[00:00:00] Speaker 03:
Our next case is also Exxonix versus Medtronic, 2022, 1532, and 1533.

[00:00:11] Speaker 03:
Mr. Nathan.

[00:00:14] Speaker 01:
Thank you, Your Honor.

[00:00:15] Speaker 01:
May it please the Court.

[00:00:17] Speaker 01:
This Court's decisions in Apple and Erickson have drawn a clear line showing where the Board has in the past erred by refusing to consider the content

[00:00:29] Speaker 01:
of a reply submitted by the petitioner in an institute at IPR.

[00:00:35] Speaker 01:
Apple and Erickson make it clear that when post-institution a new claim construction is proposed by the petitioner, by the patent owner, the petitioner has the right to respond substantively.

[00:00:52] Speaker 01:
And per Apple, you can't do everything.

[00:00:55] Speaker 01:
You can't replace your references from the instituted petition with other references that were not in the petition, and you can't even switch embodiments from the references that are the basis of the grounds on which the petition was instituted.

[00:01:07] Speaker 01:
You can't do that either.

[00:01:09] Speaker 01:
But what you can do is you can oppose that construction substantively, and you can respond to the construction to show

[00:01:16] Speaker 01:
that even under that construction, if adopted, the evidence from the prior art references that are the basis of the grounds will meet the limitations nonetheless.

[00:01:25] Speaker 01:
You can do that through argument in reply and you can support that with an expert declaration in reply.

[00:01:33] Speaker 01:
This is all we've done here.

[00:01:34] Speaker 01:
We didn't submit new references, we didn't switch embodiments, we did exactly what happened in Apple, and it was error for the board to refuse to hear us.

[00:01:44] Speaker 01:
Now in Apple,

[00:01:47] Speaker 01:
on facts that are remarkably similar to ours, there was a petition that relied entirely on one example of an algorithm in the prior specification, and it was argued after institution that that example didn't meet one of the claim terms for a very specific reason that effectively was argued to narrow the claim scope versus what was represented in the petition versus the basis of institution.

[00:02:11] Speaker 01:
Now, subsequent to institution, when this argument was made,

[00:02:15] Speaker 01:
In response to this attempt to narrow claim scope, the petitioner switched examples of the same algorithm to a different example in the prior art of that same algorithm and said, well, this one meets the narrowed construction of these claims if that's indeed adopted.

[00:02:31] Speaker 01:
The board refused to hear it.

[00:02:32] Speaker 01:
This court said that was not acceptable.

[00:02:35] Speaker 01:
This court said that when there is a new construction,

[00:02:39] Speaker 01:
post-institution, when there's a narrowing of claim scope, when there's a new issue like that that arises post-institution, the petitioner is allowed to do exactly what Apple had done, and it was sent back for that reason.

[00:02:51] Speaker 01:
Now we did exactly what happened in Apple.

[00:02:54] Speaker 01:
In Apple, you had opposing of the construction as such, but you also had substantive argument in the reply, and you had a reply declaration from the expert.

[00:03:03] Speaker 01:
We had those same things here.

[00:03:05] Speaker 01:
We said this post-institution construction, and I want to be clear.

[00:03:08] Speaker 01:
For institution in our case, our petition said no construction necessary, period, full stop across the board.

[00:03:17] Speaker 01:
The patent owner agreed with that and in fact premised its preliminary opposition on that exact same basis, saying that the two limitations at issue here would not be met for exactly the same reason.

[00:03:28] Speaker 01:
If one wasn't met, the other wasn't either.

[00:03:31] Speaker 01:
Then the board saw that.

[00:03:33] Speaker 01:
agreed there was no construction necessary, saw that we were relying, we were relying exclusively on the same signal to meet both limitations for each one of our grounds for each one of the claims on appeal, and instituted on that factual basis.

[00:03:49] Speaker 01:
That became the scope of the IPR.

[00:03:50] Speaker 01:
Then after that, after institution, Medtronic argued that you needed two different things to meet these two different limitations.

[00:03:58] Speaker 01:
We said in reply, that's wrong, you don't.

[00:04:01] Speaker 01:
We also said and replied substantively, even if so, we had the one thing, the one signal already in our references.

[00:04:08] Speaker 01:
Those same references, those same embodiments from those same references, we said, here's another one.

[00:04:12] Speaker 01:
We can meet both limitations if you construe it their way.

[00:04:15] Speaker 01:
And we submitted an expert declaration.

[00:04:17] Speaker 01:
Those exact same three things happened in Apple.

[00:04:20] Speaker 01:
And this court said it was error not to allow that.

[00:04:23] Speaker 01:
Now, Medtronic's principal attempt to distinguish Apple is to argue that we,

[00:04:30] Speaker 01:
per the board's language, quote unquote, effectively changed grounds.

[00:04:34] Speaker 01:
That's not true.

[00:04:37] Speaker 01:
The Apple court specifically explained that Apple did not change ground, and a ground is a term of art in IPR practice, as the court knows, did not change ground in Apple, and that's because in Apple, in the reply, in the reply declaration, the same references were being argued to render unpatentable the same claims

[00:05:00] Speaker 01:
Same grounds, legally.

[00:05:02] Speaker 01:
That's exactly what we've got here.

[00:05:04] Speaker 01:
So any attempt to suggest that the board's assertion that we effectively change grounds is in any way proper, is legal error, is squarely in the teeth of Apple.

[00:05:16] Speaker 01:
Now speaking to Erickson, which the Apple court also relied upon, in Erickson, you had a very similar set of circumstances.

[00:05:23] Speaker 01:
You had a petition that addressed one set of evidence from the prior art,

[00:05:31] Speaker 01:
Instead, it meets the claims under one understanding of a term that relates to interleaving.

[00:05:36] Speaker 01:
The petition is instituted.

[00:05:37] Speaker 01:
You have an instituted IPR.

[00:05:39] Speaker 01:
A new, narrower construction is adopted.

[00:05:42] Speaker 01:
And the petitioner submits additional evidence, additional argument, in support of meeting that new construction, that narrower construction, with the same references.

[00:05:54] Speaker 03:
I haven't heard you use the term abusive discretion yet.

[00:05:59] Speaker 01:
uh... thank you your honor it is so we start many people it is abuse of discretion to uh... one uh... refused to consider evidence based on legal principle that this court held is not the law in other words legal error is never consistent with uh... non abused exercise of discretion

[00:06:17] Speaker 01:
And this is a strong APA right that the courts have recognized that when there's a new claim construction submitted after the instituted IPR, the petitioner has the right to address whether the references in that IPR and the embodiments upon which the petition relied meet that new construction.

[00:06:35] Speaker 01:
So it is abuse of discretion because it is legal error.

[00:06:39] Speaker 01:
And there is no consideration anywhere in the final written decision.

[00:06:42] Speaker 01:
And there's nothing in the record to suggest that we could possibly be outside of the facts

[00:06:46] Speaker 01:
of the holding of Apple that endorses and protects that right.

[00:06:51] Speaker 01:
Your Honor, if I may speak briefly to the Erickson decision, in that case, again, after institution, there's a new claim construction, new evidence and argument are submitted, and specifically the argument that was submitted that was new was that one of the combining references that had at first been asserted to simply disclose the limitation

[00:07:13] Speaker 01:
rather effectively rendered that limitation obvious because of the insubstantial difference between the express disclosure and what the claims were now being construed to require.

[00:07:22] Speaker 01:
That's a substantive obviousness argument that's not in the petition, and in Erickson, that was allowed, it was considered to be error for the board to have rejected that reply in substance.

[00:07:34] Speaker 01:
Now, Apple and Erickson, and I'll say this also about Erickson, Erickson focuses on the fact that when the significance

[00:07:42] Speaker 01:
of the claim construction becomes apparent post-institution.

[00:07:46] Speaker 01:
You do not parse too finely the contents of that petition, vis-a-vis, did you say this exact thing?

[00:07:52] Speaker 01:
Did you say that exact thing?

[00:07:54] Speaker 01:
There's a newly significant claim construction post-institution.

[00:07:58] Speaker 01:
The petitioner has the right to tell the board why the references and the embodiments in those references that are the basis of the instituted grounds will meet that construction.

[00:08:08] Speaker 01:
Apple holds it.

[00:08:08] Speaker 01:
Erickson holds it.

[00:08:09] Speaker 01:
It's all we did.

[00:08:10] Speaker 01:
We're within those holdings.

[00:08:12] Speaker 01:
and it was error for the board not to allow that, and it was certainly abusive discretion for that reason.

[00:08:17] Speaker 01:
Now, the primary cases upon which Medtronic relies, the primary cases are Ariosa and intelligent biosystems.

[00:08:28] Speaker 01:
Neither of these can possibly hold our facts.

[00:08:32] Speaker 01:
In Ariosa, there was a complete switching of embodiments in one of the two combining references.

[00:08:38] Speaker 01:
That's not allowed, it is not what we did,

[00:08:41] Speaker 01:
No one has suggested it is what we did.

[00:08:42] Speaker 01:
We are not within the holding of Ariosa.

[00:08:44] Speaker 01:
It does not defend the board's decision.

[00:08:47] Speaker 01:
Likewise, Intelligent Biosystems, entire new references, entire new prior art references were added in reply.

[00:08:54] Speaker 01:
We did no such thing here.

[00:08:59] Speaker 01:
Intelligent Biosystems did not control.

[00:09:01] Speaker 01:
What we did is we submitted new argument and evidence on the same embodiments in the same references that were the grounds of our instituted petition, and we were not allowed to do that.

[00:09:12] Speaker 01:
That was error.

[00:09:14] Speaker 01:
If I may, I'd like to reserve the balance of my time.

[00:09:16] Speaker 03:
We will do that for you.

[00:09:18] Speaker 03:
Mr. Modi.

[00:09:20] Speaker 03:
Good morning, Your Honors.

[00:09:21] Speaker 03:
May it please the court?

[00:09:23] Speaker 03:
Exonix made a deliberate.

[00:09:25] Speaker 04:
So Mr. Modi, I'm a little puzzled about what's going on here, because

[00:09:31] Speaker 04:
In your preliminary response in the two IPRs, you didn't raise this claim construction issue.

[00:09:37] Speaker 04:
That was raised for the first time in the response.

[00:09:42] Speaker 04:
And when you did raise it in the response, you argued at some length, for example, with respect to the Schulman reference, that under your construction, there was not obviousness.

[00:09:56] Speaker 04:
So you've got this new claim construction for the first time in the response.

[00:10:01] Speaker 04:
You've got an argument that under the claim construction, it's non-obvious.

[00:10:06] Speaker 04:
And you're saying that the other side, the petitioner, doesn't get to respond to this new argument?

[00:10:12] Speaker 00:
Why is that fair?

[00:10:14] Speaker 00:
Sure, Your Honor.

[00:10:14] Speaker 00:
Let me address that.

[00:10:17] Speaker 04:
It's my statement of what happened accurate.

[00:10:20] Speaker 00:
So, Your Honor, I think it's mostly accurate.

[00:10:24] Speaker 00:
The only thing that I would want to look at is sort of with respect to Shulman, the arguments that we did make, right?

[00:10:29] Speaker 04:
I can read it to you.

[00:10:31] Speaker 04:
You were explicit and argued that under your new construction that it was not obvious because it only had a single input.

[00:10:44] Speaker 00:
And Your Honor, certainly we can.

[00:10:46] Speaker 00:
Right.

[00:10:46] Speaker 00:
So I agree with you.

[00:10:48] Speaker 00:
And I thought you were perhaps referring to the arguments we made in our cert reply with respect to Schulman.

[00:10:52] Speaker 00:
Why even under the net two input?

[00:10:54] Speaker 04:
I'm talking about the response.

[00:10:55] Speaker 04:
You see nothing about this in the preliminary response.

[00:10:59] Speaker 04:
And then in the response for the first time, you come up with this new claim construction argument.

[00:11:04] Speaker 04:
And you argue that under that construction, that there's non-obviousness, because there's only a single input in Schulman.

[00:11:14] Speaker 04:
Why is that fair that they can't respond?

[00:11:16] Speaker 00:
So let me explain, Your Honor, why.

[00:11:18] Speaker 00:
And I think if we can start with Appendix 301, which is their petition, as this Court has held, that the petition does guide the life of a trial.

[00:11:26] Speaker 00:
So if we can start with Appendix 301, because I think what happened here is that Exxonix made a deliberate choice of ignoring the plain language of the claims.

[00:11:37] Speaker 00:
So if you look at Appendix 301, there's a table there.

[00:11:39] Speaker 00:
Let me know, Judge Reich, when you're there.

[00:11:42] Speaker 04:
Well, go ahead.

[00:11:43] Speaker 00:
And so in that table, this is what they argued with respect to the key limitations that we're talking about.

[00:11:49] Speaker 00:
They said, it is thus clear that the second variant clause simply narrows the value of the first variant clause to measure current and does not require a separate measurement.

[00:12:00] Speaker 00:
They meant as far as saying this is consistent.

[00:12:02] Speaker 04:
If it was so obvious that their claim construction was wrong, how come you didn't raise it in the preliminary response?

[00:12:09] Speaker 00:
So I'll respond to that and I'll actually give you the answer right now, Your Honor.

[00:12:12] Speaker 00:
On that, as Your Honor knows, we're not required to even file a preliminary response.

[00:12:18] Speaker 04:
Of course, but you did and you didn't raise it, which sort of has some bearing on how obvious it was.

[00:12:25] Speaker 04:
If it was so obvious, why didn't you raise it in the preliminary response?

[00:12:28] Speaker 00:
So the reason is, again, Your Honor, when the preliminary response is optional, and you can make in our minds the arguments we've made in the preliminary response we thought were enough to overcome the potential.

[00:12:40] Speaker 04:
If it was so obvious, try to answer this question, if it was so obvious, why wasn't it in the preliminary response?

[00:12:47] Speaker 00:
Your Honor, again, I think if you look at the record from a, when we are filing preliminary responses in each of these cases, you look at the best arguments you make in terms of quickly getting the denial, right?

[00:12:58] Speaker 00:
So in that instance, because they had done such a bad argument.

[00:13:02] Speaker 04:
So the argument wasn't so obvious.

[00:13:04] Speaker 00:
So Your Honor, I would say it is.

[00:13:06] Speaker 00:
It was obvious, at least from the claim for structure perspective.

[00:13:10] Speaker 00:
Because they said, I think the issue here, Judge Dike, is I totally understand what you're saying.

[00:13:14] Speaker 00:
But I think you have to look at the record here, right?

[00:13:17] Speaker 00:
what they said.

[00:13:18] Speaker 04:
I had to look at the record very carefully and it seems to me you've made arguments for the first time and then you're saying they can't respond to them.

[00:13:24] Speaker 00:
And the reason here again Judge Dyke is if you look at the petition they went as far as saying in their petition that the

[00:13:32] Speaker 00:
This is consistent.

[00:13:33] Speaker 00:
Their one input construction is consistent with the specification, which does not describe two separate measurements.

[00:13:39] Speaker 00:
That's what they told the board and us in their petition.

[00:13:43] Speaker 00:
And what happened in their reply?

[00:13:44] Speaker 00:
And again, I would like you to look at this.

[00:13:46] Speaker 00:
This is at Appendix 815.

[00:13:48] Speaker 00:
They said, petitioner does not dispute.

[00:13:50] Speaker 00:
There are embodiments where power output would vary based on two different values associated with the current passing through the internal power.

[00:13:58] Speaker 00:
So they completely changed their position on reply

[00:14:01] Speaker 00:
on claim construction.

[00:14:01] Speaker 04:
It literally changed your position.

[00:14:04] Speaker 00:
Your Honor, I would say we did not change our position.

[00:14:06] Speaker 00:
We did not make a position on claim construction in the preliminary response.

[00:14:09] Speaker 04:
You assumed their claim construction and argued under their claim construction for non-obviousness.

[00:14:15] Speaker 00:
And certainly, Your Honor, we're entitled to do that in a preliminary response.

[00:14:18] Speaker 00:
Like I said, we're not required.

[00:14:19] Speaker 04:
Isn't there a risk here of sandbagging that you realize there's a good claim construction?

[00:14:26] Speaker 04:
You leave it out of your preliminary response.

[00:14:28] Speaker 04:
If you argued in the preliminary response,

[00:14:31] Speaker 04:
then maybe institution would be denied and there would be no estoppel.

[00:14:36] Speaker 04:
But if you hold back on the RU.

[00:14:38] Speaker 04:
and wait to make it until a response, then you get the estoppel.

[00:14:42] Speaker 04:
Isn't there a risk of that?

[00:14:44] Speaker 00:
Certainly, Your Honor, there is a risk of that, but there's also a risk of what happened here, right?

[00:14:48] Speaker 00:
And you could look at it from the other lens also.

[00:14:51] Speaker 00:
The petitioner here, and again, the board goes back to Judge Laurie, your question, this is an abuse of discretion issue.

[00:14:55] Speaker 00:
The board looked at all of this, and they found, right, what happened here was they set in the petition, the specification doesn't disclose these two inputs.

[00:15:03] Speaker 00:
In the reply, they come back and say, no, no, no, we are wrong.

[00:15:06] Speaker 00:
The specification does disclose these two inputs.

[00:15:08] Speaker 00:
They're expert on replies.

[00:15:10] Speaker 04:
So you didn't have an opportunity to address it in the response, and you did address it in the response.

[00:15:16] Speaker 04:
You addressed your claim construction, and you addressed under your claim construction that it was non-obvious.

[00:15:25] Speaker 04:
So it's not as though you were deprived of the opportunity to make the point.

[00:15:29] Speaker 04:
And you did make the point.

[00:15:30] Speaker 00:
So I think here's the issue.

[00:15:31] Speaker 00:
You don't want to go back to the prejudice issue, right?

[00:15:33] Speaker 00:
So what happened here was we came in, we said the plain meaning of the claim requires that you give way to both of the varying limitations, right?

[00:15:42] Speaker 00:
And then we said under that plain meaning, the references don't disclose, right?

[00:15:47] Speaker 00:
They don't render the claims anticipated or obvious, right?

[00:15:51] Speaker 00:
And then what happened was, on reply, they come in with, again, a new declaration.

[00:15:56] Speaker 00:
And I heard them say, well, we didn't change positions.

[00:16:00] Speaker 00:
They did change positions.

[00:16:01] Speaker 00:
In the Blue Brief 19, they said, Exotics disclosed the technical basis for its contentions as soon as it became aware of the dispute.

[00:16:08] Speaker 00:
So they did make new arguments on reply.

[00:16:11] Speaker 00:
And again, under this court's case law, for example, look at Ariosa, those were meaningfully new contentions.

[00:16:16] Speaker 00:
And here's the sandbagging to the patent owner, what happens in that situation.

[00:16:20] Speaker 00:
In our certify, Your Honor, we're not entitled to submit new evidence.

[00:16:23] Speaker 00:
In our certify, when they come in in a reply and put forward new positions on prior art that are meaningfully distinct, as the patent owner, Medtronic had no option to come in with a

[00:16:35] Speaker 00:
reply declaration to explain why they were wrong substantively.

[00:16:39] Speaker 00:
And I think it goes back to the fundamental premise of trials.

[00:16:44] Speaker 00:
IPR is a special mechanism.

[00:16:45] Speaker 00:
It's not a district court proceeding.

[00:16:47] Speaker 00:
And here I think really what happened is, and I think we should look at the board's decision, because I think it is key what the board did here.

[00:16:53] Speaker 00:
Because Judge Dyke, I think all of those thoughts were going in the board's mind that you were kind of bringing out.

[00:16:58] Speaker 00:
And if you look at appendix 35 to 36, I think it is key what the board did.

[00:17:02] Speaker 00:
This is what the board said.

[00:17:04] Speaker 00:
In considering whether a petitioner could have presented its arguments earlier in the petition, we find that the petitioner chose to interpret the claims as requiring only a single input, going so far as to affirmatively assert in the petition that the specification of the 758 pattern does not describe the two separate measurements.

[00:17:22] Speaker 00:
As discussed above, petitioner, in its reply, abandons that argument, conceding instead that petitioner does not dispute that there are embodiments in the 758 patent where power output would vary based on two different values associated with the current passing through the internal power source.

[00:17:40] Speaker 02:
Mr. Modi, can I ask, I guess, a procedural question and then I guess more of a legal question?

[00:17:48] Speaker 02:
Just remind me, and I apologize for not recalling.

[00:17:52] Speaker 02:
Did you ask the board to allow you, after the other side's reply, a larger than normal opportunity to submit responses and materials, whether in the so-reply or I don't care, I think, about the specific form?

[00:18:21] Speaker 02:
If you thought that there was new, as there was, new factual material attached to the other side's reply that you wanted an opportunity to respond to, did you ask for the opportunity to submit new evidence that might, under ordinary circumstances, not be permitted in the survey plot?

[00:18:47] Speaker 00:
So, Your Honor, the way this was raised is that we told the Board that those arguments should be stricken and we made an argument in our sub-reply that should the Board, this is highly prejudicial to us, and because it would need to, the record would need to be reopened.

[00:19:05] Speaker 00:
And I think to Toronto, if you go to Footnote 37, or Footnote, sorry, 7 on Appendix 37,

[00:19:10] Speaker 00:
that perhaps answers the question you're getting at, because the board did recognize sort of the prejudice resulting to the patent owner in this situation.

[00:19:17] Speaker 00:
And just like, I think this gets to your question also in terms of the prejudice.

[00:19:21] Speaker 00:
And this is what the board said in that footnote on page 37.

[00:19:24] Speaker 00:
It said, moreover, we agree with patent owner that would be prejudicial to patent owner to be required to refute what amounts to a new ground of unpatentability, not raising the petition.

[00:19:33] Speaker 02:
But instead... I'm sorry.

[00:19:36] Speaker 02:
And I apologize.

[00:19:36] Speaker 02:
Some of this may just be because I have a hard time.

[00:19:42] Speaker 02:
The question is this.

[00:19:45] Speaker 02:
In your SOAR reply, I trust you did say, we shouldn't have to respond because it was completely inappropriate what the reply filing did, and they shouldn't get to do that, and please exclude that or don't pay any attention to it.

[00:19:59] Speaker 02:
Did you also say, if, dear board, you have a different view, please give us an opportunity to submit more of our own material on this new matter?

[00:20:10] Speaker 00:
So Your Honor, I believe, and I was trying to find a citation to this reply, I believe what we said, we indirectly asked for it.

[00:20:19] Speaker 00:
I'm not sure we directly asked for it.

[00:20:21] Speaker 00:
But I think the board recognized this issue at appendix 37 in the footnote saying what would have to happen in this instance, right?

[00:20:29] Speaker 00:
It would be only fair in that instance that the record would need to be reopened just right to give the patent order.

[00:20:35] Speaker 02:
And do we happen to know that the board

[00:20:37] Speaker 02:
have a rigid uniform policy that says so-replied can never, under any circumstances, even if needed for obvious fairness purposes, be accompanied by new factual material.

[00:20:54] Speaker 00:
So Your Honor, under Rule 42.

[00:20:57] Speaker 00:
Sorry.

[00:20:57] Speaker 00:
I apologize, Your Honor.

[00:20:58] Speaker 00:
Go ahead.

[00:21:00] Speaker 00:
So, Your Honor, to answer your question, if you look at Rule 42.23, it says that surpluses cannot be accompanied by evidence, and I've been involved in that.

[00:21:09] Speaker 02:
I'm sorry, I just can't hear what you're saying.

[00:21:12] Speaker 00:
Can you hear me okay, Your Honor?

[00:21:14] Speaker 00:
No, no, I can't.

[00:21:15] Speaker 00:
Okay.

[00:21:16] Speaker 00:
So, if you look at Rule 42.23,

[00:21:21] Speaker 00:
it states that surreplies cannot be accompanied by new evidence.

[00:21:25] Speaker 00:
And under the board's practice, I've been involved in hundreds of these cases.

[00:21:29] Speaker 00:
I can't think of one instance where we would have asked or the board allowed for new evidence.

[00:21:36] Speaker 04:
Certainly in this instance, if this court feels... I'm putting my microphone up here.

[00:21:41] Speaker 04:
Does that make it easier to hear?

[00:21:46] Speaker 00:
Judge Frano, can you hear me?

[00:21:49] Speaker 02:
I'll leave.

[00:21:50] Speaker 02:
so faintly that I'm going to have to listen to this on tape.

[00:21:53] Speaker 02:
I'm sorry.

[00:21:53] Speaker 00:
I apologize, Your Honor.

[00:21:54] Speaker 00:
I can try to speak louder.

[00:21:55] Speaker 00:
I don't know if this helps.

[00:21:57] Speaker 00:
But what I was getting at is under Rule 42.23, the rules provide that cert replies cannot be accompanied by new evidence.

[00:22:06] Speaker 02:
And I've been involved in that.

[00:22:08] Speaker 02:
But I thought that as a general matter, the board has the authority

[00:22:12] Speaker 02:
grant exceptions to such rules and does so, obviously not frequently, but as needed on a recurring basis.

[00:22:22] Speaker 02:
Is that wrong?

[00:22:23] Speaker 00:
So, Your Honor, I can't think of a single case and I've been involved in hundreds of these cases where the board did that, right?

[00:22:29] Speaker 00:
Because at some point the trial has to come to an end.

[00:22:32] Speaker 00:
And what I was getting at, at the end of the day here, if this court feels that the board erred and they should get

[00:22:39] Speaker 00:
they should look at the reply and the evidence that they put in, the new declaration they put in, then certainly Medtronic should be entitled to put in its own evidence, right, refuting that because that came in at the first time, their new positions with respect to the prior art came in the first time on reply.

[00:22:57] Speaker 04:
But it seems to me that you're conflating two separate issues here.

[00:23:02] Speaker 04:
One is whether they could come up with a new declaration.

[00:23:05] Speaker 04:
on the reply.

[00:23:06] Speaker 04:
The other one is whether they could make the arguments from the references in direct response to what you said.

[00:23:13] Speaker 04:
And it seems to me that putting to one side the new declaration, the board just refused to consider their arguments responsive to exactly what you said in your response.

[00:23:30] Speaker 00:
So, Your Honor, a couple of responses to that.

[00:23:32] Speaker 00:
I think, again, if this was a case, they certainly got a response to the claim construction arguments we made, right?

[00:23:40] Speaker 00:
The only issue is what happens to the new arguments they made with respect to the prior?

[00:23:44] Speaker 04:
Your arguments are not limited to claim construction arguments.

[00:23:46] Speaker 04:
You said that under our construction

[00:23:50] Speaker 04:
The facts are there was only a single input in Schulman, for example, and they did not allow them to respond to that argument that you made in the response.

[00:24:01] Speaker 00:
So Your Honor, I understand that that's what the Board did here.

[00:24:04] Speaker 00:
But again, remember, with respect to Schulman, what happened was these were anticipatory grounds with respect to Schulman.

[00:24:09] Speaker 00:
So we came in.

[00:24:10] Speaker 00:
We said, look, this is what they pointed to in their petition.

[00:24:14] Speaker 00:
And if you look at what they pointed to in the petition, Schulman doesn't meet those limitations.

[00:24:19] Speaker 00:
Certainly, they could have come back, and they did.

[00:24:20] Speaker 00:
And we didn't object to the argument that they responded to our claim construction arguments.

[00:24:24] Speaker 00:
I think the issue here is, again, this is based on the plain language of the claims.

[00:24:28] Speaker 00:
Their expert, even in his reply declaration, the new reply declaration they put in, he said that he still disagreed with the claim construction.

[00:24:38] Speaker 00:
And I think ultimately, if you again go back to Appendix 36 to 37 of the board's decision, the board was very bothered by it.

[00:24:44] Speaker 00:
And this is precisely why the board did not abuse its discretion.

[00:24:48] Speaker 00:
In these types of cases, this court

[00:24:50] Speaker 00:
should allow the board to exercise its judgment, which it rightly did in this case.

[00:24:54] Speaker 00:
And again, just trying to, I didn't get to finish this thought on page 37 in footnote seven, this is what the board said.

[00:25:00] Speaker 00:
Moreover, we agree with patent owner, that is us, that it would be prejudicial to patent owner to be required to refute what amounts to a new ground of unpatentability, not raising the petition, but instead asserted for the first time by petitioner in its reply, thus reaching the merits of the new arguments raised.

[00:25:15] Speaker 04:
Already addressed it.

[00:25:17] Speaker 04:
You'd already addressed it in the response.

[00:25:19] Speaker 04:
It's not unfair.

[00:25:20] Speaker 04:
You've already had your chance.

[00:25:23] Speaker 04:
You came up with a new claim construction, and you argued that under that claim construction it was non-obvious.

[00:25:29] Speaker 04:
And to a significant extent, they were simply responding to the argument that you raised.

[00:25:37] Speaker 00:
Your Honor, I understand.

[00:25:38] Speaker 00:
Again, I respectfully disagree, because this was a plain-meaning construction that they should have anticipated.

[00:25:44] Speaker 00:
They agreed.

[00:25:44] Speaker 00:
The board noted that they misapprehended the specification.

[00:25:48] Speaker 00:
And I'll just note, to just get the site in, it's appendix 995 to 996, where we said that we would have submitted evidence if you were allowed to do so.

[00:25:59] Speaker 00:
Just going back to Judge Tron's question.

[00:26:01] Speaker 03:
Counsel, your time has expired.

[00:26:04] Speaker 03:
Mr. Nathan has some rebuttal time.

[00:26:06] Speaker 03:
Thank you, Your Honor.

[00:26:08] Speaker 03:
And might I suggest for better audibility for Judge Toronto that all speakers speak slowly and distinctly.

[00:26:20] Speaker 01:
Yes, Your Honor.

[00:26:23] Speaker 01:
With the court's permission, Judge Toronto, are you able to hear me at this time?

[00:26:28] Speaker ?:
Yes.

[00:26:30] Speaker 01:
Thank you, Your Honor.

[00:26:34] Speaker 01:
I'll just make a few very brief points.

[00:26:36] Speaker 01:
And I'll begin, if I may, with

[00:26:38] Speaker 01:
Judge Toronto's questions about the whether Medtronic sought leave to supplement the factual record.

[00:26:48] Speaker 01:
In footnote seven on appendix 37, which is the page and footnote that Medtronic's counsel was just referencing, right in the middle of that footnote, the board wrote, and I quote, to be clear,

[00:27:02] Speaker 01:
Patent owner did not seek leave to submit additional expert testimony.

[00:27:08] Speaker 01:
That is the board asserting that they were not asked for such permission.

[00:27:17] Speaker 01:
Now, counsel began his argument with the notion, and it is their major focus in argument, that we made this deliberate choice, that Axonics made a deliberate choice not to address a claim construction that no one proposed.

[00:27:32] Speaker 01:
There is no obligation in the board's rules, in the regulations.

[00:27:36] Speaker 01:
There is no obligation whatsoever for the petitioner to anticipate claim constructions that the other party is going to propose or that the board might adopt to espante.

[00:27:47] Speaker 01:
The only obligation is to assert, do we think these claims need to be construed?

[00:27:52] Speaker 01:
Yes or no?

[00:27:52] Speaker 01:
We picked no.

[00:27:53] Speaker 01:
If they do need to be construed, what construction?

[00:27:57] Speaker 01:
That's exactly what we did.

[00:27:59] Speaker 03:
There were two separate wherein clauses.

[00:28:02] Speaker 01:
that that's correct your honor there were two separate wherein clauses we took the position that neither of them needed to be construed they agreed with us so did the board we sought institution based on the assertion that the same thing in each prior ground met both limitations they saw it they assumed it too they contradicted it but not for that reason they didn't fight it as as as just like pointed out

[00:28:28] Speaker 01:
The board instituted on that factual showing on that theory.

[00:28:35] Speaker 01:
Only afterward was any construction proposed whatsoever.

[00:28:40] Speaker 01:
There is no plausible way to suggest that we were unreasonable in not proposing to construe those terms or that we were unreasonable in using the same evidence to meet both of them.

[00:28:49] Speaker 01:
When we did it, they saw it and didn't address it, the board accepted it and said it was good enough for institution.

[00:28:56] Speaker 01:
Now we're instituted, and if they're right, we never get to address whether the references that were in our grounds have the limitations as later construed, but not construed that way for institution purposes.

[00:29:10] Speaker 01:
Now, Apple expressly rejects

[00:29:14] Speaker 01:
the idea that we have such an obligation.

[00:29:18] Speaker 01:
Because in Apple, it was asserted that, and I'll just quote this, Andrea contends that the board correctly precluded Apple's arguments, applying the Martin algorithm with multiple subwindows, because Apple's 626 IPR petition was, quote unquote, intentionally premised on a scenario in which there were no subwindows.

[00:29:41] Speaker 01:
This court said, we disagree, and went on.

[00:29:44] Speaker 01:
it is unreasonable, I'm quoting again from Apple, it is unreasonable to hold petitioners to such a high standard that if they choose to rely on one example of an algorithm, they must either discuss all possible permutations of the variables or risk waiving the opportunity to further discuss other relevant examples in their reply.

[00:30:06] Speaker 01:
Apple takes on this notion that the petition was intentionally limited to only the constructions that the petitioner actually believed in

[00:30:14] Speaker 01:
and that this therefore justifies denying substantive reply, Apple took that argument on expressly and rejected it hard.

[00:30:22] Speaker 01:
That's their argument.

[00:30:23] Speaker 01:
I respectfully submit we are within Apple.

[00:30:25] Speaker 01:
We are within Erickson.

[00:30:27] Speaker 01:
We had a right to reply.

[00:30:28] Speaker 01:
It was a legal right, and we were denied it by the board.

[00:30:31] Speaker 01:
Thank you, Your Honors.

[00:30:33] Speaker 03:
Thank you, Counsel.

[00:30:34] Speaker 03:
The case is submitted.