Case: 19-1202 Document: 55 Page: 1 Filed: 09/24/2019
`
`2019-1202
`
`IN THE
`UNITED STATES COURT OF APPEALS FOR
`THE FEDERAL CIRCUIT
`POLARIS INNOVATIONS LIMITED,
`Appellant
`
`v.
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Appellee
`ANDREI IANCU, Director, U.S. Patent And Trademark Office,
`Intervenor
`APPEAL FROM THE UNITED STATES PATENT AND TRADEMARK
`OFFICE, PATENT TRIAL AND APPEAL BOARD NO. IPR2016-01622
`
`APPELLANT POLARIS INNOVATIONS LIMITED’S REPLY BRIEF
`Matthew D. Powers
`Kenneth Weatherwax
`Jennifer Robinson
`Nathan Nobu Lowenstein
`TENSEGRITY LAW GROUP, LLP
`LOWENSTEIN & WEATHERWAX LLP
`555 Twin Dolphin Drive, Suite 650
`1880 Century Park East, Suite 815
`Redwood Shores, CA 94065
`Los Angeles, California 90067
`Telephone: (650) 802-6000
`Telephone: (310) 307-4500
`Facsimile: (650) 802-6001
`Facsimile: (310) 307-4509
`Azra Hadzimehmedovic
`Aaron M. Nathan
`TENSEGRITY LAW GROUP, LLP
`8260 Greensboro Drive, Suite 260
`McLean, VA 22102
`Telephone: (703) 940-5032
`Facsimile: (650) 802-6001
`
`for
`Counsel
`Appellant
`Innovations Limited
`
`Polaris
`
`September 24, 2019
`
`Polaris Ex. 2023
`1 Kingston v. Polaris, IPR2016-01622, Page 1 of 41
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`

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`Case: 19-1202 Document: 55 Page: 2 Filed: 09/24/2019
`
`CERTIFICATE OF INTEREST
`
`
`Counsel for Appellant Polaris Innovations Limited (“Polaris”) in Appeal No. 2019-
`1202 certifies the following:
`
`1.
`
`
`The full name of every party or amicus represented by me is:
`
`Polaris Innovations Limited.
`
`
`The name of the real party in interest (if the party named in the caption
`2.
`is not the real party in interest) represented by me is:
`
`
`Quarterhill Inc.
`
`
`3. All parent corporations and any publicly held companies that own 10
`percent or more of the stock of the party or amicus curiae represented by me
`are:
`
`
`Wi-LAN Inc.
`
`
`The names of all law firms and the partners or associates that appeared
`4.
`for the party or amicus now represented by me in the trial court or agency or
`are expected to appear in this court (and who have not or will not enter an
`appearance in this case) are:
`
`Parham Hendifar, Lowenstein & Weatherwax LLP
`
`The title and number of any case known to counsel to be pending in this
`5.
`or any other court or agency that will directly affect or be directly affected by
`this court’s decision in the pending appeal are:
`
`Polaris Innovations Limited v. Kingston Technology Company, Inc., 8:16-cv-
`00300 (C.D. Cal).
`
`Dated: September 24, 2019
`
`
`
`
`
` /s/ Matthew D. Powers
`Matthew D. Powers
`
`
`
`
`
`
` i
`
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`

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`Case: 19-1202 Document: 55 Page: 3 Filed: 09/24/2019
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION ....................................................................................... 1
`THE BOARD VIOLATED POLARIS’S PROCEDURAL RIGHTS............ 2
`A.
`Decisions and Follow the Rules ......................................................... 2
`B.
`Afford Polaris Adequate Process After Claim 4 Was Instituted .......... 4
`C.
`Untimely Expansion of the Record ..................................................... 7
`D. Kingston’s Argument That the Board Did Not Err in Denying
`Broad Ocean Has No Basis ................................................................ 9
`Kingston Fails to Address Its Concessions Before the Board ........... 12
`E.
`F.
`“The Collateral Estoppel Context” Is Inapposite .............................. 12
`G. Kingston’s Argument That There Was No “Surprise” When the
`Board Found Claim 4 Unpatentable Is Meritless .............................. 14
`H.
`Cancel Claim 1 ................................................................................. 15
`I.
`Evidence and Arguments to Fill Gaps in Its Prima Facie Case ........ 17
`J.
`The Board’s Merits Rulings on Claims 4 and 9 Were Defective ....... 20
`III. APJS ARE UNCONSTITUTIONALLY APPOINTED PRINCIPAL
`OFFICERS ................................................................................................. 22
`A. APJs Are Principal Officers Because No Executive Principal
`Officer Directs Their Work .............................................................. 22
`B.
`APJs Are Not At-Will Employees .................................................... 25
`C.
`Performance Is Irrelevant ................................................................. 26
`
`Kingston Was Not Entitled to Submit in Its MTA Opposition New
`
`Polaris’s “Strategy” Was to Rely Properly on the Board’s
`
`The Right to Respond Before Claim 4 Was Instituted Did Not
`
`The IPR Estoppel Rules Do Not Support Kingston’s Improper and
`
`Polaris the Same Due Process Given in AC Technologies and
`
`The Board Erred in Refusing Polaris’s Noncontingent Request to
`
`The Director’s Authority Over Other Aspects of APJs’
`
` ii
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`

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`Case: 19-1202 Document: 55 Page: 4 Filed: 09/24/2019
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`The Court Should Hear Polaris’s Appointments Clause Challenge ... 27
`D.
`This Court Should Dismiss ............................................................... 29
`E.
`IV. CONCLUSION .......................................................................................... 29
`
`
`
` iii
`
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`

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`Case: 19-1202 Document: 55 Page: 5 Filed: 09/24/2019
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Abbott Labs. v. Andrx Pharms., Inc.,
`473 F.3d 1196 (Fed. Cir. 2007) ........................................................................ 13
`
`Abrams v. SSA,
`703 F.3d 538 (Fed. Cir. 2012) .......................................................................... 26
`
`AC Techs., S.A. v. Amazon.com, Inc.,
`912 F.3d 1358 (Fed. Cir. 2019) .......................................................................... 9
`
`Aptheker v. Sec’y of State,
`378 U.S. 500 (1964) ......................................................................................... 25
`
`Aqua Prods. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ........................................................................ 19
`
`Ass’n of Am. R.R. v. United States DOT,
`821 F.3d 19 (D.C. Cir. 2016) ........................................................................... 23
`
`Automated Merch. Sys., Inc. v. Lee,
`782 F.3d 1376 (Fed. Cir. 2015) ........................................................................ 29
`
`Beard v. Gen. Servs. Admin.,
`801 F.2d 1318 (Fed. Cir. 1986) ........................................................................ 28
`
`Bourns, Inc. v. United States,
`537 F.2d 486 (Ct. Cl. 1976) ............................................................................. 13
`
`Brennan v. HHS,
`787 F.2d 1559 (Fed. Cir. 1986) ........................................................................ 26
`
`Broad Ocean Techs., LLC v. NIDEC Motor Corp.,
`IPR2015-01617, Paper 44 (P.T.A.B. Aug. 10, 2018) ................................. 10, 11
`
`DOT v. Ass’n of Am. R.R.,
`135 S. Ct. 1225 (2015) ............................................................................... 22, 26
`
`Edmond v. United States,
`520 U.S. 651 (1997) .............................................................................. 23, 25, 26
`
` iv
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`

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`
`EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc.,
`859 F.3d 1341 (Fed. Cir. 2017) ........................................................................ 15
`
`Free Enterprise Fund v. PCOAB,
`561 U.S. 477 (2010) .............................................................................. 23, 25, 26
`
`Freytag v. Commissioner,
`501 U.S. 868 (1991) ................................................................................... 23, 28
`
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-00366, Paper 11 (P.T.A.B. July 6, 2018) .......................................... 28
`
`In re DBC,
`545 F.3d 1373 (Fed. Cir. 2008) ........................................................................ 28
`
`Intercollegiate Broad. Sys. v. Copyright Royalty Bd.,
`684 F.3d 1332 (D.C. Cir. 2012) ............................................................ 23, 26, 27
`
`Johnson v. Robison,
`415 U.S. 361 (1974) ......................................................................................... 28
`
`Kingston Tech. Co., Inc. v. Polaris Innovations Ltd.,
`IPR2017-00116, Paper 17 (P.T.A.B. July 10, 2017) ......................................... 28
`
`Kingston Tech. Co., Inc. v. Polaris Innovations Ltd.,
`IPR2017-00116, Paper 31 (P.T.A.B. Feb. 13, 2018) ........................................ 28
`
`Kingston Tech. Co., Inc. v. Polaris Innovations Ltd.,
`IPR2017-00974, Paper 8 (P.T.A.B. Aug. 14, 2017) ........................................... 4
`
`Lucia v. SEC,
`138 S. Ct. 2044 (2018) ..................................................................................... 29
`
`Malloy v. USPS,
`578 F.3d 1351 (Fed. Cir. 2009) ........................................................................ 26
`
`Masias v. Sec’y of HHS,
`634 F.3d 1283 (Fed. Cir. 2011) ........................................................................ 23
`
`Merck & Co. v. Kessler,
`80 F.3d 1543 (Fed. Cir. 1996) .......................................................................... 27
`
` v
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`Case: 19-1202 Document: 55 Page: 7 Filed: 09/24/2019
`
`Nat’l Fed’n of Indep. Bus. v. Sebelius,
`567 U.S. 519 (2012) ......................................................................................... 29
`
`Shaw Industrial Grp. v. Automated Creel Sys.,
`817 F.3d 1293 (Fed. Cir. 2016) .......................................................................... 7
`
`SKF USA, Inc. v. United States,
`254 F.3d 1022 (Fed. Cir. 2001) ........................................................................ 22
`
`St. Jude Medical, LLC v. Synders Heart Valve LLC,
`IPR2018-00107, 2018 WL 2086454 (P.T.A.B. May 3, 2018) .......................... 28
`
`The Scotts Co. LLC v. Encap, LLC,
`IPR2013-00110, Paper 79 (P.T.A.B. June 24, 2014) .......................................... 4
`
`Statutes
`
`15 U.S.C. § 7217 ................................................................................................. 23
`
`19 U.S.C. § 1337 ................................................................................................. 24
`
`26 U.S.C. § 7443A .............................................................................................. 23
`
`35 U.S.C. § 141 ................................................................................................... 22
`
`35 U.S.C. § 143 ................................................................................................... 22
`
`35 U.S.C. § 2 ....................................................................................................... 27
`
`35 U.S.C. § 3 ....................................................................................................... 26
`
`35 U.S.C. § 315 ..................................................................................................... 7
`
`35 U.S.C. § 316 ........................................................................................ 16, 25, 27
`
`35 U.S.C. § 318 ................................................................................................... 25
`
`35 U.S.C. § 6 ............................................................................................ 22, 25, 28
`
`5 U.S.C. § 7511 ................................................................................................... 26
`
`5 U.S.C. § 7512 ................................................................................................... 26
`
`5 U.S.C. § 7513 ................................................................................................... 25
`
` vi
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`

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`Case: 19-1202 Document: 55 Page: 8 Filed: 09/24/2019
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`5 U.S.C. § 7521 ................................................................................................... 25
`
`5 U.S.C. § 7703 ................................................................................................... 26
`
`Other Authorities
`
`Gary Lawson, Appointments and Illegal Adjudication: The AIA Through a
`Constitutional Lens,
`41 Geo. Mason U. L. Rev. (forthcoming), available at
`https://ssrn.com/abstract=3105511 ................................................................... 24
`
`Oral Argument at 47:19-47:48:25, Yissum Research Dev. Co. v. Sony Corp., 2015-
`1342 (Dec. 7, 2015),
`available at http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2015-
`1342.mp3 ......................................................................................................... 25
`
`PTAB Standard Operating Procedures 1 (Revision 15),
`available at
`https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20FIN
`AL.pdf ............................................................................................................. 27
`
`PTAB Trial Practice Guide August 2018 Update
`(available at
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practic
`e_Guide.pdf) (last visited May 24, 2019) ......................................................... 18
`
`USITC Commissioners,
`available at https://www.usitc.gov/commissioner_bios ................................... 24
`
`Regulations
`
`19 C.F.R. § 210.42 .............................................................................................. 24
`
`2012 Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012) ................................................... 4, 6, 18, 19
`
`37 C.F.R. § 42.108 .............................................................................................. 26
`
`37 C.F.R. § 42.120 ............................................................................................ 5, 6
`
`37 C.F.R. § 42.121 ................................................................................................ 8
`
`37 C.F.R. § 42.24 .................................................................................................. 5
`
` vii
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`37 C.F.R. § 42.4 .................................................................................................. 26
`
`The Appointment of the Commission’s Administrative Law Judges for Section 337
`Investigations,
`83 Fed. Reg. 45678 (Sept. 10, 2018) ................................................................ 24
`
`
`
` viii
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`

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`Case: 19-1202 Document: 55 Page: 10 Filed: 09/24/2019
`
`
`I.
`
`INTRODUCTION
`
`This appeal involves an extreme deprivation of due process by the Board
`
`that cannot be justified. The Board denied institution on Claim 4 before SAS was
`
`decided. Polaris relied on that decision, submitting an amended claim, Claim 9,
`
`that is undisputedly narrower than Claim 4. Rather than approve Claim 9, as
`
`would have been proper under the Board’s rules in light of its denial of institution
`
`on Claim 4, the Board instead rejected that narrower claim after allowing Kingston
`
`to substantially and improperly supplement its grounds of alleged obviousness with
`
`new evidence, beyond the scope of its petition, addressing the specific subject
`
`matter where the Board had already denied institution, and forcing Polaris to rebut
`
`that evidence only in its reply in support of its motion to amend.
`
`Worsening matters, after
`
`its SAS error was
`
`identified,
`
`the Board
`
`simultaneously instituted review on Claim 4 and invalidated that claim all in a
`
`single order, without ever allowing Polaris to file a Patent Owner Response
`
`(“POR”) on that claim. The Board based its decision to institute and invalidate
`
`Claim 4 on its improper decision on proposed Claim 9, which had been based on
`
`Kingston’s untimely evidence that could have been submitted with its petition.
`
`Thus, the Board went from denying institution on Claim 4, to instituting on and
`
`invalidating Claim 4, in a single stroke. No possible conception of due process
`
`allows that decision to stand.
`
` 1
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`Case: 19-1202 Document: 55 Page: 11 Filed: 09/24/2019
`
`Kingston’s meritless arguments essentially boil down
`
`to
`
`the false
`
`propositions that: (a) it was Polaris’s fault that Kingston was allowed to
`
`supplement the record improperly; (b) the minimal process Polaris received was
`
`sufficient; and (c) the Board’s erroneous process was somehow necessary to
`
`prevent Kingston from being subject to an unfair estoppel back in district court.
`
`Kingston’s arguments misapprehend the nature of due process and how its
`
`deprivation marked these proceedings. A Motion to Amend (“MTA”) reply on an
`
`improperly supplemented record on a claim that was not subject to review, against
`
`the backdrop of an erroneous partial-institution decision, is not due process.
`
`Moreover, this Court can and should dispose of this case by simply deciding
`
`that Kingston and the Intervenor failed to rebut the unconstitutional authority of
`
`the APJs.
`
`This Court should vacate and dismiss. If the Court nevertheless decides to
`
`remand, which Polaris strongly urges it not to do, it should limit Kingston to the
`
`theories and evidence it timely presented in its petition, and Polaris should be
`
`given a full opportunity to respond.
`
`II. THE BOARD VIOLATED POLARIS’S PROCEDURAL RIGHTS
`A.
`Polaris’s “Strategy” Was to Rely Properly on the Board’s
`Decisions and Follow the Rules
`
`Kingston’s argument (at 22) that Polaris cannot complain about the lack of
`
`due process because it “chose” the wrong “strategy” in relying on the Board’s non-
`
` 2
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`

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`Case: 19-1202 Document: 55 Page: 12 Filed: 09/24/2019
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`institution decision for the MTA for Claim 9 is unfounded. First, Polaris had no
`
`choice but to not respond to the non-instituted grounds, and rightly relied on that
`
`non-institution decision in its MTA briefing for Claim 9. Second, even if the
`
`Board’s erroneous decision on the subject matter of Claim 4 in the context of the
`
`MTA on Claim 9 were somehow proper, that does not imply that Polaris somehow
`
`should be deprived of any opportunity to submit a POR on Claim 4 once the Board
`
`changed its institution decision to try to comply with SAS. Polaris’s due process,
`
`statutory, and APA rights were violated because it was denied any response at all
`
`“after” review was instituted on Claim 4.
`
`Contrary to Kingston’s argument, Polaris’s reliance on the Board’s non-
`
`institution decision regarding Claim 4 in its MTA for Claim 9 was entirely proper
`
`and supported by the Board’s past decisions. Br. at 43–44. In its institution
`
`decision, the Board concluded Kingston “ha[d] not explained sufficiently how or
`
`why a person of ordinary skill in the art would have modified Simpson to achieve”
`
`the height limitation of Claim 4, Appx167, and rejected Kingston’s argument that
`
`the “limitations would have been an ‘obvious design choice’” because Kingston
`
`had not “explain[ed] persuasively how and/or why a person of ordinary skill in the
`
`art would have made the proposed modifications to Simpson in view of the
`
`teachings of the Intel Specification,” Appx168. In its denial of Kingston’s request
`
`for rehearing on non-institution of Claim 4, the Board affirmed that conclusion a
`
` 3
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`Case: 19-1202 Document: 55 Page: 13 Filed: 09/24/2019
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`second time. Appx212-214. In its denial to institute Kingston’s serial petition, the
`
`Board for the third time found that Kingston had not shown the prior art disclosed
`
`memory chips that would fit on a printed circuit board with Claim 4’s limitations.
`
`Kingston Tech. Co., Inc. v. Polaris Innovations Ltd., IPR2017-00974, Paper 8 at
`
`13-14 (P.T.A.B. Aug. 14, 2017). When Kingston improperly introduced new
`
`evidence and arguments in support of its prima facie case, Polaris was constrained
`
`by the rules limiting briefing and evidence in its MTA reply, which, as explained
`
`below, procedurally and substantively were not comparable to a POR. This was not
`
`strategy but simply following the rules. Only in a POR, which the Board denied
`
`Polaris for Claim 4, could Polaris have submitted evidence for the patentability of
`
`Claim 4, such as indicia of non-obviousness or expert testimony responsive to
`
`Kingston’s non-instituted attacks. See 2012 Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48756, 48767 (Aug. 14, 2012); e.g., The Scotts Co. LLC v. Encap, LLC,
`
`IPR2013-00110, Paper 79 at 7-8 (P.T.A.B. June 24, 2014). Kingston’s argument
`
`would punish Polaris for relying on the Board’s decision and following the rules.
`
`This does not justify a deprivation of due process rights.
`
`B.
`
`The Right to Respond Before Claim 4 Was Instituted Did Not
`Afford Polaris Adequate Process After Claim 4 Was Instituted
`
`Kingston’s argument that because Claim 9 is narrower than Claim 4, the
`
`Board’s incorrect decision on Claim 9’s patentability dissolved Polaris’s due
`
`process rights for Claim 4, is contradicted by the law and IPR regulations.
`
` 4
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`Kingston argues that the MTA briefing on Claim 9 fairly substituted for Polaris’s
`
`right to respond for Claim 4. But at the time of that briefing review had been
`
`denied on Claim 4. The MTA briefing for Claim 9 when Claim 4 had been denied
`
`institutiton could not stand in for a POR for Claim 4 to which Polaris was entitled
`
`only after Claim 4 was instituted. Kingston fails to address that before institution,
`
`Polaris was not permitted to respond as to Claim 4. Appx5. Under 37 CFR
`
`§ 42.120 Polaris was only permitted to “file a response to the petition addressing
`
`any ground for unpatentability not already denied.” Polaris’s opportunity to
`
`provide argument and evidence in MTA briefing for Claim 9 cannot substitute for
`
`a POR on Claim 4 because Claim 4 was not instituted until long after that briefing
`
`was complete.
`
`Kingston cannot and does not dispute that a POR and an MTA reply have
`
`vastly different length and content restrictions. The POR may be up to 14,000
`
`words, roughly 56 double-spaced pages. 37 C.F.R. §§ 42.24(a)(1)(i)&(b)(2). By
`
`contrast, an MTA Reply is limited to 12 pages. 37 C.F.R. § 42.24(c)(3). Also, the
`
`rules’ constraints on the MTA reply prevented Polaris from submitting any
`
`evidence that would “make out a prima facie case for the patentability … of an
`
`original or proposed substitute claim,” such as objective indicia of non-
`
`obviousness, or a full defense of patentability with expert testimony unless that
`
`testimony was directly responsive to Kingston’s MTA Opposition. See 77 Fed.
`
` 5
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`Case: 19-1202 Document: 55 Page: 15 Filed: 09/24/2019
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`Reg. at 48767. And still further, at the time of the MTA briefing, Claim 4 had not
`
`yet been instituted, so Polaris could not address Claim 4 in its briefing. 37 C.F.R.
`
`§ 42.120(a).
`
`There can be no illusion that the MTA briefing was substantively identical to
`
`what could have been in a POR had Claim 4 been within the scope of the review.
`
`Polaris briefed the MTA expressly in reliance on the decisions denying review on
`
`Claim 4. As Polaris stated in its MTA: “The proposed amendment responds to the
`
`grounds for unpatentability involved in this review, as it would cancel all instituted
`
`claims and substitute for one of them a claim that merely adds the limitations
`
`recited in a challenged claim for which institution has already been denied and
`
`rehearing on that decision has also been denied.” Appx231.
`
`Kingston’s brief admits (at 26-27) that the differences in briefing and
`
`evidence that the Board may consider are “significant” when contrasting the
`
`Board’s institution decision with its consideration of an MTA. Kingston cannot
`
`credibly assert that the differences in briefing and evidence for a POR and an MTA
`
`reply are not also “significant.”
`
`Kingston’s attempt to justify the MTA reply as providing all the process
`
`Polaris was due is baseless. Under the Constitution, APA, AIA, and IPR
`
`regulations, Polaris had the right to respond to the petition on Claim 4 after it was
`
`instituted. The Board denied Polaris the opportunity to do so. Instead it decided, in
`
` 6
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`Case: 19-1202 Document: 55 Page: 16 Filed: 09/24/2019
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`one fell swoop, both to institute on Claim 4 and to find Claim 4 unpatentable.
`
`Appx5. Polaris was entitled to a POR on each instituted claim. The Board denied
`
`one on Claim 4. The Board decision therefore must be vacated.
`
`C. The IPR Estoppel Rules Do Not Support Kingston’s Improper
`and Untimely Expansion of the Record
`
`Kingston asserts (at 3) that through its motion to amend somehow “Polaris,
`
`in effect, attempted to transform the Board’s non-institution decision on Claim 4
`
`(which carried no estoppel effect) into a final written decision on a substitute claim
`
`that would carry an estoppel” under 35 U.S.C. § 315(e). This is false.
`
`When Polaris filed its MTA, pre-SAS, this Court’s interpretation of § 315(e)
`
`in Shaw Industrial Group v. Automated Creel Systems, 817 F.3d 1293 (Fed. Cir.
`
`2016) controlled. In Shaw, this Court explained that if a ground was denied in an
`
`IPR petition it was not subject to estoppel because the petitioner could not have
`
`raised that ground “during” the IPR: “The plain language of the statute prohibits
`
`the application of estoppel under these circumstances.” Id. at 1300. That dovetails
`
`perfectly with the way the Board had held, pre-SAS, that MTAs like Polaris’s
`
`should be addressed: Because every “ground for unpatentability” against Claim 4
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`had been “already denied” based on the inadequacy of the petition, the Board
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`should have found Claim 9 patentable based on the Board’s non-institution of
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` 7
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`Polaris Ex. 2023
`1 Kingston v. Polaris, IPR2016-01622, Page 16 of 41
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`Case: 19-1202 Document: 55 Page: 17 Filed: 09/24/2019
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`Claim 4.1 Br. at 43-44. Kingston could not raise the same ground for Claim 9 that
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`was not instituted for Claim 4, because that ground already had been denied.
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`Not only does nothing in the record support Kingston’s unlikely accusation
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`that Polaris was somehow “attempt[ing] to convert a non-institution decision into a
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`final written decision with estoppel effects against Kingston in a co-pending
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`litigation” (Resp. at 36), under the law at the time that would not have been the
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`result. Applying the principles and reasoning of Shaw, if the Board had allowed
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`Claim 9 based solely on the non-institution of Claim 4, that would not have raised
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`an estoppel—because, just like the denied grounds in Shaw, Kingston could not
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`have raised any grounds against non-instituted subject matter “during” the IPR.
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`Kingston cites no authority supporting the proposition that an estoppel
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`would have applied to Claim 9 had it been allowed pre-SAS. And any alleged,
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`theoretical, mistaken fear that estoppel might arise cannot justify denying Polaris
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`due process. Even if estoppel were possible, the correct approach for the Board to
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`have taken would not have been to invalidate the claim based on improper
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`
`1 Granting the MTA based on the partial denial of institution was also the proper
`course of action under the IPR rules promulgated under 35 U.S.C. § 316(a)(9): “A
`motion to amend may be denied where: (i) The amendment does not respond to a
`ground of unpatentability involved in the trial; or (ii) The amendment seeks to
`enlarge the scope of the claims of the patent or introduce new subject matter.” 37
`C.F.R. § 42.121(a)(2). The rule specifies no other possible bases for denying a
`motion to amend. Neither “(i)” nor “(ii)” was found to be true for proposed
`Claim 9.
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` 8
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`Polaris Ex. 2023
`1 Kingston v. Polaris, IPR2016-01622, Page 17 of 41
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`Case: 19-1202 Document: 55 Page: 18 Filed: 09/24/2019
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`determinations about non-instituted grounds, but to have ensured that any estoppel
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`arose only from a proper institution decision followed by full and proper briefing
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`by the parties, if the decision to institute was reached.
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`D. Kingston’s Argument That the Board Did Not Err in Denying
`Polaris the Same Due Process Given in AC Technologies and
`Broad Ocean Has No Basis
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`This Court’s precedent, which Kingston cannot avoid, further confirms that
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`Polaris was denied due process.
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`Kingston does not dispute that: “SAS did not displace the Board’s
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`responsibility to comply with due process[, which] dictates that parties before the
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`Board must receive adequate notice of the issues the Board will decide as well as
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`an opportunity to be heard on those issues.” AC Techs., S.A. v. Amazon.com, Inc.,
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`912 F.3d 1358, 1365 (Fed. Cir. 2019). This Court found no due process violation
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`where “after the Board decided to accept [petitioner’s] rehearing request and
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`consider [the non-instituted ground], it permitted [the Patent Owner] to take
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`discovery and submit additional briefing and evidence on that ground.”2 During a
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`conference call to discuss how to handle SAS, Polaris repeatedly argued that it
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`needed an opportunity to present evidence and arguments about Claim 4, but the
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`Board refused to give Polaris the process it permitted in AC Technologies.
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`2 Patent Owner was entitled to a hearing before the Board on the non-instituted
`ground if Patent Owner requested it, which it did. See AC Techs., 912 F.3d at 1365.
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` 9
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`Polaris Ex. 2023
`1 Kingston v. Polaris, IPR2016-01622, Page 18 of 41
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`Case: 19-1202 Document: 55 Page: 19 Filed: 09/24/2019
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`Appx2348. Kingston does not attempt to distinguish AC Technologies. Indeed,
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`Kingston quotes (at 42) this Court’s holding in AC Technologies requiring that
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`“parties before the Board must receive adequate notice of the issues the Board
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`will decide as well as an opportunity to be heard on those issues.” But Kingston
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`fails to acknowledge here that, dispositively, the Board denied Polaris precisely the
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`adequate notice and precisely the opportunity to be heard that was afforded in that
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`case.
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`This error is then only compounded here by the fact that Claim 9 was briefed
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`against the backdrop of non-institution on Claim 4 but decided based on the subject
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`matter of Claim 4. Simply put, due process requires there be an opportunity to be
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`heard between the Board’s notice of the issue it will decide and the Board’s
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`decision on that issue.
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`Kingston similarly does not dispute that the Board here failed to follow the
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`proper procedure described in Broad Ocean Technologies, LLC v. NIDEC Motor
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`Corporation, IPR2015-01617, Paper 44 (P.T.A.B. Aug. 10, 2018), as Polaris
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`already explained (Br. at 23). In Broad Ocean, following post-SAS remand of non-
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`instituted claims 1-6 and non-instituted grounds against claims 7-13, the Board
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`instituted inter partes review and allowed the parties, as to those claims and
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`grounds, to “follow[] the Board’s usual trial procedure…. [allowing] full briefing,
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`discovery, and oral hearing on the remand grounds as they would have had if those
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` 10
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`Polaris Ex. 2023
`1 Kingston v. Polaris, IPR2016-01622, Page 19 of 41
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`Case: 19-1202 Document: 55 Page: 20 Filed: 09/24/2019
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`grounds had been instituted in the first instance.” Id. at 7. Exactly what didn’t
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`happen here.
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`Kingston argues (at 46) that “‘the importance of additional briefing’
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`appl[ies] only in situations where the Board had not already considered the merits
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`on non-instituted claims” and that the reason why “further briefing was allowed” in
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`Broad Ocean was that “the claims initially denied institution for trial (claims 1-6 in
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`patent 7,990,092) were facially different than the claims instituted pre-SAS (claims
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`7-13).” But the Board’s decision in Broad Ocean mentions nothing of the kind.
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`Indeed, its institution decision on