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The United States Court of Appeals for the Federal Circuit is now open and in session.

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God save the United States and this honorable court.

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Good morning.

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We have four cases before the court this morning, three of which are being argued and one of which the parties have waived argument for.

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All four cases involve the same two parties and are all appeals from the Patent Trial and Appeal Board.

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The first case before the court is 20-1480, Intuitive Surgical, Inc.

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versus Ethicon, LLC.

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Mr. Katz, I understand you want to reserve three minutes for rebuttal?

[00:00:47] Speaker 05:
That's correct, Your Honor.

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Thank you.

[00:00:49] Speaker 02:
Okay.

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When you are ready, you may proceed.

[00:00:53] Speaker 05:
Thank you, Your Honors.

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May it please the court, my name is Stephen Katz, arguing on behalf of Pellant Intuitive Surgical.

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I'm going to be starting by discussing the Giordano-Wallace combination and the error of the board.

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And then I'll move on to Prisco.

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But of course, I'll address any questions the panel may have on anything.

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So on the Giordano-Wallace combination, the error of the board is that it ruled on a straw man combination that was not the combination proposed by the petitioner.

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It read in a unclaimed element.

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that the petitioner didn't state existed and that we say is error.

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Because in fact, the petition created a prima facie case of obviousness.

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We demonstrated where each element of the claim was found in the prior art and we provided a motivation to combine Giordano with the robot of Wallace.

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And in fact, the board held the claims 1 through 10 were obvious based on the Giordano and Wallace combination.

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And then in our reply brief for the board, we clarified the position.

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Once the patent owner raised this issue saying, well, you didn't state where the articulation control knob is, we clarified it in the reply brief.

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And so we believe it was.

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I think that's the real pitch, the difference between what constitutes a clarification and what constitutes a change of theory.

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The board concluded that it was a change of theory, and that's obviously what your friend on the other side argues.

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Tell us exactly where in the petition you made that argument.

[00:02:37] Speaker 05:
Sure, Your Honor.

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And first of all, let me just clarify that I don't believe the board said we made a change in theory.

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Our reading of the board's decision is that we just weren't clear enough.

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In fact, we believe that that's exactly where a clarification is allowed.

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But where the argument is, is that we first laid out the Giordano-Shelton-Wallace combination which did not have an articulation.

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Then we added in the claims of articulation and we pointed out at Appendix 3964, Your Honor, that we were now adding the articulation control to the combination.

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And what we said at 3964 is that the articulation control

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would be added to the Shelton stapler first.

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And then at 3965, we said that new handheld stapler would be combined with Wallace in the same manner as the Shelton stapler was combined with Wallace.

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So we basically said, we already showed you why Shelton staplers combined with Wallace and why that's a good thing for robotic use.

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Now all we're doing is adding the articulation joint to the mix.

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And in fact, at 3964, we specifically quote that the articulation control can be on the handle.

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And we also provide a figure which shows the articulation control shaft.

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And so when we say go back to ground one to see how the combination with Wallace is made, there we say rip off the handle and put on a tool mounting portion so you can mount it onto the robot.

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And the robot will have these disks that get connected into the tool mounting portion to provide control.

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And the result is a robotically controlled instrument.

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Now, what the board said is, well, you didn't use those words.

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You didn't provide the detail you provided for other elements.

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And the answer there, Your Honor, is we didn't have to provide the same level of detail because we provided detail for claim elements.

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The articulation control is not a limitation of the claim.

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So we provided detail of how the articulation joint was connected, but what we didn't do was go into excruciating detail of how the articulation control would be connected.

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Is 3964 part of your petition?

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I mean, I asked you to show me in your petition where it's clear that you made these arguments and you pointed me to 3964.

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but maybe I'm missing something.

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Okay, so in the petition, my apologies.

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Yes, 3964 is the petition, Your Honor.

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Yes.

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Okay.

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Absolutely, I'm sorry.

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You threw me off there a bit.

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Yes, the 3964 is absolutely the petition, and it's where we discuss when we added the articulation joint, and then we refer back to prior discussions in the petition

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where we showed how the handheld instrument is combined with the robot.

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So you don't believe it was fair for the board to say that we were talking about a totally different combination?

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Yeah, we definitely were not talking about a different combination.

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And again, we read the board as saying we just weren't clear enough.

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Not that we were changing theories.

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We were basically silent on the point the board was interested in.

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What the board said was because you didn't say the words, move the articulation control, we are going to assume you must have meant to leave it alone.

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Okay?

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We certainly, board did not say nor did we say the articulation control would remain manual when you convert to a robot.

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No one would propose that.

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That doesn't make any sense.

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And no one suggests there's a benefit to that.

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And so what the board did was say, well,

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Unfortunately, you didn't say to move the articulation controls.

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We're going to assume it remains on the robot.

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That is not a position we ever stated.

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So we couldn't have changed our theory.

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We simply didn't explain in words that the articulation control moves.

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We thought it was self-evident from the petition that when you combine the handheld instrument with the robot, you move the controls over to the robot as we describe for the non-articulated.

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embodiment.

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And so that's, with my limited time, unless there's other questions on Wallace, I'd like to move over to the PRISCO.

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That's fine.

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Okay, thank you.

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So with the PRISCO decision, the board made a different error.

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Here, what the board did was immediately jump to the at once envisaged test of blue-clippso and kinamental.

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before even determining whether there was a disclosure.

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And this tainted the entire analysis, because essentially what the board did was say, I believe, Pat and owner, that a wrist is incompatible with a push-pull drive rod.

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And because it's incompatible, I don't think a posita would see that in the reference.

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Mr. Kast?

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This is Judge Clevinger.

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May I interrupt, please?

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I think your adversaries think you have a problem in having any right to argue the merits of the patentability decision on the 1481 appeal.

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The argument that your adversaries have made is that you're not a party to the final judgment and that you have no appeal rights to complain

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about the patentability decision in 1481.

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Why do you have the right to make the argument on the merits?

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Yes, Your Honor.

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If you're not a party to the final judgment.

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I've got two, possibly three, answers to that, Your Honor.

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The first is, I will explain that estoppel does not apply.

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And second, I'll explain that even if estoppel does apply, we absolutely have appeal rights now that a final written decision is entered.

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So they can't cross either hurdle.

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So let me first address the estoppel point.

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What we say is that we, the estoppel does not apply because we could not have raised or we did not raise in the other petitions or reasonably could have raised these grounds in the other two petitions that were simultaneously filed.

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The reason why we couldn't reasonably have raised it is because, in fact, the Claim 24 grounds that we provide takes more than 14,000 words.

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So we could not attack Claim 24 adequately with our three different grounds, Prisco, Giordano, and Tim Anderson, without filing multiple simultaneous petitions.

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And in fact...

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This is good, so here is the argument that you could have split your IPRs up in a different way addressing different claims and different IVRs.

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You know, just all the grounds for one set of claims and one IPR and all the grounds and another set of claims in a different IPR.

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And that that would be the tool that you would have to use to deal with the board's 14,000 word limit.

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You know, and another option would be to try to be more succinct, to be honest.

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I mean, that would be another way to do it.

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But how do you respond to that argument, that there was a way that you could have avoided this problem by setting up your IPRs a little bit differently?

[00:10:47] Speaker 05:
Right, and Your Honor, the answer to that is, in fact, that is not a viable option because, again, claim 20, assuming we have a right to bring the grounds we want to against claim 24.

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and that if they didn't institute any of those grounds, there would be no estoppel.

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We just take them elsewhere.

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It took more than 14,000 words just for Claim 24.

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If you add up the words, and this is something we point out in our reply brief, if you add up the words that we spend on Claim 24, including where we refer back to prior analyses, it is more than 14,000 words.

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So what I'm saying, Your Honor, is

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We could not have even filed a single petition on just Claim 24.

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It would have taken multiple petitions to put all our grounds down.

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If I disagree with you on that, what sort of advice would people have to heed, would petitioners have to heed in the future?

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Maybe don't raise all of your grounds and know that some of them you might have to raise elsewhere.

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What would be their consequence?

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Well, I think one issue, Honor, I think is that

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The board here instituted all the ground.

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So, for instance, the board could have said, look, we're not going to hear of this many cases and we're going to institute on Giordano Wallace but we're not going to institute on Prisco.

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We're just too much.

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If they had done that, there would be no estoppel, right?

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It would be a ground that the board refused to institute on and therefore, it would not have been, could not have been raised in the IPR process.

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We're kind of being penalized because the board did institute

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And they said, okay, we are going to... Yes, Ron.

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What about... I understand your position.

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What about, you know, the PTO, the government brief points out that you could have sought consolidation of the IPRs so that the dates would run at the same time.

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What about that point, that this problem could have been avoided by asking the board to,

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consolidate the IPRs such that the final decisions in all three came out at the same time?

[00:13:00] Speaker 05:
Your Honor, I've got two answers to that.

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Number one is, of course, if a stop-all doesn't apply, consolidation doesn't solve that issue.

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But the fact is, we thought we had done that.

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We consolidated the three proceedings for the final event

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in those proceedings, which was the hearing.

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And in fact, in the consolidation or in the hearing order, which granted was specifically the hearings, they did state, we are going to be consolidating the proceedings.

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So we thought we had succeeded in bringing them all together for the final oral argument event.

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And it was a single oral argument event.

[00:13:35] Speaker 02:
Did you ever ask that the IPRs be consolidated?

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I mean, the fact that they decided to hear them together doesn't mean there's a formal consolidation.

[00:13:43] Speaker 05:
Well, actually, Your Honor, I'm not, on this technicality, I'm not exactly sure, but they were not heard on the same day.

[00:13:49] Speaker 05:
It was a consolidated hearing, right?

[00:13:52] Speaker 05:
We, just like we're arguing now all three cases, we argue all three cases in one session.

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It was not just on the same day.

[00:14:00] Speaker 02:
But we did not- Do you want to save the rest of your time for rebuttal?

[00:14:04] Speaker 05:
Yes, Your Honor.

[00:14:04] Speaker 05:
Thank you very much.

[00:14:09] Speaker 02:
Okay.

[00:14:10] Speaker ?:
Okay.

[00:14:11] Speaker 02:
First, Mr. Tatai.

[00:14:16] Speaker 06:
Good morning, Your Honor.

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May it please the court?

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I'll start with the 1254 IPR.

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And I think it's important here to start with the petition and the board's findings regarding the petition.

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Intuitives' arguments for claims 11 and 24 were clear.

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And the board assessed the petition at appendix 150-151, and it was

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quite clear from the petition that the combination consisted of Shelton stapler for use with Giordano's articulation mechanism.

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Intuitives defined Giordano's articulation mechanism as the articulation control 16 and the articulation pivot 14.

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And then they went on to say you would take that resulting device and attach it to the Wallace robot.

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And it was clear from Intuitives brief, again,

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The articulation mechanism was the pivot 14 and the control 16 together on the shaft.

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And the board agreed that there was no argument in the petition regarding any relocation of the articulation control to move it into Wallace's tool mounting portion.

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And the board found this at appendix 149.

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Now, on appeal, intuitive as that.

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What's your response to your friend on the other side saying,

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Well, actually, all the board said is we were left and clear in the petition.

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They didn't say it wasn't in there.

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Well, we disagree with that.

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And if you look at appendix 149, it says we agree with patent owner that it is clear that the primary combination as set forth in the petition did not include any modification to Giordano's articulation control 16 to relocate its function into Wallace's tool mounting portion.

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So the board considered

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The petition looked for the argument that Intuitives said they were making and said it was not in the petition.

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And the board's assessment of what was in or not in the petition is, in our view, only reviewable for an abuse of discretion.

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And on this issue, Ethicon, in its patented response, pointed out the deficiencies of the combination.

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In reply, Intuitives tried to make a new argument that the articulation control would be relocated to the tool mounting portion.

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The board permitted Ethicon to file a list of improper reply arguments, and Ethicon listed this new argument in that listing of improper reply arguments.

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And in the final written decision, the board, again, agreed with Ethicon that the argument was not in the petition and did not address the reply argument.

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That decision by the board not to address the improper reply argument is only reviewable for an abuse of discretion, as we pointed out in our red brief.

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So simply put, Your Honor, the argument.

[00:17:11] Speaker 04:
Mr. Desai, Judge Klinger, what's your response to Mr. Katz's pointing to page 3964 in his petition?

[00:17:21] Speaker 06:
Well, I have that portion of the appendix up in front of me.

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And if we look at those pages of the petition on 3963 and 3964, these are the pages of the petition that the board assessed

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and said they do not include any modification to Giordano's articulation control.

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So the board made a finding that they looked at the petition, they looked at these pages and said, we don't see the argument you're making.

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We see a different argument.

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And the board's analysis was thorough here because they went through the petition and they said, well, there were specific components that you were arguing would be moved into the robotic tool base.

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And they went through all of those specific components that

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intuitive had said would be moved into the tool base.

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And none of those included the articulation control.

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So where intuitive in his petition wanted to argue that something was being moved in the tool base, they were specific.

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And they did not.

[00:18:21] Speaker 04:
Well, what about the statement, Mr. Desai, on page 3964?

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The petition said the placida would have been further motivated to add Giordano's articulation mechanisms of the statement shelter to the stapler.

[00:18:36] Speaker 06:
So the statement there is a prostheta would have been motivated to add Giordano's articulation mechanism to the Shelton stapler.

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Those are both the handheld stapler, Shelton and Giordano.

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So what they did was they started with Shelton stapler, which had no articulation.

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And then they added Giordano's articulation to that.

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And that was the articulation mechanism that has the pivot and the control on the shaft.

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So that sentence that Mr. Cass pointed you to

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was not about the combination with Wallace.

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It was first the starting point of Giordano plus Shelton.

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So that doesn't disclose.

[00:19:15] Speaker 06:
That sentence is not even about what you would do with the robotic system later on.

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It has nothing to do with Wallace.

[00:19:22] Speaker 06:
So I think the board was absolutely correct in saying this doesn't talk about moving the articulation control into Wallace's robotic system.

[00:19:33] Speaker 06:
One additional point I'll make about the argument for the 1254 is that intuitive argues that the board erred in requiring the petition to identify the location of an unclaimed element.

[00:19:50] Speaker 06:
This argument misses the mark for two reasons.

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First, Ethicon explained to the board that a postita would have been deterred from making the combination because it would result

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in a device that had an articulation control located on the instrument shaft.

[00:20:05] Speaker 06:
The board agreed and found intuitive's obviousness argument in the petition conclusory inadequate on this point, and that's at appendix 151.

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And then second, intuitive ignores the claim language that requires an articulation joint.

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The articulation joint has spine portions, and the proximal spine portion is operably coupled to the tool mounting portion, which is in turn

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coupled to the drive assembly of the robotic system.

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The point being, articulation control is part of the claim, and this is why the claims are clearly directed to an articulation joint controlled by the robotic system, and this is why the board found intuitive petition, which relied on the shaft-based articulation control inadequate.

[00:20:51] Speaker 06:
So the argument was tied to claim language, and there was a reason why

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the petitions failed to address how the claims specified the articulation joint is controlled.

[00:21:03] Speaker 06:
Unless Your Honors have any questions, I'll move on to the 1248 IPR.

[00:21:08] Speaker 06:
For this IPR, obviously the arguments by Mr. Kess were devoted mostly to the estoppel issue.

[00:21:17] Speaker 06:
Ms.

[00:21:17] Speaker 06:
Craven for the PTO is going to be addressing that issue, and we are aligned on that issue.

[00:21:22] Speaker 06:
So I was planning on going straight to the merits

[00:21:24] Speaker 06:
and letting Ms.

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Craven handle that issue.

[00:21:26] Speaker 06:
But we certainly agree that intuitive is not a party.

[00:21:30] Speaker 06:
It was not a party.

[00:21:31] Speaker 06:
It was terminated based on the sample and therefore has no standing to appeal this issue.

[00:21:36] Speaker 04:
Why was it terminated before the final judgment?

[00:21:40] Speaker 04:
Wasn't it terminated by the final judgment?

[00:21:43] Speaker 06:
I believe it was terminated by the final judgment, but the act that resulted in it was... Isn't it bound by the final judgment?

[00:21:53] Speaker 06:
Well, I think the Patent Office argues that it's not bound by that final judgment.

[00:21:57] Speaker 04:
Well, what do you argue?

[00:21:59] Speaker 04:
You're the party.

[00:21:59] Speaker 04:
The Patent Office is not the party.

[00:22:02] Speaker 06:
Well, the final written decision concerns Ethicon's rights in the patent, not any rights of intuitive.

[00:22:12] Speaker 06:
So in that sense, the judgment doesn't apply to intuitive.

[00:22:15] Speaker 04:
Well, I mean, assuming intuitive was

[00:22:20] Speaker 04:
tried to file another exactly the same IPR again, it would be dismissed on race to the condom on other grounds, wouldn't it?

[00:22:30] Speaker 06:
Well, they would be barred by a stopple because of the previous IPR decision.

[00:22:35] Speaker 04:
I know that.

[00:22:36] Speaker 04:
Wouldn't they also be, I mean, if you wanted to bring sanctions against them, they'd be barred by race to the condom.

[00:22:46] Speaker 06:
It's possible.

[00:22:46] Speaker 06:
Your Honor, I would say that first and foremost, they would be

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barred by estoppel, which is why they were terminated in the first place.

[00:22:55] Speaker 06:
The 1247 and the 1254 decisions were what caused the termination.

[00:23:00] Speaker 04:
The decision was made to terminate.

[00:23:04] Speaker 04:
Whether or not they're bound by the final judgment matters materially to intuitive because otherwise it doesn't have any standing to complain about the patentability decision before us.

[00:23:17] Speaker 04:
Do you concede that Intuity has standing to appeal the estoppel issue?

[00:23:28] Speaker 04:
Yes, that's a yes or no type question.

[00:23:32] Speaker 06:
Your Honor, I don't believe they have standing to appeal in the context of the 1248 decision.

[00:23:38] Speaker 06:
They're not a party.

[00:23:40] Speaker 04:
You don't believe they have the right to appeal even the merits of the estoppel decision.

[00:23:46] Speaker 06:
There's a jurisdictional statute that provides the rights to an appeal in the IPRs.

[00:23:58] Speaker 06:
It's 35 USD 141 and 35 USD 319.

[00:24:01] Speaker 06:
And that limits the court's jurisdiction to appeals brought by a party.

[00:24:06] Speaker 06:
And intuitive ceased to be a party when the board terminated intuitive from the IPR because of the estoppel provision.

[00:24:13] Speaker 06:
And so because they are not a party,

[00:24:15] Speaker 06:
They do not have appeal rights per the statute.

[00:24:17] Speaker 06:
So we would submit that they do not have the ability to appeal any of the decisions.

[00:24:22] Speaker 04:
Even to the question of whether or not the estoppel decision was correct.

[00:24:27] Speaker 06:
That is correct.

[00:24:29] Speaker 03:
Mr. Desai, this is Judge Stoll.

[00:24:31] Speaker 03:
But you agree, of course, that we need to look at the estoppel issue as we're determining whether, in fact, intuitive has the right to appeal and whether we would have jurisdiction over such an appeal, right?

[00:24:44] Speaker 06:
That's correct.

[00:24:46] Speaker 06:
Ultimately, whether they were properly terminated is a question of whether the estoppel applies.

[00:24:56] Speaker 04:
Right.

[00:24:56] Speaker 04:
And that's the question that's being raised by intuitive.

[00:24:59] Speaker 04:
And you told me a minute ago, we don't have any authority to hear that.

[00:25:06] Speaker 06:
I think the issue is they don't have the ability to appeal

[00:25:10] Speaker 06:
the final written decision of the board's decision on the prior art.

[00:25:16] Speaker 04:
Wait a second.

[00:25:17] Speaker 04:
You told me a minute ago they didn't have any right to appeal at all.

[00:25:21] Speaker 04:
Treat the final decision, final written decision, by the board as having two parts.

[00:25:28] Speaker 04:
Part one is estoppel.

[00:25:29] Speaker 04:
Part two is the merits of the patentability issue.

[00:25:35] Speaker 04:
Do we have authority to hear part one, the estoppel question?

[00:25:43] Speaker 06:
I believe.

[00:25:45] Speaker 04:
Yes or no.

[00:25:47] Speaker 06:
I don't believe you do.

[00:25:49] Speaker 04:
Don't believe it.

[00:25:50] Speaker 04:
Yes or no, we do not.

[00:25:52] Speaker 04:
So we have no authority to hear any part of this appeal on the 1481, whichever one it is.

[00:26:04] Speaker 06:
That's correct, Your Honor.

[00:26:07] Speaker 06:
Intuitive was not permitted to file a notice of appeal.

[00:26:10] Speaker 06:
They were not a party to the case.

[00:26:12] Speaker 02:
What if Council, and I know you're out of time, and we'll get to Ms.

[00:26:17] Speaker 02:
Craven in a second, but what if, for instance, that there weren't two parts, that the only part was a stopple and that the board never got to the merits?

[00:26:28] Speaker 02:
We wouldn't be able to review that?

[00:26:33] Speaker 06:
If the board had only terminated the proceeding and decided not to issue a final red decision?

[00:26:39] Speaker 06:
Yes.

[00:26:41] Speaker 06:
I believe the answer is intuitive would not be a party and would not have a right under the statute to appeal.

[00:26:46] Speaker 06:
Similar to the sense of a petitioner cannot appeal a decision on an institution, they were a party, but the statute gives them no right to appeal that.

[00:26:57] Speaker 02:
Okay.

[00:26:58] Speaker 02:
Thank you.

[00:27:00] Speaker 02:
All right.

[00:27:00] Speaker 02:
Let's hear from Ms.

[00:27:01] Speaker 02:
Craven.

[00:27:03] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:27:05] Speaker 00:
Why don't we just start where you were about whether this Court can review the estoppel decision.

[00:27:10] Speaker 00:
It is the director's position that this court has jurisdiction to review the estoppel decision because it's, in essence, determining its jurisdiction over the merits of the final written decision.

[00:27:22] Speaker 00:
So I thought I don't, the director's not arguing this court cannot review the estoppel decision now that, because that is what can be determined.

[00:27:32] Speaker 04:
Could you go through that once again, Ms.

[00:27:33] Speaker 04:
Fairman, and explain exactly why we have authority over the estoppel decision?

[00:27:41] Speaker 00:
It's my understanding this court always has jurisdiction to review its own jurisdiction.

[00:27:45] Speaker 00:
And in order to decide whether it has jurisdiction under 319 over the merits of the final written decision with respect to patentability, it has to determine if intuitive is a party that can appeal and has a right to appeal under the 319 statute.

[00:28:01] Speaker 00:
And in order to do that, the jurisdictional fact is whether the estoppel decision is correct.

[00:28:07] Speaker 00:
So this court in order in aid of its own jurisdiction has to

[00:28:11] Speaker 00:
review the estoppel decision.

[00:28:15] Speaker 04:
So we say it's a party to the proceeding insofar as the estoppel decision was made?

[00:28:21] Speaker 04:
Is that what you're saying to me?

[00:28:23] Speaker 00:
Well, the final written decision was two parts.

[00:28:26] Speaker 00:
As Your Honor said, first it was deciding at the cons motion to terminate, which had the estoppel, and then whether the board was going to exercise its discretion to issue the final written decision.

[00:28:37] Speaker 00:
And after that, there was the final written decision with respect to patentability.

[00:28:41] Speaker 00:
The board could have issued those as two separate documents.

[00:28:46] Speaker 00:
They're two separate decisions.

[00:28:48] Speaker 00:
But the first decision, the estoppel decision in deciding whether to issue a final written decision is that estoppel decision requires this court to determine whether intuitive actually was correctly terminated as a party in order to determine whether it has that appeal right under 319.

[00:29:11] Speaker 03:
Ms.

[00:29:11] Speaker 03:
Craven, this is Judge Stoll.

[00:29:13] Speaker 03:
So let me give you a quick hypothetical.

[00:29:16] Speaker 03:
Let's just confirm for a minute that the board got it wrong and it's a stop-all decision.

[00:29:21] Speaker 03:
You were saying that it would be appropriate for us to review that a stop-all decision and if we concluded differently than the board, then we would be able to review the merits as well.

[00:29:34] Speaker 03:
Is that correct?

[00:29:37] Speaker 00:
Correct.

[00:29:37] Speaker 00:
So the acceptable decision is the board's decision terminating intuitive as a party so that they would no longer be a party to the final written decision.

[00:29:45] Speaker 00:
But if this court thought the board's decision was incorrect, that means intuitive and intuitive shouldn't have been a stop.

[00:29:52] Speaker 00:
Then they are a party, still a party to the final written decision, and they could appeal the merits because they would have a statutory right under 319 to appeal.

[00:30:02] Speaker 02:
This is Judge O'Malley.

[00:30:05] Speaker 02:
What if

[00:30:06] Speaker 02:
Let's talk then about the estoppel decision.

[00:30:12] Speaker 02:
Do you agree with Mr. Katz that they actually, that the board actually said it was consolidating the cases?

[00:30:20] Speaker 00:
That is not the way I read it and it's not the way the board read it's consolidation for the hearing.

[00:30:26] Speaker 00:
The point was to, it was on petitioner's motion to consolidate the hearing for the convenience of the party and the board and it also included another IPR.

[00:30:36] Speaker 00:
that's not part of this appeal and the board consolidated just for the purpose of the hearing but there was no formal request for consolidation of the IPRs.

[00:30:47] Speaker 00:
The IPRs were never consolidated and there was no request to just even coordinate the schedules so that since the institution decision the schedules have been off kilter so that the four

[00:31:01] Speaker 00:
for 248 IPR was running behind the other IPRs and there was no request to even coordinate those schedules so that they would all have a final written decision on the same day.

[00:31:13] Speaker 00:
The request was simply to coordinate the oral hearing.

[00:31:19] Speaker 02:
I have one more question.

[00:31:22] Speaker 02:
I guess the real issue is, is this a question of raising form over substance or is this the point

[00:31:31] Speaker 02:
is that the statute requires this result because they didn't seek to formally consolidate.

[00:31:39] Speaker 00:
The statute requires it if they reasonably could have raised these grounds.

[00:31:44] Speaker 00:
The statute doesn't say anything specific for simultaneous versus serial file petitions.

[00:31:49] Speaker 00:
It's when the final written decision is issued.

[00:31:53] Speaker 00:
But Congress, through the AIA, gave intuitive and petitioners other ways to deal with concurrent IPRs.

[00:31:59] Speaker 00:
The director can consolidate them, and the board can coordinate schedules.

[00:32:04] Speaker 00:
And this is only the second time this issue has come before the court for concurrent IPRs.

[00:32:08] Speaker 00:
So virtually all other petitioners are coordinating either their petitions or their trials to result in final written decisions on the same day and not trigger a stop-all.

[00:32:19] Speaker 02:
Okay.

[00:32:20] Speaker 02:
Thank you.

[00:32:21] Speaker 02:
We'll hear from Mr. Katz.

[00:32:24] Speaker 05:
Thank you, Your Honor.

[00:32:26] Speaker 05:
Very quickly, just want to address a Wallace point made and then move right into a stopple.

[00:32:32] Speaker 05:
So my friend pointed you to Appendix 151 discussing the board decision.

[00:32:38] Speaker 05:
There the board actually said that Giordano's articulation mechanism uses a shaft-mounted articulation control.

[00:32:46] Speaker 05:
And that drove the board decision.

[00:32:48] Speaker 05:
That actually is clearly wrong.

[00:32:50] Speaker 05:
Our petition pointed out that

[00:32:52] Speaker 05:
The articulation control can reside on the handle.

[00:32:57] Speaker 05:
And we're not relying just on 3964.

[00:32:59] Speaker 05:
To be very clear, 3964 shows it's on the handle.

[00:33:04] Speaker 05:
Appendix 3905 says for an earlier claim, you remove the handle and replace it with the tool mounting portion.

[00:33:13] Speaker 05:
Turning to the estoppel point, working backwards a little bit.

[00:33:17] Speaker 05:
Um, if you actually look at appendix 3065, the board says, um, we see no harm in consolidating all three proceedings.

[00:33:27] Speaker 05:
However, if patent owner has good cause for opposing consolidation of the three identified proceedings, patent owner should contact the board.

[00:33:36] Speaker 05:
So while that was an issue for the hearing, um, the language was broader and certainly we did not expect that we weren't

[00:33:45] Speaker 05:
synchronizing all the cases by doing that.

[00:33:51] Speaker 05:
Turning to the estoppel issue, even if there's estoppel, and again, we don't believe there is, and I've heard nothing in either argument suggesting that we could have actually complied with the word limit, and so we think we fall outside the reasonably could have raised issue, that we could not have reasonably raised.

[00:34:06] Speaker 05:
But even assuming that, of course we were a party, and we were a petitioner, so we were definitely a party to the IPRs,

[00:34:13] Speaker 05:
And I would draw your attention to the one case from the Supreme Court that both the patent owner and patent office cites to, which is the Karsher v. May case.

[00:34:24] Speaker 05:
In that case, at 484 US at 81, the Supreme Court's very clear that they reviewed the entire proceedings to see whether the appellant, the purported appellant, would be a party.

[00:34:37] Speaker 05:
They didn't just say, we only look at the judgment.

[00:34:41] Speaker 05:
May I finish this one thought, Your Honor?

[00:34:43] Speaker 02:
Yes, you may.

[00:34:45] Speaker 05:
The language is that they look at each point in the proceeding below, and they determine that the purported appellant was not a party at any point.

[00:34:55] Speaker 05:
And so it's not a question of whether you're a party right at the last second.

[00:35:00] Speaker 05:
We clearly were a party, and we would say that the board can't remove jurisdiction of this court by just doing a termination in the final reading.

[00:35:08] Speaker 04:
Okay.

[00:35:11] Speaker 04:
Mr. Casper, the statute says that you can't maintain a proceeding once you're stopped, if you're stopped.

[00:35:20] Speaker 04:
So wouldn't participation in the appeal here be maintaining the proceeding on the merits?

[00:35:29] Speaker 05:
We don't believe so because we believe that the... Because the proceeding... Yeah, I'm sorry, Your Honor.

[00:35:36] Speaker 05:
We read the statutes saying the proceeding at issue there is the proceeding before the board.

[00:35:41] Speaker 05:
And an appeal is actually a different proceeding now before this court where we're challenging what the board did.

[00:35:47] Speaker 05:
And so we don't see the proceeding before the board ended with a final written decision.

[00:35:54] Speaker 05:
And then we appealed that.

[00:35:55] Speaker 05:
And we don't view this as the same proceeding.

[00:35:58] Speaker 05:
We are now appealing a proceeding where we were a party.

[00:36:03] Speaker 02:
OK, thank you.

[00:36:06] Speaker 05:
Thank you, Your Honor.