 00: Yeah, that would only apply to your cross-appeal if the other side decides to use its time responding to it. [01:01:38] Speaker 03: Thank you, Your Honor. [01:01:43] Speaker 00: We'll give you five minutes. [01:01:45] Speaker 00: Thank you, Your Honor. [01:01:46] Speaker 04: I'll try to keep it very brief. [01:01:51] Speaker 04: First, responding to Judge Hughes' point, this is one of those cases where the amendments take the accused device outside the claims. [01:01:59] Speaker 04: It's not a rare circumstance. [01:02:00] Speaker 04: It happens all the time. [01:02:04] Speaker 04: I don't understand what you just said. [01:02:07] Speaker 05: So, this IPR is the result of a... They're proposing, the patent owner proposed, take it outside of... Take the accused product in the associated... Oh, okay, sorry. [01:02:22] Speaker 04: Right, okay. [01:02:23] Speaker 05: That's fine. [01:02:24] Speaker 04: I don't... It's a minor issue. [01:02:27] Speaker 04: I only address it because you raised it earlier. [01:02:33] Speaker 04: As the PTO's counsel got up here and said that their rule allows them to determine patentability without looking at the graph. [01:02:38] Speaker 05: Is that why you didn't argue anticipation still by Chakar because you didn't care? [01:02:43] Speaker 05: I'm confused with the whole procedural posture of this. [01:02:46] Speaker 04: So the issue, frankly, is that aqua products and then the board subsequent rule flipped the burden of proof that there was then no corresponding procedural change. [01:02:56] Speaker 04: So now the petitioner has 25 pages in which to make the best argument it thinks it can based on the grounds that it guesses the board will invalidate the original claims. [01:03:08] Speaker 04: We had multiple grounds of invalidity at issue on the original claims. [01:03:12] Speaker 04: We argued obviousness because that would apply regardless of what the grounds were on the original claim. [01:03:18] Speaker 05: So we had such limited space. [01:03:19] Speaker 05: Can I just stop? [01:03:22] Speaker 05: Is there any place in your brief where you specifically argued that the POP's new rule about the board having the discretion to raise readily identifiable grounds [01:03:39] Speaker 05: was not that the board didn't properly exercise that discretion where you argued the POP panel's decision as an abuse of discretion. [01:03:48] Speaker 04: I cannot point to a place in our brief where we argued that it was an abuse of discretion. [01:03:53] Speaker 04: I do think we argued the general principle that in this case it was readily identifiable and persuasive. [01:04:00] Speaker 00: Where is that? [01:04:03] Speaker 04: It is on [01:04:29] Speaker 00: I'm sorry. [01:05:08] Speaker 05: I mean, it seems to me all of your arguments were the board, the POP panel didn't do its job of looking at the entirety of the record and all of that. [01:05:20] Speaker 05: And I know this new exception came up in the POP panel, but you could have challenged it on appeal saying even if there's this exception, they abuse their discretion in finding that the board's decision didn't meet that decision. [01:05:38] Speaker 05: I'm looking at your response brief, your reply brief, the yellow. [01:05:48] Speaker 05: It doesn't even there talk about it was readily identifiable that these were anticipated. [01:05:54] Speaker 05: It was the board should have looked at the entirety of the record. [01:06:00] Speaker 05: Is there something in the language of any of this? [01:06:02] Speaker 05: I'm just looking at the table of contents. [01:06:07] Speaker 05: I mean, you should know what you argued in your briefs. [01:06:15] Speaker 04: In our reply brief on page 35, Your Honor, we said the POP decision was an arbitrary and capricious refusal to consider evidence because the facts of this case meet even the narrow discretion test articulated by the USPTO and the POP, but the POP still blinded itself to the evidence. [01:06:36] Speaker 04: Thus, the board found the ground of unpatentability of the amended claims readily identifiable and persuasive using the record before. [01:06:43] Speaker 05: Okay. [01:06:43] Speaker 05: Is there anything in blue about that? [01:06:48] Speaker 05: Never mind, just go on. [01:06:55] Speaker 04: And again, Nike says the board must consider the entire record and determine whether or not the claims are unpatentable in the face of the prior art before it. [01:07:04] Speaker 04: That's all they did. [01:07:06] Speaker 04: The panel, they didn't do something. [01:07:08] Speaker 00: I mean, don't we have rules in our cases? [01:07:10] Speaker 00: I mean, you can't preserve an argument with yellow. [01:07:12] Speaker 00: I mean, unless you're saying they were the ones that raised it, you assumed it was in blue, so you clarified it in yellow. [01:07:18] Speaker 00: But the rule is the argument should be in blue. [01:07:22] Speaker 00: Yellow doesn't save you if you waved an argument in blue, does it? [01:07:26] Speaker 04: No, Your Honor. [01:07:26] Speaker 04: But I think that this case is ultimately decided by the fact that the POP didn't review the entirety of the record. [01:07:34] Speaker 04: The board did. [01:07:36] Speaker 04: We have one opinion that makes a decision based on the entirety of the record and another one that doesn't. [01:07:46] Speaker 00: If you don't deal with the cross-appeal, your friend doesn't get to respond. [01:07:54] Speaker 04: My only last point is that Dynaenergetics just got up and admitted. [01:08:00] Speaker 04: The whole purpose of their amendment was to respond to anticipation by Shacker. [01:08:04] Speaker 04: So clearly, they had noticed that it was at issue. [01:08:07] Speaker 04: Thank you. [01:08:13] Speaker 00: No. [01:08:13] Speaker 00: I think, did you hear him respond to your cross-appeal issue? [01:08:18] Speaker 03: He did not, Your Honor. [01:08:19] Speaker 00: Well, then you don't get to rebut. [01:08:21] Speaker 03: Understood, Your Honor. [01:08:22] Speaker 00: Thank you. [01:08:23] Speaker 03: Thank you, Your Honor. [01:08:24] Speaker 00: We thank both sides and the case is submitted.