[00:00:00] Speaker 02:
Our next case is Zazel Communications versus UNM Rainforest Innovations, 2023-12-72.

[00:00:09] Speaker 02:
May I proceed?

[00:00:14] Speaker 02:
Yes, counsel.

[00:00:16] Speaker 02:
Could you pronounce your name for us, please?

[00:00:19] Speaker 01:
Mr. Dietrichs.

[00:00:21] Speaker 02:
Dietrichs.

[00:00:23] Speaker 02:
Good morning, Mr. Dietrichs.

[00:00:25] Speaker 02:
Please proceed.

[00:00:27] Speaker 01:
Good morning, Your Honors.

[00:00:29] Speaker 01:
I'm Jonathan Dietrich, for Zeiss All Communications.

[00:00:31] Speaker 01:
May it please the Court?

[00:00:34] Speaker 01:
The subject matter of the patent at issue in this appeal may be complex, but the legal issue that needs to be decided is not.

[00:00:42] Speaker 01:
It presents just a single legal issue, whether the Board erred in granting, in part, UNM's motion to amend, or UNM failed,

[00:00:51] Speaker 01:
in the motion to identify the required written description support for all claim limitations of the proposed substitute claims.

[00:00:58] Speaker 02:
In other words, if we don't agree with you on the procedural question, you are not arguing the merits.

[00:01:03] Speaker 01:
That's correct, Your Honor.

[00:01:05] Speaker 04:
Can I ask, do I understand correctly that you or your client was here yesterday?

[00:01:11] Speaker 04:
Yes, Your Honor.

[00:01:12] Speaker 04:
Is that the same issue, the same procedural issue?

[00:01:16] Speaker 01:
Yes, it is an identical procedural issue.

[00:01:22] Speaker 01:
Now, there is no dispute that the applicable precedent places the burden on the patentee pursuing a motion to amend to identify in the motion written description support for all claim limitations of any proposed amendment claims.

[00:01:37] Speaker 01:
And here, there's no dispute that UNM failed to do so in its motion.

[00:01:42] Speaker 01:
Rather, it presented written description support

[00:01:47] Speaker 03:
Let me ask you.

[00:01:51] Speaker 03:
I'm scratching my head a little bit here because it really seems to me that two things are in play.

[00:01:57] Speaker 03:
I wonder if you could address them.

[00:01:58] Speaker 03:
First of all, what happened here seems to be the quintessential example

[00:02:05] Speaker 03:
of what the pilot program was meant to address and how it was supposed to operate.

[00:02:10] Speaker 03:
And secondly, in that context, it seems that there's no harm, no foul.

[00:02:15] Speaker 03:
In other words, harmless error.

[00:02:16] Speaker 03:
Where is the harm here?

[00:02:18] Speaker 03:
And address both the pilot program issue and any harm.

[00:02:22] Speaker 01:
Let me first address the pilot program notice, Your Honor.

[00:02:31] Speaker 01:
The pilot program notice

[00:02:34] Speaker 01:
cites to both Rule 42-12121 and the Board's Precedential Electrosonics Decision and reiterates that to meet the statutory and regulatory requirements, a motion to amend must set forth written description support for each substitute claim.

[00:02:52] Speaker 01:
Now, the PIO program does create a procedure where the Board

[00:02:56] Speaker 01:
uh... offers preliminary guidance the board did so here and found that u n m's motion did not comply because i hadn't set forth written description uh... pilot program so you can factor in a reply brief right?

[00:03:11] Speaker 01:
yes so this comes to the procedural wrinkle created by the pilot program notice it gives the patentee two choices either if let's say the board's

[00:03:26] Speaker 01:
Guidance has a merit and there are some deficiencies.

[00:03:29] Speaker 01:
They can proceed with a revised motion to amend.

[00:03:34] Speaker 01:
Let's say the prior art, the claims that they proposed are invalid over the prior art.

[00:03:38] Speaker 01:
They could propose narrower claims to overcome that.

[00:03:42] Speaker 01:
But the pilot program notice states that if it's a revised motion to amend, the patentee needs to

[00:03:49] Speaker 01:
include one or more new proposed substitute claims.

[00:03:53] Speaker 01:
So there's board decisions, whereas here, a patentee files a revised motion to amend directed to identical claims.

[00:04:02] Speaker 01:
To expunge to that is not complying with that requirement.

[00:04:06] Speaker 01:
And I think there's, importantly, if it's a revised motion to amend the pilot program notice allows the patentee to present both new argument and new evidence.

[00:04:18] Speaker 01:
Now let's say a patentee thinks the board got it wrong.

[00:04:21] Speaker 01:
They can file a reply and present rebuttal evidence.

[00:04:25] Speaker 01:
And the pilot program notice states that in a pilot program notice reply, the patentee can present new evidence.

[00:04:35] Speaker 01:
But the key theme is, unlike with the revised motion to amend, it doesn't say new argument.

[00:04:40] Speaker 01:
And so I don't see anything, Your Honor,

[00:04:44] Speaker 01:
uh... disregards but didn't you get out of your arguments for what you're doing as it was at that moment you were there to get out of your arguments before the board to be heard uh... no you're not so this comes to you because we uh... first because patten owner first presented its written description arguments in its reply paper uh...

[00:05:08] Speaker 01:
Our first chance to respond to that was in a surreply paper.

[00:05:11] Speaker 01:
And of course, in a surreply, we have no opportunity to submit rebuttal expert opinion.

[00:05:18] Speaker 04:
You could have asked if there was anything you thought was important to the evaluation of the material in the reply, the new written description support, that you thought would not be possible to present in a surreply.

[00:05:34] Speaker 04:
You could, right?

[00:05:35] Speaker 04:
Didn't we say this?

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Because in Belkin, the rules allow the board to waive any particular limits of

[00:05:47] Speaker 04:
rules, if justified.

[00:05:50] Speaker 04:
And did you ask the board to allow you to present new evidence, new argument in a kind of expanded sole reply, one that in the ordinary course would not be permissible?

[00:06:07] Speaker 01:
So we have, Your Honor.

[00:06:12] Speaker 01:
connection prior to the board's expungement of the improper revised motion to amend.

[00:06:19] Speaker 01:
We pointed out the prejudice to us in not having expert opinion on apply, and server apply, sorry, and also the prejudice in having reduced page limits because an opposition has a relatively large number of pages and a server apply is smaller.

[00:06:37] Speaker 01:
And in response to that, the board allowed us additional pages but did not give us the opportunity to submit expert evidence.

[00:06:49] Speaker 04:
So in what you just said, I think I didn't quite hear you say so.

[00:06:55] Speaker 04:
Did you say we would like an opportunity to present additional expert evidence?

[00:07:04] Speaker 01:
In the context of the papers, yes.

[00:07:07] Speaker 01:
In the context of did we arrange a conference call and file a formal motion seeking expert evidence, we did not do that, Your Honor.

[00:07:16] Speaker 01:
But I don't think that was required.

[00:07:18] Speaker 01:
Let's go to the court.

[00:07:21] Speaker 04:
It goes, I think, back to Judge Schall's question.

[00:07:26] Speaker 04:
But it would be one thing if there were what you would consider in basic administrative law, or even due process terms, a violation of the procedural opportunity

[00:07:39] Speaker 04:
to address something new with material that's necessary to address it.

[00:07:44] Speaker 04:
And we don't think if you asked for that and was denied it.

[00:07:49] Speaker 04:
But you haven't said that here, in which case it's a little hard to see what the prejudice was to your client here.

[00:08:06] Speaker 01:
I agree that that would present a different record.

[00:08:09] Speaker 01:
But I don't think it's required.

[00:08:11] Speaker 01:
I mean, for example, we see in the board's decision in Lippert's components, as well as in Free Street Media, both motioned to amend cases that presented exactly the same relevant fact pattern here of not including written description on the motion to amend and then presenting it in reply.

[00:08:29] Speaker 01:
And those decisions saying, citing to Rule 4223B, the applicable rule that states all arguments in support of the motion must be made in the motion,

[00:08:39] Speaker 01:
A reply may only respond to the corresponding opposition.

[00:08:43] Speaker 01:
That's the relevant rule.

[00:08:44] Speaker 01:
And those board decisions and LIBOR components and free stream media cited that rule and said, hey, you know what?

[00:08:49] Speaker 01:
That reply argument came too late.

[00:08:52] Speaker 01:
Motion to amend is denied.

[00:08:53] Speaker 01:
There's nothing in the pilot program notice that changes that.

[00:08:58] Speaker 01:
As I pointed out,

[00:09:00] Speaker 01:
It both requires, it confirms that leprosonics must be met, and it also states that the reply can present new rebuttal evidence.

[00:09:09] Speaker 01:
It does not state that the reply can present new rebuttal argument.

[00:09:14] Speaker 04:
And this court, and it- Just so I'm clear, in the pilot program,

[00:09:21] Speaker 04:
rules, if that's what they are.

[00:09:24] Speaker 04:
Does it allow a revised motion to amend where the amendment hasn't changed?

[00:09:32] Speaker 04:
It's just the motion is revised because it now contains support that wasn't there before.

[00:09:39] Speaker 04:
Or is the revised motion to amend

[00:09:42] Speaker 04:
that's contemplated, authorized, whatever, by the pilot program, limited to one in which the actual amendment is altered.

[00:09:52] Speaker 01:
The latter, your honor.

[00:09:54] Speaker 04:
So.

[00:09:56] Speaker 04:
And that's what the board said here, right?

[00:09:58] Speaker 04:
When the new filing was originally submitted with the written description support for the unchanged elements, the board said, well, this is not a proper revised motion to amend because you didn't change the amendment, right?

[00:10:13] Speaker 04:
And so we do this by whatever reply in the ordinary course.

[00:10:17] Speaker 01:
That's right.

[00:10:18] Speaker 01:
So it's on page 949 of the notice in the Federal Register.

[00:10:23] Speaker 01:
And quote, a revised motion to amend includes one or more new proposed substitute claims in place of the previously presented substitute claims.

[00:10:34] Speaker 01:
So that's been interpreted as a requirement to include those new substitute claims here in the board expunging the improper reply paper and in other board decisions.

[00:10:49] Speaker 01:
But going back to Rule 4223B, which in the motion to amend context in Lippert Components and Free Stream Media, the board has found to apply to prohibit untimely new reply arguments.

[00:11:05] Speaker 01:
That's the same rule applied by this court in its decision in Intelligent Biosystems.

[00:11:11] Speaker 01:
Now, I recognize that that case involved a petitioner reply.

[00:11:16] Speaker 01:
But it's the same principle.

[00:11:19] Speaker 01:
that in IPR proceedings, those are proceedings on the papers, procedure is important, and this court in Intelligent Biosystems affirmed the board's refusal to consider untimely new reply argument, because it could have presented earlier, just as the argument here could have presented earlier, and the Intelligent Biosystems

[00:11:42] Speaker 01:
decision affirmed on only that basis and explicitly declined to consider the substance.

[00:11:47] Speaker 02:
Is the citation of support for a claim an argument for the relief requested?

[00:11:56] Speaker 01:
I'm sorry, Your Honor, I didn't catch that.

[00:11:58] Speaker 02:
You're talking about support for a claim.

[00:12:02] Speaker 02:
Yes.

[00:12:03] Speaker 02:
CFR 4223b says, all arguments for the relief requested is an association of support and argument for relief.

[00:12:14] Speaker 01:
Yes, and that's what Electrosonics states.

[00:12:17] Speaker 01:
Consistent with Rule 4223b, Electrosonics states that all arguments in support of a motion to amend must be made in the motion to amend, and then goes on to elaborate that those requirements include the requirement

[00:12:32] Speaker 01:
to show written description support, which includes the requirement to show not just the added limitations and the subsidy claims, but all of the limitations of those claims, which is consistent with this court's jurisprudence that written description support requires a showing of the claim as an integrated whole, not just the individual claim limitations.

[00:12:53] Speaker 04:
You're into your bubbles and I understand right that two months ago or so the PTO proposed issued a notice of opposed rulemaking to extend the pilot program and make it permanent.

[00:13:08] Speaker 04:
Is that right?

[00:13:10] Speaker 01:
That's consistent with my understanding, Your Honor.

[00:13:12] Speaker 04:
So maybe you won't know the answer to the follow-up question.

[00:13:15] Speaker 04:
Are there any changes made in the proposed permanent program that might address this question of a revised motion for an unrevised amendment?

[00:13:28] Speaker 01:
I am not aware of those changes.

[00:13:30] Speaker 01:
If you don't know, that's fine.

[00:13:36] Speaker 02:
OK.

[00:13:36] Speaker 02:
Thank you, Your Honor.

[00:13:37] Speaker 02:
Mr. Kazan.

[00:13:39] Speaker 00:
May I please go over to Jay Gason for the Appellee University of New Mexico.

[00:13:47] Speaker 00:
Your Honors, we presented written description support for the new language in the motion itself when we presented the motion to amend.

[00:14:03] Speaker 00:
We did not present support for the original claim language.

[00:14:08] Speaker 00:
So we treated it as traditional prosecution.

[00:14:11] Speaker 00:
Then in the preliminary guidance, the board looked at the same amended claim and said, your citations support the entire claim.

[00:14:25] Speaker 00:
We see that.

[00:14:26] Speaker 00:
We see that your site, even though you focused on the new language, the support actually

[00:14:32] Speaker 00:
is there for the entire claim.

[00:14:34] Speaker 00:
And you can see that in APPX 592.

[00:14:37] Speaker 00:
So then they told us, you may want to show in the reply the full site.

[00:14:44] Speaker 00:
We didn't add any new sites.

[00:14:48] Speaker 00:
They could have objected to our citations.

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supporting written description.

[00:14:56] Speaker 00:
They never did.

[00:14:57] Speaker 00:
They did not do it in the petitioner's opposition to the motion to amend.

[00:15:03] Speaker 00:
Our sights never changed.

[00:15:04] Speaker 00:
In the reply, we simply pointed out, as the board invited us to do, because they said it's readily obvious.

[00:15:10] Speaker 00:
We see it.

[00:15:11] Speaker 00:
It's readily obvious to us that the entire claim is supported in the same places.

[00:15:15] Speaker 00:
And so we simply pointed that out.

[00:15:18] Speaker 00:
Now, in the rules, in the Motion to Amend Pilot Program Notice 9501, it says you can use a reply to respond to the preliminary guidance and you can use the reply to respond to the opposition.

[00:15:34] Speaker 00:
And that's what we did.

[00:15:35] Speaker 00:
The same thing, the same principle for using the reply

[00:15:40] Speaker 00:
was also raised after the briefing in this case was over in orthophix med versus spine holdings, where this was then affirmed.

[00:15:49] Speaker 00:
That PTAB holding was affirmed by this court on August 11, 2023.

[00:15:54] Speaker 02:
If we don't agree with you, and we conclude that there was a procedural defect here,

[00:16:04] Speaker 02:
Now what happens when it goes back?

[00:16:06] Speaker 02:
Because the merits have not been appealed, and DTAB has already decided the merits.

[00:16:17] Speaker 00:
Your Honor, this was a situation where, this is in 2022, more than two years ago, the program was relatively new at that time.

[00:16:26] Speaker 00:
And we did the best we could.

[00:16:28] Speaker 00:
We even filed, because we were not sure whether to go down the path of a revised motion to amend or a reply.

[00:16:34] Speaker 00:
We were not sure.

[00:16:35] Speaker 00:
And it really goes to Judge Toronto's question, too.

[00:16:38] Speaker 02:
I don't think you're answering my question.

[00:16:40] Speaker 04:
and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and

[00:17:10] Speaker 04:
that support needed for the motion to amend.

[00:17:14] Speaker 04:
And that's improper.

[00:17:16] Speaker 04:
And we said, you know, think it and remit.

[00:17:19] Speaker 04:
What is supposed to happen?

[00:17:22] Speaker 00:
Your Honor, it would be a very draconian result in a situation where it's really not justified by the facts here.

[00:17:29] Speaker 00:
Because, I mean, we showed the support.

[00:17:33] Speaker 00:
We agreed.

[00:17:34] Speaker 00:
We did not show the support to the original claim.

[00:17:37] Speaker 00:
And we showed it only for the new.

[00:17:38] Speaker 00:
But the citation's never changed.

[00:17:40] Speaker 00:
It's the same information.

[00:17:42] Speaker 00:
And it would be a draconian result to basically say you can't put in the amendment.

[00:17:47] Speaker 00:
And cases like aqua products emphasizes how important the motion to amend process is such a vital part of the IPR process for the patent owner.

[00:17:59] Speaker 00:
And we showed very clearly here

[00:18:01] Speaker 00:
that inter-symbol cyclical shifts is simply not shown in any of the priorities cited.

[00:18:07] Speaker 00:
And that's the reason why when we made it clear in the claim that we actually are talking about inter-symbol cyclical shift, not intra-symbol,

[00:18:17] Speaker 00:
And we made that point clearly.

[00:18:19] Speaker 00:
Basically, the board said, we got it.

[00:18:21] Speaker 00:
We agree.

[00:18:22] Speaker 00:
And they allowed the camp to go forward.

[00:18:24] Speaker 04:
Now we're... You seem to be arguing that the result of vacating and remanding would be draconian.

[00:18:34] Speaker 04:
At least I'm interested in, let's assume we do it anyway.

[00:18:38] Speaker 04:
Are you, I don't know, I think

[00:18:42] Speaker 04:
Conceding that there would be no opportunity for you on remand to have the board look again at these amended claims.

[00:18:59] Speaker 00:
No, Your Honor.

[00:19:01] Speaker 00:
I mean, if we were to simply go back and start a do-over on the motion to amend, we are very confident, in fact, it's so clear, that there is written description support.

[00:19:11] Speaker 00:
There was never any issue that there is written description support.

[00:19:14] Speaker 00:
So if you had to do a do-over on the motion to amend, that would be completely fine with us.

[00:19:20] Speaker 04:
It just would... Is there a procedural vehicle called do-over?

[00:19:25] Speaker 04:
No, you're using it in an informal way.

[00:19:29] Speaker 04:
But I guess at least what I'm interested in is, is there an opportunity for you to get back to the merits with this procedural defect cured?

[00:19:42] Speaker 04:
Or has that ship sailed?

[00:19:46] Speaker 00:
I mean, again, we are happy to go through the motion to amend again.

[00:19:51] Speaker 00:
I just want to point out, Your Honor, that the board, when they

[00:19:55] Speaker 00:
There have been situations like Lippert that Appellant pointed out.

[00:20:01] Speaker 00:
In Lippert versus Day,

[00:20:03] Speaker 00:
There were undue string citations, and the board said, I can't figure out if there's written description support here.

[00:20:09] Speaker 00:
But that was not what we have here.

[00:20:11] Speaker 00:
Here we had written description support.

[00:20:14] Speaker 00:
We showed it.

[00:20:16] Speaker 00:
So the board said, yes, you provided parenthetical explanations.

[00:20:22] Speaker 00:
You provided quotes.

[00:20:23] Speaker 00:
We see it.

[00:20:24] Speaker 00:
It's there.

[00:20:25] Speaker 00:
So I think they were just trying to avoid penalizing us

[00:20:32] Speaker 00:
because they could see that what we had done was simply point to places that supports the whole claim.

[00:20:39] Speaker 00:
I think that it was not induced in citations like Lippert, it was simply right there and we treated it like traditional prosecution and showed only

[00:20:51] Speaker 00:
support for the new language without the old language.

[00:20:54] Speaker 00:
And when they pointed it out to us, we took care of it.

[00:20:57] Speaker 00:
Intelligent Biosis is an entirely different situation.

[00:21:01] Speaker 00:
In Intelligent Biosis, the petitioner made a new argument for

[00:21:08] Speaker 00:
obviousness in their reply for the first time.

[00:21:13] Speaker 00:
And that is what the board said you can't do.

[00:21:18] Speaker 00:
At the reply stage, you cannot bring up a new argument.

[00:21:24] Speaker 00:
And this is when the petitioners replied, not in the motion to amend process, but in the main process.

[00:21:28] Speaker 00:
That is not what went on here.

[00:21:31] Speaker 00:
Electrosonics is also a different situation.

[00:21:34] Speaker 00:
By the way, electrosonics is before this new pilot program, so I want to point that out.

[00:21:41] Speaker 00:
But in electrosonics, the issue was

[00:21:44] Speaker 00:
Are you showing written description support in the motion itself or in the appendix or claims listing?

[00:21:50] Speaker 00:
We never showed support in the appendix or claims listing so that we never did that.

[00:21:55] Speaker 00:
We showed the support in the main body of the motion.

[00:21:58] Speaker 00:
So, electrosonics is completely inapplicable.

[00:22:01] Speaker 00:
So, the cases that appellant deciding in fact supports us.

[00:22:09] Speaker 00:
And I want to make one more point when

[00:22:13] Speaker 00:
So going back to what I mentioned, they did have a chance in the opposition to contest written description.

[00:22:21] Speaker 00:
In addition, when the board issued an order expunging, the board actually gave them more pages and said you can treat this just like a response to a revised motion to amend and they increased the number of pages to 25 instead of the traditional 12.

[00:22:40] Speaker 00:
So they actually provided

[00:22:43] Speaker 00:
an opportunity in response to the comments that they made in the telephonic conference, APP at 752 is where the cert reply begins.

[00:22:53] Speaker 00:
And you can see that it's a much longer cert reply.

[00:22:56] Speaker 00:
And the order expunging our revised motion to amend and telling us to file a reply accommodates the concerns that they raised.

[00:23:05] Speaker 00:
At that point, they never said, we want to file an expert

[00:23:09] Speaker 00:
report contesting it.

[00:23:11] Speaker 00:
None of these points were brought up at that time and the order expunging the revised motion to amend is at APPX 717.

[00:23:18] Speaker 00:
I believe that is the points that I wanted to cover.

[00:23:30] Speaker 00:
Do your honors have any other questions?

[00:23:33] Speaker 02:
No one ever loses points by not using it for all their time.

[00:23:37] Speaker 02:
Thank you.

[00:23:40] Speaker 02:
Mr. Detrickson.

[00:23:46] Speaker 01:
Just briefly, Your Honor, I have four short points.

[00:23:51] Speaker 01:
On that last point by counsel, the order expunging and authorizing a server play, that didn't say to treat the server play as an opposition.

[00:24:01] Speaker 01:
The only relief it provided was expanding the page count.

[00:24:05] Speaker 01:
nothing to do with allowing new evidence or exactly new evidence such as an expert declaration.

[00:24:12] Speaker 01:
On the preliminary guidance, the pilot program did state the opportunity to respond to the preliminary guidance.

[00:24:21] Speaker 01:
would be appropriate in the form of rebuttal argument and so forth.

[00:24:25] Speaker 01:
But combined with the other provisions of the pilot program notice that don't permit new argument and only new evidence, that principle still holds.

[00:24:35] Speaker 01:
Look at components.

[00:24:38] Speaker 01:
I'd just like to emphasize the board there did not analyze the substance of the electorate and description support in reply.

[00:24:47] Speaker 01:
On reply, there were string citations with no parentheticals.

[00:24:51] Speaker 01:
The board just said, hey, we're not going to look at that.

[00:24:54] Speaker 01:
And so it was still purely a procedural reason without considering the substance of that alleged support.

[00:25:05] Speaker 01:
And then finally, I don't think a remand to give patent owner a new second revised motion to amend would be appropriate.

[00:25:16] Speaker 01:
The pilot program already gives a patent owner one chance at a revised motion to amend subject to its requirements.

[00:25:26] Speaker 01:
Now, patent owner didn't avail of themselves for that because of the procedural or the requirement of being directed to new claims, but that's still a much better place to be in than the patent owner in Lippert Components, which didn't get a single do-over.

[00:25:44] Speaker 01:
And I must, Your Honors, have any questions.

[00:25:46] Speaker 01:
That's all I have.

[00:25:48] Speaker 02:
Thank you, Chancellor.

[00:25:49] Speaker 02:
Please be submitted.