Paper No. 39
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`Trials@uspto.gov
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`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`CUSTOMPLAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01496 (Patent 8,494,346 B2)
`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)¹
`____________
`
`Record of Oral Hearing
`Held: December 18, 2019
`___________
`
`Before J. JOHN LEE, JESSICA C. KAISER, and
`JOHN R. KENNY, Administrative Patent Judges.
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`Trials@uspto.gov
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`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`CUSTOMPLAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01496 (Patent 8,494,346 B2)
`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)¹
`____________
`
`Record of Oral Hearing
`Held: December 18, 2019
`___________
`
`Before J. JOHN LEE, JESSICA C. KAISER, and
`JOHN R. KENNY, Administrative Patent Judges.
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`Case IPR2018-01496 (Patent 8,494,346 B2)
`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)¹
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`APPEARANCES:
`
`
`ON BEHALF OF THE PETITIONER:
`
`
`COLIN HEIDEMAN, ESQUIRE
`CHRISTIE R.W. MATTHAEI, ESQUIRE
`NATHAN REEVES, ESQUIRE
`SUYOUNG JANG, ESQUIRE
`ELIZABETH WEISKOPF, ESQUIRE
`KNOBBE MARTENS
`925 Fourth Avenue, Suite 2500
`Seattle, Washington 98104
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`BRYAN E. WILSON, ESQUIRE
`JOHN C. CAREY, ESQUIRE
`KYLE CEUNINCK, ESQUIRE
`CAREY RODRIGUEZ MILIAN GONYA, LLP
`1395 Brickell Avenue, Suite 700
`Miami, Florida 33131
`
`
`
`
`The above-entitled matter came on for hearing on December 18,
`2019, commencing at 12:59 p.m., at the U.S. Patent and Trademark
`Office, Madison Building, 600 Dulany Street, Alexandria, Virginia,
`22314.
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`Case IPR2018-01498 (Patent 9,380,282 B2)¹
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`
` (Proceedings begin at 12:59 p.m.)
` JUDGE LEE: We're here for the combined oral
`hearing for Case Numbers IPR2018-1496, 1497, and 1498.
` Are counsel for petitioner and patent owner
`prepared to go forward? And if you are, please make
`your appearances, starting with petitioner.
` MR. HEIDEMAN: Thank you, Your Honor.
` Colin Heideman from Knobbe Martens on behalf
`of petitioner, Amazon.com.
` With me is Christie Matthaei, also from Knobbe
`Martens.
` Also with us is Nathan Reeves from our firm,
`and two associates who are observing today, Suyoung
`Jang and Beth Weiskopf.
` JUDGE LEE: Thank you, Mr. Heideman.
` JUDGE KAISER: Counsel, I apologize. We
`can't -- the remote judges cannot hear you unless you
`go up to the podium and speak at the microphone, so I'd
`ask for both counsel to do that, please.
` JUDGE LEE: Okay. If you wouldn't mind just
`going to the podium.
` MR. HEIDEMAN: Sure. Thank you, Your Honor.
` My name is Colin Heideman. I'm here on behalf
`of Amazon from Knobbe Martens.
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` With me is Christie Matthaei, Nathan Reeves,
`Suyoung Jang, and Beth Weiskopf.
` JUDGE LEE: Thank you, Mr. Heideman.
` Who will be making the presentation today?
`Will it be you?
` MR. HEIDEMAN: I'll be addressing the '346 and
`'282 patents, and Ms. Matthaei will be addressing the
`'950 patent.
` JUDGE LEE: Okay. Thank you.
` Patent owner?
` MR. WILSON: Hi. Good afternoon.
` I'm Bryan Wilson for CustomPlay. I'm with
`Carey Rodriguez Milian Gonya of Miami, Florida.
` With me is John Carey of Carey Rodriguez, and
`also Kyle Ceuninck of our firm, as well.
` John will be helping me with a few documents
`and some logistics.
` JUDGE LEE: Okay. Thank you, Mr. Wilson.
` But you'll be doing the presentation?
` MR. WILSON: I'll be doing the -- yes. That's
`right.
` JUDGE LEE: Okay, great. Thank you.
` All right. As -- as discussed before the
` hearing with both parties, each side will be receiving
` two hours of argument time in total for all three
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` cases.
` Both sides have the option of reserving time
` for a rebuttal for petitioner and a surrebuttal for
` patent owner.
` Petitioner, how much time would you look to
` reserve, if any, for a rebuttal?
` MR. HEIDEMAN: 30 minutes, please.
` JUDGE LEE: All right. Let me just set the
`clock, and then you can proceed.
` JUDGE KAISER: Counsel, maybe just as a
`housekeeping matter -- this is Judge Kaiser. I would
`note that Judge Kenny and I cannot see the screen in
`the room. So if you could clearly identify which case
`number you are talking about during your presentation,
`and if you're referring to an exhibit, a paper or
`demonstrative, please clearly refer to which document.
` We have everything electronically so we can
`follow along, we just can't see the screen in the room.
` MR. HEIDEMAN: Understood. Will do.
` Bear with me one moment. I'm having some
` technical issues myself.
` JUDGE LEE: Okay.
` (Pause in the proceedings)
` JUDGE LEE: All right. Whenever you're ready,
`Mr. Heideman.
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` MR. HEIDEMAN: Thank you, Your Honor.
` The first case that we'll be addressing today
` deals with the '346 patent, that is the 1496 IPR.
` We're going to start with this one because
` it's the most basic of the three. The '282 patent and
` the '950 patent kind of build on the ideas that are
` reflected in the '346 patent.
` So I'm going to start with the demonstratives
` for the '346 patent.
` This claim -- or this patent is directed to a
` basic system of providing users or viewers of a video
` with supplemental content while they're watching the
` video.
` If we go to Slide 2, you can see
` Representative Claim 10 resides five steps; receiving
` a request for information from the user -- which is
` just the user, for example, pressing a button on a
` remote control -- the system identifies the current
` location in the video, and then identifies the name of
` a performer associated with that location in the
` video, retrieves a visual depiction of the performer,
` and that visual depiction can just be an image or a
` video, and then provides that information to the
` viewer.
` So it's a very basic system. This was widely
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` known in the prior art. Both experts agree that all
` of these steps were known in the prior art, and it's
` just kind of the simplest form of this system that you
` can use.
` On Slide 3, we have an overview of the grounds
` presented in this IPR. They are based on four primary
` references; Thomas, McIntre, Reimer and Clarke.
` And I'm going to begin with the fourth ground,
` which is Clarke and Reimer, because it's the simplest
` of the four. It has the fewest number of disputed
` issues remaining.
` The real only substantive issue with respect
` to Clarke's disclosure -- and I'm on Slide 5 -- is
` whether Clarke discloses a visual depiction of a
` performer.
` There is no dispute that Clarke discloses
` every other limitation in all of challenged claims.
` There's also no dispute that Clarke discloses
` providing to the viewer a visual depiction. The only
` issue is whether it's a visual depiction of the
` performer.
` On Slide 7, Clarke talks about providing
` supplemental content while the viewer is watching a
` movie. And so on Slide 7, we have an excerpt -- an
` excerpt on the left-hand side of the '346 patent which
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` makes clear that the term "performer" is referring to
` an actor or actress when you're talking about movies.
` And on the right-hand side, we have
` Dr. Reader's testimony -- and that's patent owner's
` expert, Dr. Reader -- who agreed that a photo of an
` actress is a visual depiction of a performer.
` So the only issue in this ground is whether
` Clarke, the prior art reference, discloses providing a
` visual depiction of a performer, which is a photo of
` an actress.
` On Slide 8, we have part of Clarke's
` disclosure. Two of his figures, Figure 6C and
` Figure 7D from Clarke.
` And on the left-hand side you can see the
` system has provided supplemental content in response
` to a user request, and that supplemental content
` includes the actor's name, Mark Wahlberg -- this is
` from the movie Max Payne, so it has the character name
` beneath that -- it has some biographical information
` about Mr. Wahlberg, including where he was born and
` the birth date, provides his filmography, and in the
` bottom left-hand corner you can see it clearly
` provides an image of the actor, Mark Wahlberg.
` In Figure 7D of Clarke, on the right-hand
` side, you can see another example of providing
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` supplemental content while watching a movie. In this
` case, it's Hawaii 5O, and again, the actor information
` that's being provided includes an image of the actor.
` The only dispute here, patent owner's only
` argument, is that Clarke discloses providing a visual
` depiction of a character instead of a visual depiction
` of a performer. That's the only dispute, and that's
` their only argument on Clarke with respect to what it
` discloses. But that argument is contradicted by and
` foreclosed by the '346 patent itself.
` On Slide 9, on the left-hand side, we have an
` excerpt from the '346 patent which states that, "In a
` preferred embodiment, the reference to a visual
` depiction of a performer comprises a time code to a
` location within the video from which a depiction of
` the performer may be extracted."
` So the '346 patent makes clear that a visual
` depiction of a performer can simply be an image of
` that performer extracted from the video that's being
` watched. In the non-highlighted portion it provides
` another example, and it says that, "The reference to
` the visual depiction could be a link to a publicity
` headshot available at a website." So there's more
` than one way to get an image of a performer.
` But their argument is that Clarke doesn't
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` disclose an image of a performer because the image was
` taken from the underlying video, and the '346 patent
` clearly tells us that that's wrong. An image that's
` extracted from the video is an image of the performer
` as claimed.
` And if that first instance wasn't enough, the
` highlighting at the bottom of that portion of the '346
` patent makes it abundantly clear. It says, "It should
` be appreciated that a visual depiction of a performer
` need not be more than an image of the performer
` performing the character which may be extracted from
` within the video, as in the case of a visual depiction
` of the character."
` The '346 patent is clear that an image of the
` character extracted from the video is a visual
` depiction of the performer. A visual depiction of a
` performer doesn't need to be anything more than that.
` And their argument -- which I think is wrong,
` and we'll get to that -- is that the image in
` Figure 6C of Clarke is extracted from the underlying
` video.
` Even if that were true -- and it's not -- but
` even if that were true, the claims would still be
` invalid and unpatentable in view of Clarke.
` There's one other cite in the '346 patent that
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` makes this clear. It's in the '346 patent, Column 10,
` line 49 to 50, which says, "The performer image may be
` extracted from within the video."
` So even if you accept patent owner's
` contention that the image in Figure 6C was extracted
` from the movie, the claims are still unpatentable.
` And there's no dispute here, in addition to
` the '346 patent, both experts agree that an image of
` an actor extracted from the video qualifies as a
` visual depiction of a performer.
` On the right-hand side of Slide 10 we have
` patent owner's expert, Dr. Reader, who agreed that,
` "Sometimes a visual depiction of a character can be a
` visual depiction of a performer."
` And he tried to distinguish the "sometimes" by
` saying, "If they were in a costume or they had so much
` makeup you couldn't tell who they were that it
` wouldn't qualify as a visual depiction of the
` performer," which isn't really consistent with the
` '346 patent, but that argument doesn't really matter
` because Clarke doesn't disclose that. Those actors
` are not in costumes, and they're not made up.
` And he confirmed it again, their expert did,
` when we showed him an image of Arnold Schwarzenegger
` as shown on Slide 11. We asked him about this in his
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` deposition. That's an Arnold -- it's an image of
` Arnold Schwarzenegger extracted from Terminator. And
` their expert agreed that that extracted image would be
` a visual depiction of a performer.
` And there's no difference between that
` extracted image, which is unquestionably a visual
` depiction of the actor, Arnold Schwarzenegger, and the
` image of Mark Wahlberg shown on the left-hand side of
` Slide 11. Both are visual depictions of the actor.
` But even if there's some distinction between
` the visual depiction of a character and a visual
` depiction of an actor, and the claims required it to
` be this separate image that's not extracted from the
` video, Clarke makes it clear that that's what it's
` disclosing.
` On Slide 12, we have some quotes from Clarke,
` and Clarke repeatedly and consistently distinguishes
` between providing supplemental information about the
` actor and supplemental information about the
` character.
` We have a bunch of examples on Slide 12.
` There are more in the briefs.
` But just as an example, in number 1, Clarke
` discloses that the additional information can be the
` name of the actor who is playing the character and
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` additional information about the actor or character,
` and it repeatedly distinguishes between those two.
` And when it talks about Figure 6 -- and I'm on
` Slide 13 now -- when Clarke describes Figure 6C, it
` states that it's presenting additional information
` about the actor, not the character.
` There are other figures that Clarke describes
` as providing supplemental information about the
` character. In Figure 6C, it clearly describes
` providing additional information about the actor.
` Petitioner's expert, Dr. Bovick, is shown on
` the right-hand side of Slide 14. He's a professor at
` the University of Texas at Austin. He reviewed
` Clarke's images and Clarke's disclosure and testified
` that it discloses an image which is a visual depiction
` of a performer, Mark Wahlberg, and therefore, rendered
` these claims unpatentable.
` Patent owner's expert in his declaration only
` looked at the figures. He only looked at the figures
` and offered an opinion that it's a visual depiction of
` a character instead of a performer.
` But we asked him about Clarke's disclosure on
` cross examination, and his testimony is shown on the
` right-hand side of Slide 15.
` When we asked him about Clarke's disclosure,
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` he confirmed that Clarke discloses that Figure 6C is
` presenting additional information about the actor.
` And when I asked him, "Would a person of skill
` in the art understand that all of the additional
` information provided in Figure 6C is about the actor?"
` He agreed.
` And, of course, all of the information
` includes not only the name and the biographical
` information and the filmography, but also the image.
` It's of the actor, not the character.
` On Slide 16, we have patent owner's expert's
` declaration on the left-hand side. His testimony was
` that Clarke's figures, for example Figure 6C, are
` indiscernible and extremely low-resolution images
` which appear to be the image of the character.
` That was the extent of his analysis. He did
` not discuss Clarke's text or what Clarke -- how Clarke
` described the figures, he just said they're poor
` quality, and he thinks it's an image of the character.
` And on cross examination, he confirmed that.
` He doubled down saying -- his testimony is on the
` right-hand side of Slide 16 where he said, with
` respect to Figure 6C, "I can't figure out anything
` from Figure 6C."
` And that begs the question, if you can't
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` figure out anything from 6C, how could you possibly
` have an opinion that it's an image of a character
` instead of an image of the performer? And his
` response was, "Because of the way it's presented and
` what's described."
` But then he agreed, as shown on Slide 17, that
` what Clarke describes for Figure 6C is providing
` additional information about the actor, not the
` character.
` So there's no dispute here, both experts agree
` that if you consider Clarke as a whole, it clearly
` describes providing additional information and an
` image of the actor, not the character.
` JUDGE LEE: Now, Mr. Heideman, of course, none
`of this matters if Clarke is not prior art, at least
`for this particular ground.
` MR. HEIDEMAN: That's true.
` JUDGE LEE: The patent owner addressed some of
`your responses in your reply in their surreply, so
`here's your chance.
` What is your response to the arguments in
`their surreply regarding whether -- whether Clarke is
`prior art, what Dynamic Drinkware really holds, some of
`the other cases they cite? What's your response?
` MR. HEIDEMAN: So I have one slide on that
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`because I don't think it's really a contestable issue.
` Slide 21 has the decisions from the Board,
`which clearly hold, post Dynamic Drinkware, that a
`petitioner is only required to show that one claim in
`the referenced patent, here Clarke, is entitled to the
`priority -- or has written description support in the
`provisional application. Only one claim.
` And Dynamic Drinkware didn't address that
`issue. Dynamic Drinkware uses claims, in plural,
`because the parties there didn't compare the
`provisional application to any of the claims.
` And the Court said that's incorrect. You have
`to show that the provisional application has support
`for the claims, not that it just discloses the content
`that you're relying on.
` This issue has been repeatedly argued before
` the Board. The Board has repeatedly rejected it and
` made very clear that a petitioner only has to show
` that one claim is supported by the provisional
` application, and there's no dispute that that's true
` here.
` JUDGE LEE: Are you aware of any Federal
`Circuit or, for that matter, Supreme Court case law
`that might shed light on this one way or the other
`beyond Dynamic Drinkware?
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`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)¹
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` MR. HEIDEMAN: I'm not aware of any, Your
`Honor.
` They cited in their surreply some briefs, but
` those briefs just cited the same language as Dynamic
` Drinkware. They don't go further, and they certainly
` don't hold that a petitioner's required to show that
` every claim in the Clarke patent was supported by the
` provisional.
` And that doesn't make sense. If you look at
` the Board decisions we cited, if a single claim in
` Clarke is entitled to claim priority to the
` provisional application, then that provisional
` application is prior art.
` There's no more that you need to show, it just
` makes that provisional patent application available
` and effective as of its filing date.
` So we provided --
` JUDGE KENNY: Counsel, other than the fact
`that two Board decisions have held this, can you
`explain policy-wise, you know, why one claim would be
`enough?
` MR. HEIDEMAN: Absolutely. So --
` JUDGE KENNY: Or based on other case law.
` MR. HEIDEMAN: Well --
` JUDGE KENNY: You know, in other words, if we
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`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)¹
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`were to look at this, you know, de novo, why should we
`come out your way?
` MR. HEIDEMAN: Because the issue here is
`whether the provisional application -- the Clarke
`patent is entitled to the priority date of its
`provisional application.
` And the cases hold that if it claims priority
`to -- or the provisional provides written description
`support for one claim, then that provisional
`application is effectively prior art. Right?
` If it -- if there were no later patent that
`claimed priority to that provisional application, that
`provisional application would essentially die at the
`patent office and would never become prior art to
`anything.
` But as soon as a patent contains one claim
`that claims priority to and is entitled to priority to
`that provisional application, that provisional
`application effectively becomes prior art and serves as
`the priority date for that patent.
` Now, of course, we provided parallel
` citations --
` JUDGE KENNY: All right. But what's -- what's
`the logic behind that?
` I mean, in other words, I realize you're
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`saying that the cases -- two Board cases have said it,
`but what's the reasoning -- I mean, your reasoning for
`that?
` MR. HEIDEMAN: This is a -- I mean, this is
`how priority is determined. It's determined on a
`claim-by-claim basis. And there's no justification for
`finding that Clarke would not be prior art when
`everything we're relying on in Clarke was disclosed in
`the provisional. Right? So there's no dispute that
`what we're relying on was --
` JUDGE KENNY: Sure.
` MR. HEIDEMAN: -- disclosed in the
`provisional. It's just a very technical matter of
`whether Clarke was actually entitled to that priority,
`and it is as long as one claim is supported by the
`written description of the provisional.
` JUDGE LEE: So you just said that it's --
` JUDGE KENNY: Okay. That -- that --
` JUDGE LEE: Sorry to interrupt, Judge Kenny.
` I mean, you just said that it's done on a
`claim-by-claim basis, and the claim you chose to make a
`showing on was Claim 16.
` Does that mean that you have to make a showing
`that it is the disclosure regarding Claim 16 that is
`the prior art here?
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`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)¹
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` MR. HEIDEMAN: No, that's not the requirement.
`That's not the requirement at all.
` JUDGE LEE: And why not?
` MR. HEIDEMAN: We just had to show that there
`is a patent, Clarke, that claims priority and is
`entitled to priority based on that provisional, in
`which case that provisional becomes effectively prior
`art -- right? -- to the public. It's now accessible.
`There's a patent -- an issued patent, or a patent
`application that claims priority to it. That makes
`that provisional application effective prior art.
` And it contains all the disclosure that we
`relied on. That's why we provided parallel cites, to
`show everything we're relying on is also in that
`provisional.
` But to -- to satisfy that technical argument
`that has to claim priority, all we have to do is show
`one claim.
` And in -- and in the context of IPRs, if a
`petitioner had to show that every claim in Clarke was
`supported by the provisional, that would take your
`entire petition in some instances. Right? And it
`wouldn't matter, because as long as one claim is
`supported --
` JUDGE KAISER: Counsel, I think -- I think
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`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)¹
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`part of the problem here is that you're -- you're sort
`of mixing apples and oranges. Because you keep
`saying -- you keep justifying your conclusion by
`repeating your conclusion. So you keep saying, "It
`only needs one claim."
` We understand that's your argument, but we
`want to understand why.
` And so the apples and oranges thing I think
`maybe your mixing is, you know, priority is on a
`claim-by-claim basis when you're looking at the
`priorities of the challenged patent, right?
` But when you're looking at prior art, it's
`prior art as of a certain date, and so that's what
`we're trying to figure out, what's -- what is Clarke
`prior art as of? What's its -- what's its priority
`date for purposes of figuring out if it's prior art as
`to anything. Right?
` And so I guess the -- the question is why?
`Why does it have to be one claim versus all the claims?
`And that's where I think -- by mixing in in your
`argument saying, "It only has to be one claim," you're
`sort of not giving us that why.
` MR. HEIDEMAN: It only has to be one claim
`because -- it's hard to do it without relying on:
`Priority's determined on a claim-by-claim basis. And
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`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)¹
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`if Clarke has one claim that's supported by its
`provisional, then that is entitled to the priority date
`of the provisional, as long as the disclosure is in
`both places.
` And there's no dispute that the disclosure's
`in both places here. We provided parallel cites to
`everything.
` There's no dispute that what we're relying on
`was disclosed in the provisional. Right? And so
`I'm --
` JUDGE LEE: So, I mean, just building off of
`what Judge Kaiser just said. I mean, you keep going
`back to this idea of priority is dealt with on a
`claim-by-claim basis.
` It's certainly possible if, you know, in a
`challenged patent like the -- you know, the patent
`here, when you're assessing the priority -- let's say
`you're trying to swear behind some art or something
`like that -- that certain claims might be able to swear
`behind perhaps an earlier prior date -- priority date
`than other claims. Different claims might have
`different priority dates.
` MR. HEIDEMAN: Correct.
` JUDGE LEE: But what you're saying is that, as
`long as you show that one claim in Clarke is supported
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`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)¹
`
`by the provisional, then the entirety of Clarke is
`suddenly available as prior art.
` Now, that might be the right answer, but can
`you explain why that might be?
` MR. HEIDEMAN: Sure. It's because -- whether
`all of the claims in Clarke are entitled to priority
`doesn't matter for this issue, and that is whether
`Clarke is prior art. Right?
` That matters if you were challenging Clarke,
`whether those claims were entitled to that priority,
`but that doesn't matter here.
` JUDGE KENNY: Counsel, let me ask you this.
`What is the purpose of the one-claim requirement?
` In other words, you don't have any direct
`precedential cases on this, so maybe we can go to what
`the purpose of the requirement is and whether one claim
`would satisfy it.
` So in your mind, what is the purpose of the
`requirement for 102(e) art that there be support for one
`claim in the reference itself?
` MR. HEIDEMAN: Okay. So I think there -- the
`Board decisions we've cited -- and there's more than
`two -- I think are directly on point, and explain and
`reject its (inaudible) arguments.
` JUDGE KENNY: They're not -- they're not
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`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)¹
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`precedential, are they?
` MR. HEIDEMAN: I understand that. I
`understand that.
` JUDGE KENNY: Okay. So we have no
`precedential cases in front of us.
` So the question is -- okay. Can you explain
`to us from the purpose of 102(e)? There's a large body
`of case law in 102(e). Why do you think that one claim
`is enough for that requirement?
` MR. HEIDEMAN: One claim is enough as long as
`the disclosure you're relying on is in both places.
`Right? So Clarke --
` JUDGE KENNY: No, that's a separate
`requirement.
` So if -- the question is just policy-wise, why
`is one claim enough?
` MR. HEIDEMAN: Because as soon as one claim
`claims priority to the provisional and is entitled to
`that priority because the provisional provides written
`description and support for that claim, that
`provisional application is effectively now prior art.
`Right? There's a patent that claims and is entitled
`to --
` JUDGE KENNY: But counsel, that's the
`conclusion. The question is, why are we getting to
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`Case IPR2018-01496 (Patent 8,
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