[00:00:03] Speaker 01:
21, 2099 and 2100.

[00:00:04] Speaker 01:
Mr. Coyne again when you're ready.

[00:00:12] Speaker 01:
Can you hear us okay now Judge Lynn?

[00:00:28] Speaker 01:
Judge Lynn can you hear us now?

[00:00:32] Speaker 04:
Yes, again.

[00:00:33] Speaker 04:
Yes, again.

[00:00:34] Speaker 04:
I was just having a little trouble hearing the judge's questions.

[00:00:38] Speaker 01:
Yeah, we moved our microphones to right in front of us, so hopefully that will help.

[00:00:43] Speaker 04:
Yeah, I know.

[00:00:43] Speaker 04:
You're coming across loud and clear.

[00:00:45] Speaker 04:
Thank you very much.

[00:00:46] Speaker 01:
Okay.

[00:00:49] Speaker 01:
Mr. Klein, thank you for bearing with us.

[00:00:52] Speaker 02:
No problem.

[00:00:53] Speaker 02:
Please report.

[00:00:55] Speaker 02:
So in this enterprise review, the initial thing I think that needs to be addressed is that for part of it, so for the IPR 2020-0071, I believe it's 970, there's the issue of whether Fest Medical has standing to even bring this appeal.

[00:01:15] Speaker 02:
And I'd like to submit that.

[00:01:17] Speaker 00:
Counsel, I'm sorry to interrupt.

[00:01:18] Speaker 00:
But do you mean, is there a standing with respect to claim one to bring the appeal?

[00:01:24] Speaker 02:
Right.

[00:01:25] Speaker 02:
Yeah, that's what I was actually going to just say.

[00:01:27] Speaker 02:
That it's only related to claim one.

[00:01:30] Speaker 02:
Claim 18 was also an issue in that it knows.

[00:01:33] Speaker 02:
Claim 18, there's no appeal on that.

[00:01:36] Speaker 02:
It's just with respect to claim one.

[00:01:38] Speaker 02:
And so the standing issue, the claim cancellation issue, only relate to claim one.

[00:01:44] Speaker 02:
And I'd submit that Best Medical has standing because Best Medical was injured, in fact, by the board's decision.

[00:01:50] Speaker 01:
So can you just clarify this for me?

[00:01:52] Speaker 01:
Claim one is the one that you canceled in reexamination.

[00:01:56] Speaker 02:
That's correct, Your Honor.

[00:01:57] Speaker 01:
But you didn't fill out whatever or do whatever you needed to do to cancel it in the IPR.

[00:02:04] Speaker 02:
Well, that, I think, is probably what one of the disputes is.

[00:02:08] Speaker 01:
Well, you didn't do what they usually do in IPR, which is submit some kind of statutory disclaimer or the like.

[00:02:15] Speaker 02:
Well, Your Honor, that would be maybe ordinary if the claim was canceled as part of the Interparters Review.

[00:02:23] Speaker 02:
This is different because there was a different co- No, I understand.

[00:02:26] Speaker 01:
But that's what we're looking at for the IPR.

[00:02:29] Speaker 01:
You didn't do anything in the IPR formally.

[00:02:31] Speaker 01:
canceled the claim, you're relying on your cancellation in the re-exam.

[00:02:36] Speaker 02:
Well, yeah, but we did bring it to the board's attention that the claim was canceled.

[00:02:42] Speaker 02:
But you're correct that we did not file a disclaimer.

[00:02:46] Speaker 01:
Right.

[00:02:46] Speaker 01:
And I would submit that.

[00:02:48] Speaker 01:
OK, I want to get, what's happening with the re-exam now?

[00:02:52] Speaker 01:
Is it final?

[00:02:54] Speaker 02:
The re-exam is final.

[00:02:56] Speaker 02:
Completely final.

[00:02:57] Speaker 02:
Well, it's final.

[00:02:58] Speaker 02:
It's on appeal.

[00:02:59] Speaker 02:
It's not final.

[00:03:01] Speaker 02:
Well, it's final in our view.

[00:03:03] Speaker 01:
I'm capable with words.

[00:03:04] Speaker 01:
I just want to, is it final, or is it on appeal to the PTAB?

[00:03:08] Speaker 02:
It's on appeal to the PTAB.

[00:03:09] Speaker 01:
So it's not final.

[00:03:11] Speaker 02:
If that's the definition of what final is.

[00:03:13] Speaker 02:
I mean, from our perspective.

[00:03:14] Speaker 01:
Well, I think the definition of a final agency action is when it's final and the appeal period has been exhausted.

[00:03:21] Speaker 01:
And so it's not.

[00:03:22] Speaker 02:
From that, yes.

[00:03:24] Speaker 02:
Under that definition, it would not be final.

[00:03:26] Speaker 02:
From our perspective,

[00:03:29] Speaker 02:
during the re-examination.

[00:03:31] Speaker 02:
And that was one, actually, that the petitioners have held these filed concurrently with this.

[00:03:40] Speaker 02:
The claim was canceled, and there was no kind of reservation of we'll bring it back later.

[00:03:46] Speaker 01:
What I mean by final in that regard is- Well, you have some squirrely language with the cancellation.

[00:03:53] Speaker 01:
I don't have it right in front of me actually.

[00:03:56] Speaker 00:
It was without prejudice or disclaimer, something like that.

[00:04:00] Speaker 02:
It was without prejudice because of basically the

[00:04:07] Speaker 02:
The other actions, I mean, there were two litigations pending at that point in time, one of which has since settled.

[00:04:13] Speaker 02:
There was the inter-partisan review proceeding going on.

[00:04:17] Speaker 02:
So it was without prejudice in terms of not that we can't make arguments in other cases.

[00:04:24] Speaker 00:
How is the board to understand it, though?

[00:04:26] Speaker 00:
I mean, when the board sees without prejudice, claim one canceled, without prejudice or disclaimer, and they have a duty under SAS to review all the claims that are in the petition, including claim one, why is it unreasonable for them to think they have to treat claim one?

[00:04:45] Speaker 00:
Because it's not just canceled.

[00:04:47] Speaker 00:
It's canceled without prejudice or disclaimer.

[00:04:54] Speaker 02:
Well, I think it was a prejudice or disclaimer with regard to kind of arguments that we've made regarding the prior art.

[00:05:01] Speaker 00:
But how was the board to know that that's what you meant?

[00:05:07] Speaker 02:
I'm not sure that we got into that during the discussion, during the board presentation.

[00:05:14] Speaker 02:
But I guess from our standpoint, the fact that it was canceled, even if there was that caveat, which I'd submit is

[00:05:23] Speaker 02:
You know, it was a double patenting rejection.

[00:05:26] Speaker 02:
And so that caveat is oftentimes made, in our view, during patent office proceedings.

[00:05:33] Speaker 02:
But the fact remains that the claim was canceled.

[00:05:38] Speaker 01:
But the problem for you is the board is, this is not the re-exam.

[00:05:42] Speaker 01:
This is an IPR.

[00:05:43] Speaker 01:
And the board does have the obligation under SAS.

[00:05:46] Speaker 01:
And if you haven't filed some kind of formal cancellation or disclaimer in the IPR, they have to go forward with it.

[00:05:54] Speaker 01:
And you didn't.

[00:05:55] Speaker 01:
So let me get back to what you were trying to get to, which is let's just assume that the board was correct to rule on claim one and to find it invalid.

[00:06:08] Speaker 01:
If that's the case, then it seems to me you're probably correct that you're outstanding because that claim was canceled.

[00:06:17] Speaker 01:
That claim was not fully and finally canceled.

[00:06:20] Speaker 01:
And my question to you is,

[00:06:24] Speaker 01:
Are you now, I'm a little confused as to where we are, because the re-exam is still going on.

[00:06:31] Speaker 01:
So that's not final.

[00:06:33] Speaker 01:
So the claim is not finally canceled as a result of a final re-examination decision.

[00:06:39] Speaker 01:
So are you agreeing that the claim should be considered finally canceled for purposes of this appeal?

[00:06:47] Speaker 01:
Because here's the thing.

[00:06:50] Speaker 01:
If that's the case, then why isn't the appeal of that one moot?

[00:06:55] Speaker 01:
If you agree.

[00:06:56] Speaker 01:
And if you don't agree, if you agree that it's still pending in the re-exam, then the board was right to consider it and you're right to appeal it.

[00:07:06] Speaker 01:
And it's not moot and you certainly have standing and we can get to the merits.

[00:07:12] Speaker 02:
Maybe I should clarify.

[00:07:13] Speaker 01:
You have kind of contradictory arguments, which is,

[00:07:17] Speaker 01:
The board shouldn't have addressed this at all because it was canceled and therefore wasn't before then.

[00:07:24] Speaker 01:
But now you're saying you have standing.

[00:07:26] Speaker 01:
If it was canceled and wasn't before then, then I don't know if it's standing or moodness.

[00:07:31] Speaker 01:
We can't be arguing about the merits of it now.

[00:07:35] Speaker 01:
What is it?

[00:07:36] Speaker 01:
What's your view of how this should play out?

[00:07:39] Speaker 02:
So let me back up a second also to clarify too.

[00:07:43] Speaker 02:
So the claim one was canceled in the re-examination.

[00:07:46] Speaker 02:
That is on appeal.

[00:07:48] Speaker 02:
the cancellation of claim one or the double patented rejection as part of claim one is not part of the appeal.

[00:07:56] Speaker 02:
So we're not arguing, we're not asserting that claim one is coming back or that we're going to reinstate it in any event.

[00:08:04] Speaker 00:
So at that point, when you have a notice of appeal, you've filed with the board, you've canceled the claim,

[00:08:10] Speaker 00:
And you're not appealing identifying claim one as an issue or the double patenting as an issue.

[00:08:16] Speaker 00:
At that point, is your claim finally canceled?

[00:08:21] Speaker 02:
In our view, yes.

[00:08:22] Speaker 02:
And I think, actually, in the petition, in the appellee's view, too, I think some of the arguments was originally, well, that the reexamination is still ongoing.

[00:08:32] Speaker 02:
There wasn't a final office action until sometime after the board made its decision.

[00:08:40] Speaker 02:
But in our view, once we made the cancellation, there was a final rejection.

[00:08:45] Speaker 02:
We appealed to the board.

[00:08:49] Speaker 02:
But claim one was not part of the appeal.

[00:08:52] Speaker 01:
So the agency, the final action is final as to claim one?

[00:08:57] Speaker 02:
That's correct.

[00:08:58] Speaker 01:
So then why is it?

[00:09:00] Speaker 01:
Your appeal, properly considered, moved.

[00:09:04] Speaker 02:
Because, and that's where I got to in the beginning, what we considered to be an injury in fact.

[00:09:10] Speaker 02:
And this, frankly, may be a somewhat novel issue, because the injury in fact, we're asserting, yes, claim one was canceled for the 096 PAC.

[00:09:19] Speaker 02:
But the board's decision, since they went ahead with it anyway,

[00:09:24] Speaker 02:
was cited by the- Because it wasn't final.

[00:09:26] Speaker 01:
Let's just start with the premise that I agree that the board could go forward with it because there hadn't yet been a final office action.

[00:09:36] Speaker 02:
Well, under that premise, I think if it's not final, then I think that we would still be injured in fact because that determination of claim hasn't been made yet.

[00:09:46] Speaker 01:
Can we just clarify one more time the timing of this?

[00:09:49] Speaker 01:
When did the final office action

[00:09:56] Speaker 01:
Was it after or before the board did the IPR?

[00:10:02] Speaker 02:
Well, it was before the board issued its final written decision.

[00:10:05] Speaker 00:
And the notice of appeal that you filed was before the board decision in the IPR, right?

[00:10:14] Speaker 00:
The notice of appeal in the reading exam.

[00:10:16] Speaker 02:
Oh, the notice of appeal in the reading exam.

[00:10:17] Speaker 02:
Yes, I'm sorry.

[00:10:19] Speaker 02:
Yes, that was before that, correct.

[00:10:23] Speaker 04:
Mr. Coyne, let me see if I got it correct or not.

[00:10:27] Speaker 04:
And my understanding is that claim one was canceled in the re-exam.

[00:10:33] Speaker 04:
And at the time, the board in the IPR made its final decision.

[00:10:43] Speaker 04:
While that claim was canceled, it wasn't final because the re-exam was still pending.

[00:10:48] Speaker 04:
Is that correct?

[00:10:51] Speaker 04:
That's what the board and the IPR said.

[00:10:55] Speaker 04:
We're going to address claim one, because even though it was canceled, the proceedings are ongoing, and it's not final.

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

[00:11:03] Speaker 02:
Well, yeah, specifically.

[00:11:04] Speaker 02:
Just bear with me.

[00:11:07] Speaker 04:
But then, before you appealed to our court, you filed an appeal in the re-exam, but did not attempt to reinstate claim one.

[00:11:23] Speaker 04:
Correct.

[00:11:23] Speaker 02:
That's correct.

[00:11:25] Speaker 04:
So claim one in the re-exam was dead and not subject to reinstatement or revival or anything else prior to the time you filed your appeal in this case to our court.

[00:11:42] Speaker 04:
Correct?

[00:11:43] Speaker 02:
That's correct.

[00:11:45] Speaker 04:
It seems to me that you don't have standing with respect to

[00:11:49] Speaker 04:
the obviousness question per se on claim one, my understanding is that's not really what you're asserting.

[00:11:58] Speaker 04:
You're claiming a basis for injury on the fact that the board's decision on that question is ex-taunt and causes injury.

[00:12:15] Speaker ?:
Correct?

[00:12:16] Speaker 02:
That's correct, because the fact the board went forward with the decision, even though the claim is canceled, caused injuring fact to the best medical because of what the examiner did in a co-pending re-examination on a 2A3 patent, which is a parent patent to the 096 patent.

[00:12:36] Speaker 04:
I just wanted to clarify what exactly it is that we need to wrestle with.

[00:12:42] Speaker 04:
with respect to the standing question.

[00:12:44] Speaker 04:
And it seems to me that the standing question is all about whether there is some definite, particularized concrete injury caused merely by the statements made by the board in its decision on Plan 1.

[00:13:05] Speaker 04:
And if that's correct, then we can

[00:13:08] Speaker 04:
We can address that, and I'm not commenting on the merits one way or the other.

[00:13:12] Speaker 04:
I just want to see if I can clarify what exactly it is we have to deal with.

[00:13:18] Speaker 02:
Right.

[00:13:18] Speaker 02:
It's the fact that the board's decision was issued, and that decision is now being used by an examiner

[00:13:26] Speaker 02:
and a different patent re-examination to say, I'm bound by what the PDAP said in this 096 patent.

[00:13:32] Speaker 00:
This is a third proceeding.

[00:13:34] Speaker 00:
There is a third proceeding in which the patent examiner is saying that he is maybe essentially bound, might be the right words.

[00:13:43] Speaker 00:
I don't recall.

[00:13:45] Speaker 00:
There's a claim that I guess is similar to claim one.

[00:13:47] Speaker 00:
And the prior rejection involves the same prior that the board was looking at in the IPR.

[00:13:53] Speaker 00:
And I guess you're arguing that the examiner has collaterally stopped, or there's issue preclusion.

[00:13:59] Speaker 00:
Am I right?

[00:14:00] Speaker 02:
Well, the examiner feels that he is wrong.

[00:14:02] Speaker 00:
What if the examiner is wrong?

[00:14:05] Speaker 01:
And also, why does that give you standing in this case?

[00:14:08] Speaker 01:
You can assert those arguments in that case, but not in this case.

[00:14:13] Speaker 01:
If you have no interest in getting claim one restored, then how can you have standing?

[00:14:23] Speaker 01:
And can you just clarify?

[00:14:25] Speaker 01:
Because I've heard two different answers, and maybe my questions aren't clear.

[00:14:28] Speaker 01:
The agency action became final office action

[00:14:35] Speaker 01:
And then your notice of appeal, which didn't include claim one, was it before or after your notice of appeal here?

[00:14:46] Speaker 02:
It was before the notice of appeal here.

[00:14:51] Speaker 01:
Well, then it seems like you do have a standing problem.

[00:14:55] Speaker 01:
If your view is by not appealing claim one, your cancellation became final, then you have no legal interest in that anymore.

[00:15:06] Speaker 01:
You know, it was what legally cannot.

[00:15:10] Speaker 01:
And so if your theory is this decision out here may impact a different litigation,

[00:15:18] Speaker 01:
That may give you arguments about litigation, but I don't see how it gives you standing here.

[00:15:24] Speaker 02:
Because I guess our argument, again, is that we were injured, in fact, by the fact the board issued that decision.

[00:15:30] Speaker 01:
Sure.

[00:15:30] Speaker 01:
You were maybe injured and maybe had standing at the time the board issued the decision up to and including right until you decided not to appeal that decision.

[00:15:42] Speaker 01:
And no longer do you have any standing because you have no interest in getting claim one overturned.

[00:15:48] Speaker 02:
Well, we've been interested in either having that decision vacated, or if it's determined that there is potential standing on the merits, the obviousness in terms of Oldham and Vigors wasn't there.

[00:16:03] Speaker 02:
Because Vigors basically says you couldn't do what the petitioner said

[00:16:11] Speaker 02:
You should be able to take these references.

[00:16:14] Speaker 01:
We've had a lot of questions and you've exhausted your rebuttal time.

[00:16:16] Speaker 01:
I'll restore all three minutes.

[00:16:17] Speaker 01:
Can we hear from the other side now?

[00:16:19] Speaker 02:
Thank you, Your Honor.

[00:16:39] Speaker 01:
Good enough, Your Honor.

[00:16:40] Speaker 01:
Well, tell me how to say it correctly.

[00:16:42] Speaker 03:
It's le mieux, but the sounds aren't in American English.

[00:16:45] Speaker 03:
I can't say it with the accent.

[00:16:46] Speaker 03:
I've grown up with it.

[00:16:48] Speaker 03:
That's why I go by Ron, and I just answer to that, and it makes it a lot easier.

[00:16:53] Speaker 03:
Good morning, Your Honors.

[00:16:55] Speaker 01:
Can you just clarify and make sure that we all understand the timeline?

[00:16:58] Speaker 01:
Because I think the timeline is very important.

[00:17:01] Speaker 01:
At the time the board issued its decision here, they canceled the claims and re-exam, but there wasn't a final agency action.

[00:17:11] Speaker 03:
That's correct.

[00:17:12] Speaker 03:
And as the court has pointed out under SAS, the board then was required to go ahead and issue a rule.

[00:17:17] Speaker 01:
But at some point between issuing that decision and appealing to us, there was an agency office, this final agency office decision, and they chose not to appeal claim one.

[00:17:30] Speaker 01:
And so that became final.

[00:17:31] Speaker 03:
That's a pretty good fact.

[00:17:32] Speaker 00:
Just to make sure I've got it right, I think that notice of appeal was filed on June 9, 2021.

[00:17:37] Speaker 00:
That's the notice of appeal to the board in the re-exam.

[00:17:41] Speaker 00:
And then the notice of appeal in this case was filed on June 25, 2021.

[00:17:46] Speaker 00:
Do you have that right?

[00:17:47] Speaker 00:
There's a several week difference.

[00:17:49] Speaker 03:
Yeah, the notice of appeal to this court was the last item that took place.

[00:17:53] Speaker 03:
Before then, there was a notice of appeal.

[00:17:56] Speaker 03:
There was a final office action in the 283, the other proceedings at that point.

[00:18:00] Speaker 03:
And there was a final office action in the 096 re-exam as well.

[00:18:05] Speaker 03:
So both of those final office actions had occurred prior to the notice of appeal.

[00:18:10] Speaker 03:
We agree completely with the sentiments that I've heard expressed by the bench today that there's no standing here.

[00:18:17] Speaker 03:
They lost it.

[00:18:17] Speaker 03:
I mean, it's one of those situations, be careful what you ask for.

[00:18:21] Speaker 03:
They filed a cancellation in the re-exam.

[00:18:24] Speaker 03:
They didn't file, though, the proper notice that they should have under 35, 316D, I believe.

[00:18:30] Speaker 03:
318D, I'm sorry.

[00:18:32] Speaker 03:
They had numerous ways to bring this to the attention to the panel before they issued this final written decision.

[00:18:39] Speaker 03:
They just didn't.

[00:18:40] Speaker 00:
So what about their argument, which is that they are still injured because of the examiner in another re-examination, perhaps maybe

[00:18:51] Speaker 00:
applying collateral estoppel or issue preclusion based on the board's finding with respect to claim one.

[00:18:57] Speaker 00:
Does issue preclusion even apply?

[00:19:00] Speaker 03:
I'm not sure that it does, Your Honor, and that's an issue that really should be part of the appeal from the final office action in the 283.

[00:19:06] Speaker 03:
They've posited that this somehow could create for them some collateral problem, or that the examiner has said he felt constrained by this.

[00:19:15] Speaker 03:
That's an issue that should be brought up in that appeal, which is still pending.

[00:19:18] Speaker 03:
That's too speculative for this court on the 096 patent to say, wait a second, there might be a problem in this other patent.

[00:19:27] Speaker 03:
We don't know for sure yet.

[00:19:29] Speaker 03:
and that appeal is still open and it's pending, for them to say that that's the injury, that's the concrete injury caused here that provides them standing in this case.

[00:19:38] Speaker 03:
They lost the standing in this case when they canceled their claim.

[00:19:43] Speaker 03:
They did not make it final before then, so the panel had to go ahead and issue its decision.

[00:19:48] Speaker 03:
And it wasn't made final until after the written decision had already occurred.

[00:19:52] Speaker 03:
Once they made it final, they lost jurisdiction to appeal that issue in this court.

[00:19:58] Speaker 03:
They can still address it in the 283 re-exam, but they lost the ability to address it here.

[00:20:10] Speaker 04:
Let me ask you a question about that.

[00:20:13] Speaker 04:
In the 283 re-exam, if at some point the determination is made that in fact there's a sufficient similarity in the claims that

[00:20:27] Speaker 04:
that the patoffs is bound by the earlier decision.

[00:20:35] Speaker 04:
What remedy does BMI have?

[00:20:39] Speaker 04:
I mean, I assume they can argue that, well, no, no, no.

[00:20:42] Speaker 04:
It's different.

[00:20:43] Speaker 04:
It's a different claim and a different scope.

[00:20:46] Speaker 04:
And it should not be binding.

[00:20:49] Speaker ?:
But if that decision doesn't have any merit to it,

[00:20:57] Speaker 04:
then they're stuck simply because of the fact of the earlier decision.

[00:21:04] Speaker 03:
Isn't that right?

[00:21:05] Speaker 03:
Well, I'm not sure that that would be the case necessarily, Your Honor, in terms of PTO procedure on that appeal.

[00:21:11] Speaker 03:
However, if they did, at that point they have concrete injury.

[00:21:15] Speaker 03:
Right now it's purely speculation as to whether or not something that may occur in this other co-pending appeal may cause damage.

[00:21:24] Speaker 04:
The point I'm trying to make is that we don't know whether this is going to happen or not.

[00:21:31] Speaker 04:
But the point I'm trying to make is if it does happen, then it seems to me that their arguments are constrained.

[00:21:40] Speaker 04:
Because the only thing they can argue is that, well, no, the claims in the 283 reads are different.

[00:21:48] Speaker ?:
And they're not close enough to create

[00:21:52] Speaker 04:
an obligation for us to follow the earlier rationale expressed in the 496, for example.

[00:22:03] Speaker 04:
But as I understand it, BMI is arguing that, well, because the board really shouldn't have made that decision in the first place, we'd like to get that removed so that that barrier isn't even there.

[00:22:17] Speaker 03:
I guess, Your Honor, my response to that would be is then they should seek vacator in that appeal.

[00:22:23] Speaker 03:
But it's not available here yet.

[00:22:25] Speaker 03:
If that's the problem, if they actually show in the 283 appeal that this decision has caused them somehow some concrete injury because of... Well, that doesn't seem to make sense either.

[00:22:35] Speaker 01:
How can you ask for vacator of a final decision in this case

[00:22:43] Speaker 01:
for another thing.

[00:22:45] Speaker 01:
Aren't you just limited to arguing that the board's decision was wrong, and that the examiner shouldn't follow it and the board shouldn't follow it?

[00:22:53] Speaker 03:
That would be true, Your Honor.

[00:22:54] Speaker 03:
That's right.

[00:22:55] Speaker 03:
There would have no collateral estoppel effect, and therefore it shouldn't follow it.

[00:22:58] Speaker 01:
Well, even if they decide they're going to follow collateral.

[00:23:00] Speaker 01:
I mean, the ultimate answer is they're going to get an appeal to us, and we're not bound by that board decision in this case, are we?

[00:23:08] Speaker 03:
No.

[00:23:09] Speaker 01:
So even if the board finds itself collaterally stopped by this decision, they can still raise all their arguments on the merits to us.

[00:23:17] Speaker 03:
That is correct, Your Honor.

[00:23:19] Speaker 03:
That is correct.

[00:23:20] Speaker 04:
And that's why in this case- I suppose I should have asked Mr. Coyne, but my understanding is that they did not request reconsideration of the board's final decision in the IPR that's before us on this issue.

[00:23:37] Speaker 04:
Is that right?

[00:23:40] Speaker 03:
Correct.

[00:23:40] Speaker 04:
They did not.

[00:23:41] Speaker 04:
They didn't go back to the board after the final written decision and say, excuse me, we shouldn't have addressed plan one.

[00:23:49] Speaker ?:
Plan one was canceled.

[00:23:51] Speaker 04:
And you know, this might hurt us down the right road.

[00:23:56] Speaker 04:
Please remove this.

[00:23:58] Speaker 03:
That's correct, Your Honor.

[00:23:59] Speaker 03:
They did not seek reconsideration of that part of the final written decision.

[00:24:05] Speaker 03:
And it relates to their request for vacator here, Your Honor.

[00:24:08] Speaker 03:
They can't ask for vacator when it's a problem of their own doing.

[00:24:13] Speaker 03:
The case law is pretty clear on that.

[00:24:14] Speaker 00:
You're talking about Monsignor?

[00:24:16] Speaker 03:
Monsignor.

[00:24:17] Speaker 03:
And even some of the other cases that have been cited in there, the focus, because it's an equitable remedy, is what caused the problem.

[00:24:24] Speaker 03:
What caused the problem here was their failure to follow proper procedure and officially either take a statutory disclaimer, file the appropriate motion,

[00:24:33] Speaker 03:
They had a number of different ways to do it.

[00:24:35] Speaker 03:
They just chose not to do any of them.

[00:24:37] Speaker 00:
This is mostly where it would apply, where the case becomes based on the unilateral action of you, your client.

[00:24:44] Speaker 03:
That's right.

[00:24:45] Speaker 03:
That's right.

[00:24:46] Speaker 03:
Some unilateral action that we would have taken, or if it happened while the appeal was pending.

[00:24:51] Speaker 03:
This all happens.

[00:24:52] Speaker 03:
This is why it goes to the standing issue.

[00:24:53] Speaker 03:
This all occurred before they even filed their notice of appeal, which takes away their ability to file the appeal on claim one in the first place.

[00:25:05] Speaker 03:
I would address any of the other issues, but they have been raised by council.

[00:25:08] Speaker 03:
So unless the panel has questions, I'm willing to concede the rest of my time.

[00:25:12] Speaker 01:
Thank you.

[00:25:34] Speaker 02:
Thank you for storing some rebuttal time.

[00:25:37] Speaker 02:
I think one thing was said is that, and I think there's been some allusion to her, that Best Medical didn't raise this before the board.

[00:25:45] Speaker 02:
Best Medical did raise the fact of the cancellation before the board.

[00:25:48] Speaker 02:
We did it in our sir reply brief.

[00:25:50] Speaker 02:
We did it oral argument.

[00:25:51] Speaker 02:
We updated our mandatory notices.

[00:25:53] Speaker 02:
The board knew full well the claim was canceled.

[00:25:56] Speaker 01:
But isn't the real question here that what you're asserting as harm is just not sufficient harm to give you standing in this case.

[00:26:04] Speaker 01:
If you want to argue in the other proceeding that the board's decision is incorrect, you can.

[00:26:10] Speaker 01:
And it may be that because of the posture, the examiner is going to follow this board decision and the board's going to follow it.

[00:26:19] Speaker 01:
And you're going to have to come up to us to get an appeal of those issues.

[00:26:25] Speaker 01:
You're going to get an appeal of those issues, just not here, where there's no live controversy anymore.

[00:26:34] Speaker 02:
Well, Your Honor, I think that, first of all, the examiner, we have argued that this decision was incorrectly made to the examiner.

[00:26:43] Speaker 02:
The examiner said, I feel bound by what the board did.

[00:26:47] Speaker 02:
So he finally canceled the claims.

[00:26:49] Speaker 01:
You can argue the board that he shouldn't have felt bad.

[00:26:53] Speaker 02:
You're right.

[00:26:54] Speaker 02:
And then the board could say, look, we feel bound because it's very decisive with our other panel mates.

[00:27:02] Speaker 02:
We don't want to do that.

[00:27:04] Speaker 02:
And we could appeal it.

[00:27:05] Speaker 02:
But it's a myth.

[00:27:06] Speaker 02:
The damage, the final rejection has been made.

[00:27:09] Speaker 02:
Going through all that appeals.

[00:27:13] Speaker 00:
I just have a quick question.

[00:27:15] Speaker 00:
Does that re-examination involve varying medical systems?

[00:27:21] Speaker 02:
There has been a settlement with Varian Medical Systems.

[00:27:24] Speaker 02:
So Varian Medical Systems.

[00:27:25] Speaker 00:
The specific re-examination that we're talking about, which is the one in which the examiner has said they feel bound, is that ex-party or inter-parties?

[00:27:35] Speaker 00:
And if it's inter-parties, who is the party involved other than your client?

[00:27:39] Speaker 02:
It was ex-party.

[00:27:40] Speaker 02:
It was filed by Varian Medical Systems after this inter-parties review proceeding was initiated.

[00:27:48] Speaker 02:
So I mean, in our view, it was kind of almost a double-buddy the apple.

[00:27:52] Speaker 02:
They, you know, because of the double patent rejection.

[00:27:55] Speaker 00:
I'm just wondering why issue of preclusion would even apply.

[00:27:57] Speaker 00:
One of the elements for issue of preclusion is it's got to be between the same parties.

[00:28:01] Speaker 00:
Just having trouble with this whole idea that anybody's bound.

[00:28:05] Speaker 00:
But I understand it's not an issue before us, but it's an issue that could be raised in the re-exam.

[00:28:11] Speaker 01:
I mean, there's a difference between being stocked and bound or just agreeing with it as precedent.

[00:28:18] Speaker 01:
And you can always argue that the decisions of the examiner and the PTAB, you know, even if they feel like that to follow as precedent, are incorrect to us.

[00:28:29] Speaker 01:
I just don't see how there's anything beyond really speculative harm in this case.

[00:28:35] Speaker 01:
You gotta wait till there's actual harm in another case, because that's the only injury you're asserting is that it might harm you in another case.

[00:28:44] Speaker 02:
Well, I think, Your Honor, I think it's injury to the party, not to this case or to this patent.

[00:28:49] Speaker 01:
No, I don't think that's right.

[00:28:50] Speaker 01:
I mean, I think to have standing, you have to show that the injury can be traceable to something going on in this case.

[00:28:59] Speaker 02:
And I think that it is traceable in terms of it's because of the decisions case that has caused injury to Best Medical because of the decision that was made.

[00:29:12] Speaker 02:
the position that, well, yeah, we can argue this down the road in another appeal after we get through the PTAB appeal and the 2A3 patent if we don't succeed in that appeal.

[00:29:27] Speaker 01:
OK.

[00:29:27] Speaker 01:
I think you're beyond even the time of the charge.

[00:29:30] Speaker 01:
Thank you.

[00:29:30] Speaker 01:
Thank you, Your Honor.

[00:29:32] Speaker 01:
The case is submitted.