IPR2016-00948, Paper No. 36
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`trials@uspto.gov
`IPR2016-00949, Paper No. 37
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`June 23, 2017
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` 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`_______
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`_______
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`RECORD OF ORAL HEARING
`Oral Hearing Held: Monday, June 5, 2017
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Monday, June
`5, 2017, at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia, in Courtroom B, at 1:00 p.m.
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`
`
`
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`trials@uspto.gov
`IPR2016-00949, Paper No. 37
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`June 23, 2017
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` 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`_______
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`_______
`
`RECORD OF ORAL HEARING
`Oral Hearing Held: Monday, June 5, 2017
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Monday, June
`5, 2017, at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia, in Courtroom B, at 1:00 p.m.
`
`
`
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
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`
` A
`
` P P E A R A N C E S
`
`
`
`ON BEHALF OF THE PETITIONER, VALVE CORPORATION:
`
`JOSHUA C. HARRISON, ESQUIRE
`REYNALDO BARCELO, ESQUIRE
`BARCELO, HARRISON & WALKER, LLP
`2901 West Coast Highway
`Suite 200
`Newport Beach, California 92663
`(949) 340-9736
`
`
`ON BEHALF OF THE PATENT OWNER, IRONBURG
`INVENTIONS LTD.:
`
`EHAB SAMUEL, ESQUIRE
`YASSER M. EL-GAMAL, ESQUIRE
`MANATT, PHELPS & PHILLIPS, LLP
`695 Town Center Drive
`Fourteenth Floor
`Costa Mesa, California 92626
`(714) 338-2740
`
`
`
`
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` P R O C E E D I N G S
` JUDGE KAUFFMAN: Thank you. Please be seated.
`Give us just a minute to get started.
` Petitioner, would you please kindly introduce
`yourself and anyone else from your party that you would like
`to introduce for today?
` MR. HARRISON: Yes, Your Honor. Joshua Harrison
`for Petitioner Valve, and with me is my partner, Reynaldo
`Barcelo, also for Petitioner Valve, lead and backup counsel
`in this case.
` JUDGE KAUFFMAN: Thank you, Mr. Harrison.
` And, Patent Owner, the same, please.
` MR. SAMUEL: My name is Ehab Samuel on behalf of
`the Patent Owner, as well as with me, cocounsel, Yasser
`El-Gamal, on behalf of the Patent Owner.
` JUDGE KAUFFMAN: Thank you.
` Mr. Samuel, did you give one of your business
`cards to the court reporter?
` MR. SAMUEL: Yes, Your Honor.
` JUDGE KAUFFMAN: And, Mr. Harrison.
` MR. HARRISON: Yes.
` JUDGE KAUFFMAN: And are you able to hear me okay?
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` THE REPORTER: Yes.
` JUDGE KAUFFMAN: Thank you.
` We are going to make one transcript for both
`cases, and that entire transcript will be entered in each
`case. So if you would, please, be careful today to -- if
`something applies to just one of them, make sure which one it
`applies to.
` I also find the transcript very helpful when
`writing the final written decision, and so I would like for
`you to please, if you're talking about Slide 8, tell me
`you're on Slide 8. Now I'm on Slide 9.
` That makes it much more useful to put that
`together with the exhibits and see what you're talking about.
`So I will get the most out of what you're saying if you would
`do that for me, please.
` Each side has their time, and unlike in a
`courtroom, we're not going to interrupt each other. If you
`have an issue with something the other party is saying, then
`we can talk about that afterwards, but please, no
`interrupting each other.
` Petitioner, how would you like to divide your time
`today?
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` MR. HARRISON: Well, Your Honor, you had mentioned
`on our last call that there were going to be some issues that
`we discuss ahead of time that don't go against time.
` JUDGE KAUFFMAN: There are.
` MR. HARRISON: In the case in chief, I would
`probably end up reserving half of my time for rebuttal,
`depending on how it goes. If there's a lot of questions from
`the Board, you know, I might end up reserving less than half
`the time for rebuttal.
` JUDGE KAUFFMAN: So you would like to reserve 30?
` MR. HARRISON: Yes.
` JUDGE KAUFFMAN: Okay. There are a couple issues
`we're going to talk about today. We had a call on the 2nd of
`June, and we discussed supplemental information and
`objections to the slides. There won't be a separate order
`about that call. Our discussion today will cover that.
` So what I'd like to do first is for Mr. Samuel to
`tell us what he's asking for regarding supplemental
`information, and then we'll deal with the slide objections.
` MR. SAMUEL: Sure. Thank you, Your Honor.
` May I approach?
` JUDGE KAUFFMAN: Please.
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` MR. SAMUEL: So the issue here, as we discussed
`last week, Your Honor, is the introduction of the institution
`decisions for '136 and '137 IPRs and the '940 to '949 IPRs.
` And the significance of that is to avoid
`inconsistent decisions and analysis. The -- both pairs of
`IPRs deal with the same patents, obviously the same panels,
`and the same claims. And as you have already looked at the
`'136 and '137, you are already disposed on these institution
`decisions with respect to these.
` Petitioner has conceded that the effect of '948
`and '949 and in connection with the 37 C.F.R., 42.8(b) to
`certification. And we want to have the opportunity to
`address the legal authority in the '136 and '137 IPR with
`respect to the preamble.
` I know, Your Honor, you asked me to identify a
`case that -- in which this case has happened before. And,
`unfortunately, there is no case with our specific facts that
`deals with this issue. There is no case that decided this
`issue one way or other. However, I did find a case, Mylan
`versus Aventis, IPR2016-00712. And that case allowed for
`supplement info of district court claim construction after
`the institution decision in that proceeding. So that's the
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`closest we could find as to this issue.
` One thing to -- sorry, Your Honor.
` JUDGE KAUFFMAN: Go ahead. I didn't know if you
`were done.
` MR. SAMUEL: One final comment, Your Honor, is
`final decision in the '948 and '949 IPR could create estoppel
`effects as to the '136 and '317. And, again, that's another
`reason to make sure that there are consistent decisions
`between them.
` JUDGE KAUFFMAN: Okay. Thank you, Mr. Samuel.
` Under 42.123: In order for supplemental
`information to be authorized to be submitted, it first has to
`be relevant to a case that's at issue. Then, when it's more
`than 30 days past institution, you've got to be able to say
`why it wasn't introduced sooner, and you've to be able to
`explain why it was in the interest of justice.
` So I've given you're sound now that you didn't
`address any of those things. So we're not going to authorize
`a motion on supplemental information at this time.
` MR. SAMUEL: I do have one comment, Your Honor. I
`did address them in the context of all the arguments I've
`just raised was in connection with the interest of justice.
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`And with respect to the fact that we have just raised this
`three weeks after the institution decision, that it -- it
`couldn't reasonably have been raised that much more earlier.
`It's only been three weeks.
` And so we believe that's considered reasonable
`under the PTAB's prior approach.
` JUDGE KAUFFMAN: Right. I understand what you're
`saying.
` MR. EL-GAMAL: One last comment, Your Honor.
` JUDGE KAUFFMAN: Please come to the podium.
` MR. EL-GAMAL: The real issue here is one of the
`preamble, and that's an issue of claim construction. And I
`think it's important -- that's an issue of law, and I think
`it's important that the the record be developed in a way that
`all of you get that issue correct.
` JUDGE PETRAVICK: So my question is -- so you're
`asking to submit supplemental information, which is merely
`just putting forward information.
` Are you really asking us for supplemental for
`anything along the supplemental information? Because at this
`point, even if you submit the decisions, you're not allowed
`to comment on them.
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` MR. EL-GAMAL: Well, we are asking, actually, for
`both. We're asking for the '136 and '137 decisions to be
`part of the record. The institution decisions to be part of
`the record. And leeway in addressing the cases that were
`cited by the PTAB. Neither party cited --
` JUDGE PETRAVICK: Okay. I have another question
`for you.
` MR. EL-GAMAL: Okay.
` JUDGE PETRAVICK: So what you just said -- and
`tell me if I'm misquoting you -- the real reason you want to
`submit supplemental information is to talk about the preamble
`issue?
` MR. EL-GAMAL: That's right.
` JUDGE PETRAVICK: Preamble issue law hasn't
`changed.
` Why didn't you submit it earlier in your briefing?
` MR. EL-GAMAL: We submitted a response to what the
`Patent Owner -- or the Petitioner submitted in the way of
`briefing, and we believe that response was adequate for what
`was presented in their petition. The cases that you've
`looked at in the context --
` JUDGE WEATHERLY: If it were adequate, then it's
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`adequate. So I guess all three of us, I think, share the
`same concern. And I recognize that proceedings here for the
`Board are a little unusual, and our rules are different.
` MR. EL-GAMAL: Right.
` JUDGE WEATHERLY: So, generally speaking, I think
`that we're amenable to request for relief. They need to be
`timely, though. And it's not proper to pry open an issue
`with some sort of subterfuge. And, frankly, that's what it
`comes across as to me.
` MR. EL-GAMAL: Well, I think --
` JUDGE WEATHERLY: There's no need for us to have
`the DIs in the other cases of record in this case for the
`panel to understand any aspect of the case.
` MR. EL-GAMAL: Well, from our point of view --
` JUDGE WEATHERLY: Let me finish. If you would
`like leave to submit additional briefing on an issue, then we
`should talk about that, not talking -- we shouldn't be
`talking about whether DI -- the discussions to institute that
`this panel previously wrote and understands fully should be
`made of record in this case.
` I'm not incredibly sympathetic to your request,
`quite honestly, because the preamble is something that's been
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`in the claims from the very beginning, and if it's a basis
`for argument and a defense that you'd like to raise, it's
`been there from the very beginning of the case. It's been
`there since before this petition was filed, quite frankly.
` And it's an issue of claim interpretation, as
`you've raised, and a matter of law. So it's not as if we
`need to be reminded that your claims have words in them and
`the words have meaning. If you want to argue about the
`meaning of claims, you should have been doing that from the
`very beginning.
` And to do so in this case at this late date is an
`extraordinary request. Nevertheless, if you were to make an
`extraordinary request, I would appreciate that the request be
`made directly rather than in the form of some kind of
`indirect mechanism, like asking to have other decisions in
`other cases where the preamble was addressed and made of
`record in this case. That does not magically transform these
`claims into something that they haven't been.
` MR. EL-GAMAL: Right.
` JUDGE WEATHERLY: So I'm finished now. And I
`realize that I haven't posed a question to you, and I
`apologize for the interruption. But I thought it might be
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`instructive.
` MR. EL-GAMAL: Actually, it is instructive, Your
`Honor.
` I think part of what -- what we see here is that
`we're put at a little bit of a disadvantage, because in the
`'948 and '949 petition, which is what we're here to decide
`today, this issue of preamble was not raised by the
`Petitioner.
` JUDGE WEATHERLY: It doesn't have to be.
` MR. EL-GAMAL: We raised it in our response, and
`we did the best we could with what we understood the issue
`was at the time. That issue has since been further developed
`in much more greater detail in subsequent petitions on the
`same patents, on the same claims, and the same limitations in
`the '136 and '137 Patent -- or IPRs.
` Those decisions -- those issues, then, were
`analyzed by you, separate and apart from what was happening
`in this petition -- in these petitions. And we feel like
`we're at somewhat of a disadvantage now because the same
`panel who looked at this issue has cited cases that we were
`never dealing with or petitions that we were never dealing
`with in this case that have an effect on this case.
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` And so you're right in many ways. We're not
`really interested in bringing in the '136 decisions. We're
`really -- at the bottom here, we're really interested in
`dealing with addressing those cases that you cite in
`connection with the preamble. And we'd like an opportunity
`to do that here because we think it is something that has
`relevance in this case.
` JUDGE KAUFFMAN: We -- to be clear, what Judge
`Weatherly was saying earlier and I think what Judge Petravick
`was getting at too is, you know, the Patent Owner's
`preliminary response was an opportunity to address this, if
`you wanted to. It doesn't have to be addressed by the
`Petitioner in the petition. And then your response was an
`opportunity to address whether or not the preamble is
`limiting as well. So you had two opportunities.
` And then in that interim, you could have asked for
`this briefing. This is first time I've heard a direct
`request for, We'd like some additional briefing. So be
`specific for me.
` What are you asking for? How many pages and when?
` MR. EL-GAMAL: Ehab has a better handle on the
`specific cases, and he'll present that to you now.
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` JUDGE KAUFFMAN: I don't want to hear the merits
`of the cases. I want to hear how many pages you want and
`when.
` MR. SAMUEL: It's one page -- actually, it's two
`pages, because it's back to back. And it deals with two
`cases: the Schoomer (phonetic) case and the Meritide
`(phonetic) case. That's it.
` JUDGE KAUFFMAN: It sounds like you're talking
`about a preexisting document. I'm asking you if want to be
`authorized to submit some additional briefing on those cases.
` MR. SAMUEL: Yes.
` JUDGE KAUFFMAN: On the -- okay. And you're
`asking for two pages?
` MR. SAMUEL: Oh, how many pages -- oh, yeah. I
`mean, two pages would be sufficient to cover our argument
`with respect to these cases.
` JUDGE KAUFFMAN: To be clear, because we've
`covered a little bit of ground, we are not authorizing a
`motion on supplemental information at this time, and we're
`considering your request for two additional pages of
`briefing.
` This also interplays with the slides -- and I'll
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`talk about that for a minute, but I'd like to hear from
`Mr. Harrison now about the additional pages of briefing.
` If we grant it, it would be to allow a similar
`number of pages to discuss the issue.
` MR. HARRISON: Your Honors, the Petitioners oppose
`their request for additional pages of briefing and actually
`disagree with a lot of the things that they just said.
` For example, they said that we conceded something.
`I don't think we've conceded anything with regard to leave to
`file supplemental information or their request. They've
`presented no authority for their request, as the Board
`pointed out.
` JUDGE KAUFFMAN: The supplemental information
`request is denied. Let's talk about the additional briefing.
` MR. HARRISON: We think that their request for
`additional briefing is very late in this case. They were
`aware of the decisions on appeal in the 00136 and -- IPR for
`actually a month now. And --
` JUDGE KAUFFMAN: I believe '136 and '137 were
`entered on May 4th.
` MR. HARRISON: Yes. So exactly a month from now.
`And this is a new request, actually, for the additional
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`briefing. Since the other request is now gone, it's a
`request being made today. And so they've had a month to try
`to ask for something.
` They opposed our motion for joinder. And now
`they're trying to reference things in the other case as if
`they want a portion of that joinder. If they are so
`disadvantaged as they're saying they're disadvantaged, why
`did they oppose the joinder?
` JUDGE KAUFFMAN: What -- Mr. Harrison, I don't
`know how you could disagree that there are many other reasons
`to disagree with joinder, aren't there?
` MR. HARRISON: Sure. There were scheduling
`difficulties.
` JUDGE WEATHERLY: Well, and the other thing is
`that argument that you're making about the opposed joinder
`implies that you believe joinder would have been appropriate
`and that the cases should've been addressed together. And if
`that's the case, then we should have additional briefing.
` So you know -- here's -- at bottom, here's what my
`interest is. My interest is to get to the right answer, and
`it's to have everybody have every opportunity to speak on
`every topic that they believe is necessary to arrive at a
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`right answer.
` So I'm not particularly impressed by arguments
`that talk about, Well, they could have done this, or they
`could have done that. Sometimes I am impressed by those
`arguments, and this is borderline, because it really is a
`very late request for additional briefing.
` I'm not sure whether the request is late because
`of a lack of experience with procedures here at the Board,
`which as I said earlier, I recognize as being a little bit
`arcane. And it's different.
` Nevertheless, my focus is always on getting to the
`right answer and being consistent about the answers that we
`provide and having it set forth in a clear manner so that the
`parties can decide what, if anything, they'd like to do with
`the decision.
` So I'm sort of biased toward letting appeal say
`their piece. Why shouldn't I understand your argument about
`joinder being appropriate -- as weighing in favor of
`additional briefing?
` MR. HARRISON: Thank you for asking that.
` We were and are -- you know, it's obviously too
`late now -- in favor of joinder because we wanted to
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`consolidate the arguments because they are complex.
` The other cases -- the primary prior art is Worn
`(phonetic), not Tosaki. They're presenting this to you as if
`this all relates to this preamble --
` JUDGE KAUFFMAN: But it's the same patent and the
`same claim.
` MR. HARRISON: It is the same patent and the same
`claim, Your Honor, but it --
` JUDGE WEATHERLY: And we certainly can't hold that
`the preamble is limiting in one case but not in the other.
` MR. HARRISON: This has nothing -- in our opinion,
`the preamble thing is a ruse. This isn't about the preamble.
`The reason they wanted to have the opportunity to talk
`about --
` JUDGE KAUFFMAN: There are arguments in the Patent
`Owner's response against the art based on the preamble being
`limiting. How can you tell me that it's not relevant when I
`have those arguments in front of me?
` MR. HARRISON: Sir, I'm not saying that it's not
`relevant. I'm saying it wasn't how this arose or why this
`arose.
` This arose because they were referencing in their
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`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
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`demonstrative exhibits the other case, and we objected to
`demonstrative exhibits because they were referencing the
`other case. They were doing that for the claim term,
`Inherently resilient and flexible. Not the preamble.
` And the purpose of that is because the Board made
`a judgment that was adverse to us on that claim limitation,
`Inherently resilient and flexible.
` And the Board did that, we think, primarily
`because the Worn prior art, unlike the Tosaki prior art --
`the Tosaki prior art expressly says, The elastic
`deformation -- if you push on both sides of the paddles at
`the same time -- the Tosaki prior art is strong with regard
`to inherently resilient and flexible. The Worn prior art,
`not so much.
` And so they want to bring in the decision on
`appeal -- or the decision on institution in that case to be
`able to say, Look at the Court's construction requiring flex
`and bend and how they rejected or did not --
` JUDGE PETRAVICK: Mr. Harrison?
` MR. HARRISON: Yes.
` JUDGE PETRAVICK: We've already denied the
`supplement -- the request for motion for supplemental
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`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
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`information, so that's not coming in. And they've already
`told us that that is not what they're interested in. The
`request for relief is -- in this case, is a motion for
`supplemental -- two pages of supplemental briefing limited to
`addressing the preamble issue.
` So -- the question is: Do you oppose that or not?
` MR. HARRISON: No. We don't oppose arguments
`about the preamble, because if you look at our briefing, we
`point out that --
` JUDGE PETRAVICK: So --
` MR. HARRISON: -- even if the claims are limited
`hand-held, the prior art --
` JUDGE PETRAVICK: So it seems like both sides
`agree to additional briefing on the issue of the -- whether
`the preamble was limiting or not.
` MR. HARRISON: Your Honor, we -- we don't think
`that's necessary, so we're opposing it because I don't think
`we -- our argument wasn't that the claims of the '525 Patent
`have a preamble that's not limiting. Our argument was even
`if the preamble is limiting and the claims are limited to
`hand-held --
` JUDGE PETRAVICK: I'm sorry. Could you just
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`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
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`clarify? Because you said the only issue we're asking right
`now is whether you oppose the additional briefing or not.
`Obviously, if we give additional briefing, you'll be given a
`chance to respond in that prior art. So, basically, just
`whether we're going to authorize the briefing.
` MR. HARRISON: It's extra work for us to respond
`to it. It's not that important to us. If it's very
`important to them, Patent Owner, I suppose we can go through
`the trouble of it, but this case really doesn't turn on
`whether the preamble is limiting.
` JUDGE PETRAVICK: So you are opposing?
` MR. HARRISON: We're opposing because it's
`unnecessary.
` JUDGE PETRAVICK: Okay.
` MR. HARRISON: If I thought they were going to be
`talking about other stuff that I was referring to before, I'd
`be opposing more vigorously, because I think in that case,
`they're really seeking for a portion of joinder that they
`opposed before.
` JUDGE PETRAVICK: Well, the request for relief was
`two pages based on the preamble.
` MR. HARRISON: Your Honor, we oppose that because
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`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
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`it's extra work, and it's not necessary for this case. But
`if they really wanted -- we'll do the extra -- we'll respond
`to their two pages of briefing.
` JUDGE KAUFFMAN: I think that's all we need to
`hear on this issue.
` JUDGE WEATHERLY: Thank you.
` JUDGE KAUFFMAN: I think we are not going to make
`a ruling at this time because the panel wants to discuss
`afterwards if there are any other briefings -- issues that we
`want additional briefing on. And so we will do one order
`afterwards that will decide whether or not and how much and
`on what issues.
` And I can tell you, as Judge Petravick was saying,
`that if we authorize briefing about issues A and B, that's
`all we're going to consider. If somebody submits issues C
`and D, we're not looking at that; right? It's limited to
`what we authorize.
` So back to our phone call. The second issue was
`slides, and I think I made a mistake on Friday and want to
`correct that.
` So Mr. Harrison said for Petitioner that Patent
`Owner's objections to Petitioner's demonstratives were only
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`IPR2016-00949 (Patent 9,089,770 B2)
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`based on the scope of the reply brief and whether or not it
`should have been in the petition, and objections are supposed
`to be based on whether or not something was previously in the
`record.
` And I -- having considered it and discussed it
`with the panel, I think you are correct. And so Patent
`Owner's objections to Petitioner's slides are overruled, and
`I don't think we need to hear anything else about that.
` We do need to talk about Petitioner's objections
`to Patent Owner's demonstratives. So I'm going now to Paper
`36, which is -- are those objections in the '948 case. And I
`am on page 2 of that exhibit.
` Yes, Mr. Samuel? Please come up.
` MR. SAMUEL: May I just comment on the Patent
`Owner's objections?
` JUDGE KAUFFMAN: Very briefly.
` MR. SAMUEL: Yes. Thank you, Your Honor.
` They are not late, because we've looked at --
` JUDGE KAUFFMAN: I didn't say that they were late.
`I said that a proper objection to another party's
`demonstratives would be that that information wasn't
`previously in the record. But saying that it's beyond the
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`scope of a reply is not a proper objection to a
`demonstrative. It has nothing to do with lateness.
` MR. SAMUEL: So how do we object to the fact that
`they are improper as new arguments that are to be considered?
` JUDGE KAUFFMAN: As I think I mentioned in the
`phone call, there are a couple ways that the Board has dealt
`with that.
` One way is people ask for a conference call, and
`then they authorize either a motion to strike or they
`authorize what I call a list motion, which is a list of those
`things you believe to be beyond the scope of a proper reply
`or should have been in the petition. And, typically, that's
`authorized that the other side will then have a chance to
`comment on that.
` There has not been a request for that --
` JUDGE PETRAVICK: Well --
` JUDGE KAUFFMAN: What I'm saying is the objections
`to the demonstratives are the wrong place for that objection.
` I'm sorry, Judge Petravick.
` JUDGE PETRAVICK: Mr. Samuel, I assume you are
`familiar with our rules.
` MR. SAMUEL: That's correct.
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`IPR2016-00949 (Patent 9,089,770 B2)
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` JUDGE PETRAVICK: So our Rule 42.20, says: A
`request for relief must be submitted in the form of a motion.
` Are you aware of that rule?
` MR. SAMUEL: Correct.
` JUDGE PETRAVICK: Our rule has also said before
`you file a motion that you must request authorization.
` Are you aware of that rule?
` MR. SAMUEL: Yes.
` JUDGE KAUFFMAN: Our rules also say: The motion
`must be filed timely, closely to the time that the item or
`occurrence that you want to file a motion about has occurred.
` Do you understand that rule?
` MR. SAMUEL: Yes.
` JUDGE PETRAVICK: So if you wanted to object to
`the reply brief for being outside the scope, why did you not,
`at that time, talk to us to file a motion to strike or
`expunge?
` MR. SAMUEL: Because we were unaware of such
`motions as being ones that entertain at that time of the
`filing, Your Honor. We've looked at some cases where the
`PTAB ruled on the issue of whether new evidence is included
`and whether it should be considered or not at the oral
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`IPR2016-00949 (Patent 9,089,770 B2)
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`hearing.
` JUDGE PETRAVICK: So you're probably looking at
`cases where we have new arguments that don't appear on the
`record, which is different than saying that an argument
`didn't appear in the reply brief.
` So my question is: Why are you trying to, through
`the -- through the objections to a demonstrative to ask for a
`motion to strike or expunge at this date and time?
` MR. SAMUEL: Respectfully, Your Honor, I refer the
`Board to Xilinx, Inc., versus Papst Licensing GmbH,
`IPR2016-00104, Paper 22, pages 21 and 22. And those
`objections were based on new arguments in the reply brief.
` And the Board specifically said because there are
`new arguments in the reply brief, they're not considered them
`for purposes of this oral hearing -- or this written
`decision.
` JUDGE PETRAVICK: And they made that in the
`demonstrative? In a motion and objections to demonstratives?
` MR. SAMUEL: There were no motions filed, no
`objections file. They were all raised at
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