IPR2015-00414, Paper No. 33
`May 20, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00414
`Patent 7,643,168 B2
`____________
`
`Held: February 24, 2016
`____________
`
`trials@uspto.gov
`571-272-7822
`
`
`
`BEFORE: JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`February 24, 2016, commencing at 2:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`May 20, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00414
`Patent 7,643,168 B2
`____________
`
`Held: February 24, 2016
`____________
`
`trials@uspto.gov
`571-272-7822
`
`
`
`BEFORE: JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`February 24, 2016, commencing at 2:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`Case IPR2015-00414
`Patent 7,643,168 B2
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`BRIAN M. BUROKER, ESQ.
`BLAIR A. SILVER, ESQ.
`Gibson Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5306
`
`
`
`and
`
`KIM MOORE, ESQ.
`Apple
`1 Infinite Loop MS 169-2NYJ
`Cupertino, California 95014
`
`ON BEHALF OF PATENT OWNER (Via teleconference) :
`
`DAVID O. SIMMONS, ESQ.
`IVC Patent Agency
`7637 Parkview
`Austin, Texas 78731
`
`
`
`
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`Case IPR2015-00414
`Patent 7,643,168 B2
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`P R O C E E D I N G S
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`JUDGE JAMESON LEE: Good afternoon.
`JUDGE ANDERSON: Can you all hear me?
`JUDGE JAMESON LEE: Yes.
`JUDGE ANDERSON: So, good morning or good
`afternoon, depending on what time zone you happen to be in.
`This is the hearing on IPR2015-00414 between Petitioner Apple
`Inc. and Patent Owner E-Watch, Inc., the owner of U.S. Patent
`7,643,168.
`I am Judge Anderson, I am appearing remotely,
`obviously, as is Judge Clements. Judge Lee is before you there in
`person. Both sides have demonstratives, and it is very important
`-- we have copies of them on our computers, it's very important
`that you give us a slide number, Judge Clements and I, when
`you're discussing those demonstratives in the context of your
`argument.
`Each party is going to have 30 minutes to present their
`argument per our order. Petitioner has the burden to show
`unpatentability, and will go first, followed by Patent Owner.
`Petitioner, you may reserve time for rebuttal, just let us know
`once we do the introductions.
`So, at this time, on behalf of Petitioner, may I have
`some appearances, please?
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`MR. BUROKER: Yes, your Honor, Brian Buroker
`from Gibson Dunn on behalf of Apple. With me today is my
`colleague, Blair Silver, as well as in-house counsel from Apple,
`Kim Moore.
`JUDGE ANDERSON: Thank you, Mr. Buroker.
`And for Patent Owner? Hopefully Mr. Simmons is on
`the line and can hear me.
`MR. SIMMONS: Yes, Your Honor, I can hear you.
`Thank you. David Simmons, I'm back-up counsel for Patent
`Owner E-Watch.
`JUDGE ANDERSON: Very good.
`MR. SIMMONS: And as you know, Your Honor,
`Mr. Curfiss was unable to make the proceedings today, for
`reasons that he elaborated on.
`JUDGE ANDERSON: Right. I think we've already
`covered the fact that you're going to present the argument and
`Mr. Curfiss isn't going to be here in our prior order. So, that's
`perfectly okay.
`At this time, Mr. Buroker, whoever is going to present
`the argument on behalf of Petitioner may go ahead and proceed.
`Let me know how much time you would like to reserve for
`rebuttal and I will give you a one-minute warning for that.
`JUDGE JAMESON LEE: This is Judge Lee. I see
`there's someone at the Patent Owner's table, but is that also a
`representative of Petitioner?
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`MR. BUROKER: Yes, Your Honor, we were just
`trying to, for convenience, have the person running the computer
`over there, if that's okay.
`JUDGE JAMESON LEE: Sure. Thank you.
`MR. BUROKER: I have hard copies for Judge Lee and
`I actually have a copy of Patent Owner's slides as well, if you
`would like those.
`JUDGE JAMESON LEE: I do. Thank you.
`MR. BUROKER: May I approach?
`JUDGE JAMESON LEE: Yes.
`MR. BUROKER: Judge Anderson, if I may have 10
`minutes for rebuttal, that would be appreciated. And I think
`we've lost Judge Anderson on the screen. Is he still there?
`Should I proceed?
`JUDGE JAMESON LEE: We should have both judges
`on the screen. Here we go.
`MR. BUROKER: Thank you, Your Honors, may it
`please the Board, my name is Brian Buroker for Petitioner Apple.
`As I said, I would like to reserve 10 minutes of my time for
`rebuttal.
`Your Honors, the statute, regulations and case law here
`compel a finding that claims 1 to 31 of the '168 patent are invalid
`as anticipated in light of the related but previously published PCT
`application, which is Exhibit 1006, also referred to in the papers
`as the Monroe application, or the Monroe PCT publication.
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`If you can pull up slide 7 from our presentation, please.
`This slide was included in the petition at page 3, and it illustrates
`the relationship, or lack thereof, between various applications at
`issue here. In the top left-hand corner, in pink or salmon-colored,
`there's the '073 application, which was filed in 1999. If you scroll
`out to the right, you can see that there was a PCT application that
`was filed, and then published in 1999. That's the so-called
`Monroe PCT publication.
`And then the patent we're here talking about today is
`shown in the bottom left-hand side of the screen, the '168 patent,
`which was filed in 2006, it's application number 11/617,509.
`There's no dispute, for purposes of these proceedings,
`Your Honor, that the content and substance of the 509
`application, which became the '168 patent, and the PCT
`application, are identical. The patent -- the institution decision
`pointed out a few minor differences between these two, but
`otherwise, they are largely the same.
`So, they clearly anticipate the reference if the PCT
`application is prior art. And it is. And that is because the '168
`patent is only entitled to the priority benefit of its parent, the '470
`application, which is shown in the screen in the middle left-hand
`side there.
`And why is that? It's because the Patent Owner, during
`prosecution of the '168 patent, only made a proper priority claim
`to the '470 application and didn't comply with the statute,
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`regulations, or MPEP requirements to claim priority back up to
`the '168 -- or excuse me, to the '073 application.
`So, let's look at what the law requires. Particularly let's
`look at slide 9. So, you start with the statute, obviously, and the
`statute Section 120 of 35 USC specifies that an application is not
`normally entitled to the benefit of an earlier filing date unless that
`application contains a specific reference to the earlier filed
`application. Here, if the '168 patent wanted to claim benefit to
`both the '470 application and the '073 application, it required a
`specific reference to both of those applications. And the Federal
`Circuit has said that that specific reference must include a
`description of the complete chain of priority if there are multiple
`applications.
`So, let's go to slide 10, please. The regulation that was
`in force at the time --
`JUDGE JAMESON LEE: I'm sorry --
`MR. BUROKER: Sorry, go ahead, Judge.
`JUDGE JAMESON LEE: You said the Federal Circuit
`said that; in what case did it say that?
`MR. BUROKER: Your Honor, we were looking at
`slide 9. The Medtronic case, if you read this case caption, but
`also if you read the opinion, the case finds that because the
`application didn't include the complete chain of priority, it failed
`to comply with the statute and therefore the specific reference
`was missing.
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`JUDGE JAMESON LEE: This is what you state, but I
`have trouble finding that. Instead, what I find is this statement,
`"we agree with the District Court that because intermediate U.S.
`applications 6 and 8 failed to specifically reference the earlier
`filed application in the priority chain, the '281 patent is not
`entitled to claim the priority date of International Application 2b
`under Section 120."
`So, based on that language, it's only the failure to
`specifically reference the earlier-filed application that is the cause
`of the reversal.
`MR. BUROKER: It's because the applications in that
`case, they're applications 4, 6 and 8 that are referred to in the
`decision, they find that the applications 6 and 8 didn't specifically
`identify -- well, let's take application 8. Application 8 in that
`decision didn't identify application 6, it also didn't identify
`application 4. So, it was the failure of 8 to identify each of its
`prior parents and grandparents in the chain, and also to provide a
`complete chain of priority.
`JUDGE JAMESON LEE: Well, that's where I'm
`missing. It sounds like you're adding something to it. From what
`I read, it's just the failure to specifically reference. And I don't
`know where you get the other phrase that to identify the correct
`relationships between all the ancestral applications, and the
`pertinent case.
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`MR. BUROKER: Well, on page 1363 of the decision,
`it says, "We recently clarified," and it's citing to the Encyclopedia
`Britannica case, it says, "we recently clarified that the specific
`reference requirement mandates each,"—and then it says in
`brackets, "intermediate”—“application in the chain of priority to
`refer to the prior applications," plural.
`JUDGE JAMESON LEE: Right, that's still a specific
`reference. It doesn't say anything about whichever -- which one
`is a continuation, which one is a divisional. I mean, that doesn't
`seem to be there.
`MR. BUROKER: Okay.
`JUDGE JAMESON LEE: In both cases, even the ones
`you just mentioned, it's only talking about the specific reference.
`MR. BUROKER: Right. And then you go on to the
`next part of the decision, where they say, in footnote 5, on page
`1364, "The Court says that a sufficient disclosure under Section
`120 would have been as follows," and there in that specific
`example in footnote 5 --
`JUDGE JAMESON LEE: I understand, but that's just it
`would be sufficient, it's an example. If someone gave you the
`entire chain, including all the relationships, yes, indeed, that
`would be sufficient. But that's not pronouncing a requirement of
`you must do that in each and every case.
`MR. BUROKER: Well, I believe, Your Honor, we read
`the case differently, and it goes on to say in the text of the
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`decision at 1364, it goes on to say, here in the applications at
`issue, they didn't cite the entire list of applications, and then they
`say, in 1364, "more is required." And I think a fair reading of
`that decision is that the Federal Circuit is saying that what is in
`footnote 5 is the kind of disclosure that is required.
`JUDGE JAMESON LEE: Where are you citing to?
`MR. BUROKER: On page 1364 of the decision, that
`"more is required" sentence is in the top right. I think we've got it
`shown on the screen here for you, for Judge Lee, but the others
`can't see it, obviously, but it's -- you know, in the two-column
`printout, it's in the top right-hand column of the reported decision.
`JUDGE JAMESON LEE: Yeah, I have a printout that
`has a different format. I wonder --
`MR. BUROKER: So, it's right after the -- it's near
`where the footnote 5 is, and footnote 6 is actually -- actually, no,
`footnote 5 is coming off of that same sentence. So, if you find
`where footnote 5 is referred to in your decision, then you'll see
`that that's where the "more is required" statement is.
`JUDGE JAMESON LEE: I'll look for it, but in the
`meantime, where in the text of Section 120 do you find this
`requirement for identifying relationships?
`MR. BUROKER: It's not in the text of 120, I will
`agree, it's in the CFR. So, if you look at 37 CFR, which is the
`PTO's rule-making, interpreting how to apply Section 120 --
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`JUDGE JAMESON LEE: Well, before you get that, is
`Medtronic a case about interpreting the statute or is it about
`interpreting the rule?
`MR. BUROKER: It mentions both. It certainly is
`interpreting the statute. And it mentions the statute in force at the
`time, Section 120 and what is required under Section 120. And,
`so, then we think that that holds that you need to do what is
`required in or what is exemplified in footnote 5 of the decision,
`which is to have the full complete chain of priority recited, as to
`be a specific reference.
`There's two other things that compel that as well.
`There's the CFR, which if you go to slide 10 of our deck, the CFR
`that was in force at the time, 1.78(a)(2)(i) does say that the
`reference must contain an identification of the full application and
`indicate the relationship of the applications.
`So, the CFR required it as well, not just our view of --
`JUDGE JAMESON LEE: Well, aren't you being
`selective in what you read and don't read? Because the rule is
`referring to "each such application" and the "such" is referring
`back to prior filed copending nonprovisional applications and I
`don't think the '073 was copending with the patent at issue here.
`MR. BUROKER: That reference to that word
`"copending" in the regulation is a reference to the fact that under
`Section 120, you can -- you can effectively have a copending
`status if there is copendency between all applications in a priority
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`chain that you are claiming. And, so, I do believe that that
`reference is not just a requirement to identify just the only
`copending applications, but all applications in a chain you are --
`JUDGE JAMESON LEE: But don't we have to go by
`the word? I mean, you can't rewrite the rule. The rules refers to
`"each such application." In your view, what does "such" refer to?
`MR. BUROKER: It refers to the applications you are
`claiming priority to, and the word "copending" there indicates
`that if you want to have copending relationship all the way back
`to an earlier application, then you need to identify all
`applications. So, the word "copending" there is not in the narrow
`sense that the two applications are pending at the same time, it's
`talking about copending in the kind of context of Section 120,
`which allows you to claim benefit to multiple applications and
`establish a copendency.
`JUDGE JAMESON LEE: I see where you're coming
`from, but isn't that not the natural reading of something? When
`this says "each such," you refer back to what was mentioned right
`before it, and what was mentioned right before it is "prior filed
`copending."
`MR. BUROKER: And I think what "copending" means
`in this context is every application you want to claim priority to
`back to the earliest one, and not just -- and that's consistent with
`the MPEP, which again is the PTO's own interpretation of its
`statute and regulatory guidance.
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`If we go to the next slide, the MPEP that was in force at
`the time makes it clear that you have to -- if you want to claim
`priority to a number of applications in a chain, you have to claim,
`here we're looking at Section 201.11, Section (3)(c), "if the
`applicant wishes that the pending application have the benefit of
`the filing date of a first filed application," it's giving an example
`where you've got multiple applications in a chain, "besides
`making reference to the intermediate application, you must also
`make reference to the first application."
`The reference to the prior application must identify all
`the prior applications and indicate the relationship between each
`nonprovisional application in order to establish copendency
`through the entire chain.
`JUDGE JAMESON LEE: I see, so the MPEP says that,
`can you explain to me, how do you read the rule? I didn't quite
`get it, and how "each such," in my mind, refers back to "prior
`filed copending," but somehow you say you want to read
`copending out.
`MR. BUROKER: I am not reading copending out, I am
`explaining what copending means and I agree that "each such"
`refers back to the clause that says "copending applications." I
`agree with that. That specific --
`JUDGE JAMESON LEE: "Prior filed and copending."
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`Okay.
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`MR. BUROKER: That's the only -- that's the way to
`read that.
`JUDGE JAMESON LEE: Right.
`MR. BUROKER: And here in the MPEP, they're
`claiming --
`JUDGE JAMESON LEE: Well, forget the MPEP, let's
`say the MPEP is not here, how do you read the rule so that the
`Patent Owner actually has to provide the relationship, even for
`non-copending prior applications?
`MR. BUROKER: I am reading copending in the nature
`of the idea under Section 120 is you can claim priority to an
`application that is pending, or Section 120 says "or an application
`that otherwise can claim priority to another application." It
`establishes -- it's as if the earlier application, the first one in the
`chain, is also copending. And that's what the MPEP has also said,
`also using that phrase "copending" here.
`JUDGE JAMESON LEE: Leave the MPEP out of it,
`because I want to take it one step at a time.
`MR. BUROKER: Right.
`JUDGE JAMESON LEE: The rule clearly says "each
`such application," and you agreed that "such" refers back to "prior
`filed copending nonprovisional applications."
`MR. BUROKER: That's what it says.
`JUDGE JAMESON LEE: So, a straight reading of that
`would get to this result, the '073 application was not copending
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`with the involved patent. So, this Rule 78(a)(2)(i) doesn't relate
`to that one.
`MR. BUROKER: It was copending in the sense that the
`statute discusses copendency, that the Encyclopedia Britannica
`case talks about copendency and the MPEP talk about
`copendency, which is if you want to get an earlier date and you
`need to show overlap between various applications in a chain, all
`of those applications are copending for purposes of 1.78.
`JUDGE JAMESON LEE: I see, so you want to read
`copending in that context to mean, not -- just with respect to the
`last one, but copending in the sense that if it's copending with
`anybody in the chain, it's included?
`MR. BUROKER: Correct. And I believe that's -- I
`believe that's the way that the Encyclopedia Britannica case reads
`that term and I believe that's the way the MPEP is using it here in
`Section 201.11, Section (3)(c) that we are seeing on the screen.
`JUDGE ANDERSON: Let me go back, I didn't get a
`question in that I want to get in.
`MR. BUROKER: Sure.
`JUDGE ANDERSON: In Section 120, the only
`requirement in Section 120 is that each -- that there be specific
`reference to the earlier filed application, and it is clear in this case
`that the Exhibit 1001, the '168 patent on the cover page refers to
`the '470 application, correct?
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`MR. BUROKER: On the face of the patent, correct,
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`yes.
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`JUDGE ANDERSON: And in the specification, the
`application that really is the nitty-gritty here, the '073 application,
`is referred to as well, correct?
`MR. BUROKER: It is referred to incorrectly, but it is
`referred to, yes.
`JUDGE ANDERSON: So, the fact is both of the
`applications that are in this chain are referenced on the face of the
`patent. What makes the -- so, it would seem to me that the -- that
`the statute itself is, in fact, met by what the facts are in this case.
`MR. BUROKER: Well, we don't agree with that,
`because it says a specific reference, not just any reference, and we
`believe that the words "specific reference" has been interpreted
`by the courts and by the MPEP to require not just an
`identification of the application, but its relationship to the
`application at issue. And that is missing.
`So, we don't believe that in either place there is a
`specific reference as it's meant by the statute because it's not a
`complete chain of priority and both places don't list both
`applications, you have to look in one place for the '073, you look
`in the spec, and for the '470, you look in the application data
`sheet, or the file.
`JUDGE ANDERSON: But the rule says you can in
`either place, you know. So, legally, I don't see any reason why
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`you couldn't put part of it in one place and part of it in another,
`and be specifically referencing. My -- but what I want to ask you
`is that the fact that there's an error in the relationship as set forth
`in the specification between the patent at issue and the earliest
`filed application, is that a basis in and of itself to say no, we're not
`going to go there, we're not going to allow that to be a priority
`claim to that application?
`MR. BUROKER: You mean the fact that in the
`specification it says this application is a divisional of the '073,
`which is incorrect?
`JUDGE ANDERSON: Correct. That's what I'm
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`asking.
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`MR. BUROKER: Yeah, I believe that is sufficient to
`nullify the priority claim. And just to Your Honor's earlier point,
`1.78 does allow you to put the specific reference in one of two
`places, but 1.78 also clearly requires that you provide the
`applications and their relationship, and in neither place is there a
`complete set of relationships between the '168 patent, '470
`application and '073 application.
`So, that's also missing, even if you were to do the -- you
`know, look in one place for one reference and another for the
`other, you don't still have the complete chain in either place. And
`there's a reason for that, you know, again, the Medtronic case at
`the end says it's very important from a policy standpoint that we
`don't have this reasonable person standard, they rejected that
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`outright because it's up to the Patent Owner to get it right. The
`public shouldn't have to guess what priority claim is being made,
`it should be up to the Patent Owner.
`And in this case, the filing receipt showed only a claim
`to the '470 application, and the Patent Owner didn't do anything.
`The application was published with only a claim to the '470
`application, the Patent Owner didn't do anything. The patent
`issued and has been out in the public for many, many years, and
`the Patent Owner has not done anything. The burden was on
`them to get it right in one of the two places, it's not correct in
`either place, and as a result the priority claim is not effective.
`JUDGE ANDERSON: What about the amendment that
`was not entered that does include in the specification and right in
`front of the '073 application a priority claim to the '470
`application? Does that change anything? Or give me your
`response to why that doesn't work, assuming that that's part of the
`record here. So, why wouldn't that meet the chain issue?
`MR. BUROKER: Well, one, it wasn't entered, so it
`wasn't actually -- it isn't an amendment to the application, which
`is what's required, and it's certainly not in the application data
`sheet. Two, even if it had been entered and you treat it as if it had
`been entered, it still has an incorrect recitation. It's got two
`sentences that still fail to say that the '470 application is a
`continuation of the '073 application.
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`Instead, you've got two disjointed sentences that are
`inconsistent with one another, and again, according to Medtronic,
`our reading of the case is that they are not going to apply -- the
`Federal Circuit doesn't believe that the reasonable person
`standard applies here, it has to be clear on the face of the
`document, and the document -- the not entered preliminary
`amendment isn't on the face of this patent. So --
`JUDGE ANDERSON: Yeah, I don't read it saying that
`they absolutely reject the reasonable person test, but they do
`certainly go back to Section 120. Is it your view that under no
`circumstances would a reasonable person, given the information
`that's provided in this application, be able to ascertain that, in
`fact, there was a valid claim to the '073 date?
`MR. BUROKER: Well, I just want to refer, Your
`Honor, to the very top of 1366, where it says, "we decline" -- this
`is the Federal Circuit in Medtronic, "we decline to accept the
`reasonable person test proposed by Medtronic to interpret the
`sufficiency of a priority claim under 35 USC Section 120."
`So, I think they did reject the reasonable person test, but
`if that is the test that the Board is going to apply, I do believe
`there's insufficient evidence here because there's no place where
`the complete priority chain is recited, in either the application
`issued --
`JUDGE ANDERSON: Let me ask you, is there any
`evidence of record from you or the Patent Owner that this was a
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`mistake? I don't think the Patent Owner argues that it was a
`mistake, they just say it's okay.
`MR. BUROKER: I don't believe that they have said it's
`a mistake either, and we just -- we're -- our position is it's
`insufficient to meet the statute, whether it's a mistake or not. A
`mistake would only be relevant if you were talking about a
`request to correct it, and we're not asking you to correct it and
`neither did the Patent Owner in this case.
`JUDGE ANDERSON: What about McDermott
`Printing, which is cited in the Medtronic case? It seems to give a
`little bit of latitude to how a priority claim is made, because it
`didn't say in that particular case, it just said to the application that
`was pending, it just said it's pending. It didn't say and we claim
`priority to or it's a continuation of or anything like has been
`suggested. Does that give -- doesn't that give us a little latitude to
`say, well, it's clear what the intent was here, even if it wasn't
`executed correctly?
`MR. BUROKER: Well, the Medtronic distinguishes --
`I'm getting a little feedback, I'm sorry.
`The Medtronic case distinguishes McDermott Printing,
`and I believe it's an accurate distinction. There the question was
`whether a reference in a nonprovisional application was sufficient
`to claim priority under 119(e), which is a different statutory
`requirement, not whether it was sufficient under Section 120,
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`which we believe in light of the rule requires a more detailed
`explanation of the priority chain.
`So, I think that that's a difference that is important for
`purposes of comparing Medtronic versus the McDermott Printing
`case.
`
`And, Your Honors, I think I have addressed the
`arguments and may be in my rebuttal time. So, if there are no
`further questions, I will reserve my remaining time for rebuttal.
`JUDGE CLEMENTS: Mr. Buroker, I want to revisit
`one argument you made about the preliminary amendment in this
`case and the fact that it hadn't been entered. I read 35 USC 120,
`pre-AIA, only to require that the “amendment ... is submitted,"
`not necessarily that it be entered. So, is it a red herring to be
`looking at the patent the way it's printed? Should we not be
`looking at and considering that preliminary amendment and how
`it would read in combination if it had been entered?
`MR. BUROKER: Well, Your Honor, I believe -- and
`we didn't focus on that argument to see what the MPEP says, but
`I believe that the MPEP suggests that the reference to the prior
`application must be in the application. So, it's an interesting
`question. I think that we would -- we would consider the fact that
`it wasn't entered and that there were multiple opportunities for the
`Patent Owner to resubmit the preliminary amendment, as
`evidence that it wasn't actually submitted, it was offered but not
`rejected by the office. But, you know, if we want further -- I
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`hadn't considered that, I didn't see that raised in the briefing, we
`can provide further supplementation if the Board is interested in
`that particular nuance, but again, even if you do consider it a part
`of the record, it still provides this inconsistency where you still
`don't have a complete priority chain like you see in footnote 5 of
`the Medtronic decision, which properly identifies which
`application is a continuation of what, and establishes the chain all
`the way back to the '073.
`JUDGE CLEMENTS: Okay, thank you.
`JUDGE ANDERSON: Mr. Buroker, one last thing, I
`think we got cut off. How much time did you reserve for
`rebuttal? I did not recall. I think I got cut off.
`MR. BUROKER: I had reserved 10 minutes, Your
`Honor. I don't know how much into that I am.
`JUDGE ANDERSON: I think you're good. I think
`you're good. Okay.
`JUDGE JAMESON LEE: I have a question, though. I
`have a question.
`JUDGE ANDERSON: Thank you.
`JUDGE JAMESON LEE: I was able to find the portion
`of Medtronic you refer to, where it stated "more is required."
`MR. BUROKER: Yes.
`JUDGE JAMESON LEE: But right before that is the
`language stating "the offending application omitted any reference
`to certain applications and omitted citations to certain other
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`citations." So, doesn't that tell us that the deficiency is in failure
`to have a specific reference? So, it's not telling us that you need
`to provide the relationship as well for the entire chain.
`MR. BUROKER: Well, Your Honor, the way I read the
`decision, it says, "More is required," and then it drops a footnote
`and footnote 5 is where it says this would have been sufficient. I
`read that as them saying, this is what was required. Now,
`obviously, you read it differently, but that's the way we read the
`case.
`
`JUDGE JAMESON LEE: Well, why would you be
`offering this as something that is sufficient to be a requirement?
`MR. BUROKER: Right after the Court says "more is
`required" and drops a footnote, I read those two together, and the
`footnote then is the example they give of what they think is
`required. That's our reading of the opinion.
`JUDGE JAMESON LEE: And your reading doesn't
`change when you consider a couple of lines above when the
`entire fault is failure to reference, failure to identify, and
`somehow that evolves into failure
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