Trials@uspto.gov
`571-272-7822
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`Paper 84
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` Entered: December 9, 2020
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`ZTE (USA), INC. and LG ELECTRONICS INC.,
`Petitioners,
`
`v.
`
`CYWEE GROUP, LTD,
`Patent Owner.
`___________
`
`IPR2019-00143
`Patent 8,441,438 B2
`___________
`
`Record of Oral Hearing
`Held: November 18, 2020
`___________
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
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`571-272-7822
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`Paper 84
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` Entered: December 9, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`ZTE (USA), INC. and LG ELECTRONICS INC.,
`Petitioners,
`
`v.
`
`CYWEE GROUP, LTD,
`Patent Owner.
`___________
`
`IPR2019-00143
`Patent 8,441,438 B2
`___________
`
`Record of Oral Hearing
`Held: November 18, 2020
`___________
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
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`IPR2019-00143
`Patent 8,441,438 B2
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`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER LG ELECTRONICS Inc.:
`
`
`DION BREGMAN, ESQ
`ALEX STEIN, ESQ
`MORGAN LEWIS
`1400 Page Mill Rd.
`Palo Alto, California 94304-1124
`
`And
`
`MICHAEL W. SHORE, ESQ
`ARI RAFILSON, ESQ
`MORGAN LEWIS
`901 Main St., Suite 3300
`Dallas, Texas 75202
`
`JAY KESAN, ESQ
`CECIL E. KEY, ESQ
`DIMURO GINSBERG PC - DGKEYIP GROUP
`1101 King St., Suite 610
`Alexandria, Virginia 22314
`
`
`ON BEHALF OF THE PATENT OWNER CYWEE GROUP Ltd.:
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`
`
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`
`
`The above-entitled matter came on for hearing on Wednesday,
`November 18, 2020, commencing at 1:05 p.m. EST, by video/by
`telephone.
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`IPR2019-00143
`Patent 8,441,438 B2
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`
` (Proceedings begin at 1:05 p.m.)
` JUDGE OGDEN: Hello everybody. Welcome to the
`Patent Trial & Appeal Board.
` This is the oral hearing in IPR2019-00143 between
` Petitioner ZTE USA Inc. and LG Electronics Inc., and Patent
` Owner Cywee Group Ltd.
` The challenged patent is U.S. Patent No. 8,441,438.
` I am Judge Ogden, and with me today are Judges
` Boucher and Jivani.
` Let's start with counsel introductions.
` Do we have anyone here appearing for Petitioner ZTE?
` I believe ZTE is not intending to argue in this
` hearing, and we haven't -- it looks like ZTE is not present,
` as I understand.
` Petitioner LGE, please identify who will be
` appearing for LGE and who will be arguing. And please,
` spell your names.
` MR. BREGMAN: Great. Thank you, Your Honor.
` My name is Dion Bregman. D-i-o-n, last name
`Bregman, B-r-e-g-m-a-n.
` And with me is my colleague Alex Stein. We're going
`to be splitting the argument.
` MR. STEIN: Good morning, Your Honors.
` Alex Stein. And that's A-l-e-x, S-t-e-i-n.
` JUDGE OGDEN: Okay. Thank you.
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`IPR2019-00143
`Patent 8,441,438 B2
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` Patent Owner Cywee, please identify who will be
` appearing for Cywee and who will be presenting arguments
` today.
` MR. KESAN: Yes, Your Honor. I'm Jay Kasen. J-a-y,
`K-e-s-a-n, appearing for the patent owner, Cywee Group. I
`will be presenting the argument.
` Along with me are Cecil Key, C-e-c-i-l, K-e-y; Ari
`Rafilson, A-r-i, R-a-f-i-l-s-o-n; and Michael Shore,
`M-i-c-h-a-e-l, S-h-o-r-e.
` JUDGE OGDEN: So Mr. Kesan, you'll be presenting the
`arguments today, you said?
` MR. KESAN: Yes, Your Honor.
` JUDGE OGDEN: Okay. This hearing, as usual, is open
`to the public, and I understand that there is at least one
`listener today from the public.
` I don't believe that the parties plan to discuss
` anything today that would involve trade secrets or is
` otherwise confidential, but if there is anything that needs
` to be discussed of a confidential nature, please let us know
`so that we can consider what to do at that point.
` So I'd like to thank both parties for adapting to
`our video procedures during this pandemic. And since we're
`all on video, there are some special considerations to keep
`in mind.
` First of all, we want to make sure that both parties
`are able to hear and to observe what's happening in the
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`IPR2019-00143
`Patent 8,441,438 B2
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`hearing, and also to have every opportunity to be heard. So
`please let us know if you have any technical difficulties,
`and if necessary, we can pause the hearing to get things
`fixed.
` Second, we ask that everybody keep your microphones
`on mute unless you're actually speaking so that we can limit
`the amount of crosstalk or background noise.
` And there is likely to be some amount of audio lag,
`so just keep that in mind when you're beginning to speak so
`we can try to avoid talking over each other.
` And third, the Panel and the parties should all have
`copies of the demonstrative exhibits, so when you refer to a
`demonstrative exhibit, please identify the particular slide
`that you're on so that we can all follow along on the same
`page.
` And likewise, if you need to access a place in the
`record, please identify the paper number and/or exhibit
`number and the page number in the paper exhibit so that the
`Panel and the opposing sides can locate it and follow along.
` And also, please pause because it may take a little
`bit of time to find the location in the record.
` And also, when you begin your argument or otherwise
`begin to address the Panel, please identify yourself for the
`record so that the court reporter knows who is speaking.
` According to the terms of the Oral Hearing Order,
`which is Paper 70, each side has a total of 60 minutes to
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`IPR2019-00143
`Patent 8,441,438 B2
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`present their arguments.
` And as we've indicated in the Oral Hearing Order,
`this hearing is limited solely to the issues raised in
`Cywee's revised motion to amend.
` We haven't yet decided the merits of ZTE's original
`petition, but ZTE and Cywee have agreed that those issues
`will be decided on the papers alone so there should be no
`discussion about those issues in today's hearing.
` We've previously decided to allow LGE to present
`arguments related to the revised motion to amend, and we
`acknowledge that Cywee has objected to LGE's participation
` in that regard. That objection, and the reasons for it, have
` been preserved on the record, they've been noted, and so the
` purpose of this hearing is not to relitigate that decision.
` As I'm sure you all know, even though Cywee has
` filed the revised motion to amend, Cywee does not have the
` burden of persuasion on whether the proposed substitute
` claims are patentable or meet the necessary statutory or
` regulatory requirements.
` So since LGE is the party who is challenging these
` proposed amendments, LGE will proceed first, followed by
` Cywee. And then, if the parties reserve rebuttal time, then
` LGE can make rebuttal arguments, and then Cywee can also
` make surrebuttal arguments.
` And I will be keeping track of the time on a
` stopwatch, and I'll try to give you a warning when your time
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`IPR2019-00143
`Patent 8,441,438 B2
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` is drawing to a close.
` So with that in mind, we'll start with Petitioner
` LGE. I understand that LGE will be splitting its time. How
` do you intend to split your time?
` MR. BREGMAN: Thank you, Your Honor.
` So I think we'll shoot for 45 minutes for opening,
`with 15 minutes for rebuttal, give or take a little bit of
`slack in that. So we might go over that 45 minutes a little
`bit and eat into some of our rebuttal time.
` I'll be keeping track, as well.
` JUDGE OGDEN: And so Mr. Bregman and Mr. Stein will
`be splitting the arguments, as well?
` MR. BREGMAN: Correct.
` JUDGE OGDEN: Okay. Do you want to specify a
`particular time to switch over, or just --
` MR. BREGMAN: No.
` JUDGE OGDEN: -- switch over at the --
` MR. BREGMAN: No. We'll do that ourselves, Your
`Honor, and just the total --
` JUDGE OGDEN: Okay.
` MR. BREGMAN: -- amount of time will be 45 minutes
`to 50 minutes --
` JUDGE OGDEN: Okay.
` MR. BREGMAN: -- and we'll either reserve 15 to 10
`minutes for rebuttal.
` JUDGE OGDEN: Okay. So I will set a timer then for
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`IPR2019-00143
`Patent 8,441,438 B2
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`45 minutes, and I will start the clock whenever you're ready
`to begin speaking.
` MR. BREGMAN: Well, can I just raise two preliminary
`issues before we get going?
` JUDGE OGDEN: Sure.
` MR. BREGMAN: So the first issue, I'm sure you saw
`on Monday, we sent Your Honors our objections to patent
`owner's demonstratives. They've added brand new arguments
`that aren't in any of the briefing -- that's in pages 13 to
`15 -- at least four or five or six new cases, new (inaudible)
`sections they're citing.
` We just haven't -- obviously, none of that is in the
`record. We haven't had a chance to respond to it, and we
`haven't had an opportunity to submit any evidence, if
`necessary.
` We don't think their arguments have any merits, but
`we do think it's prejudicial to allow them to present
`arguments that just aren't in the briefs at all.
` So that's the first issue.
` And then the second issue is there is a pending
` motion to exclude. We're not sure how Your Honors want to
` deal with that. Of course, the motion was filed by patent
` owner so we believe patent owner has the burden to start
` first, if they want to raise anything to do with the motion
` to exclude, and then we will get the opportunity to rebut
` that.
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` JUDGE OGDEN: I think with respect to the motion to
`exclude, if Cywee wants to discuss that at this oral hearing,
`we can address that at the time, and we'll certainly give LGE
`adequate opportunities to respond to that.
` With respect to the objections to the
` demonstratives, I don't think we'll be ruling on any such
` objections at this time. We'll take those arguments under
` consideration, and if they affect our final written
` decision, we will address that at a later time.
` MR. BREGMAN: Great. Understood. Thank you.
` JUDGE OGDEN: All right. Was there anything else
`before we begin?
` MR. BREGMAN: No. That was it. I'm all ready to
`go.
` JUDGE OGDEN: Okay. Go ahead. Start when ready.
` MR. BREGMAN: I'll start my clock. Thanks, Your
`Honors.
` So again, my name is Dion Bregman, representing LGE.
` You should have our slide deck in front of you, and
` I'll ask you to turn to Slide No. 2.
` You'll see Bullet Points 2 through 6 deal with at
`least five independent reasons why the revised motion to
`amend should be denied.
` The first two are procedural. I'm going to deal
`with those, and the next set of three are on the merits, and
`Mr. Stein will deal with that. So that's how we're going to
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`IPR2019-00143
`Patent 8,441,438 B2
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`break up the argument.
` If you turn to Slide 4, just to give you a little
`bit of level setting here about the claims and what claims
`are substituted in.
` On Slide 4, you'll see the original claim and the
`contingent substitute claim.
` So I'm going to go through each of these claims very
`briefly to give you, sort of, a little bit of background and
`to see what was added.
` So if you look at Slide 5, this is Substitute
`Claim 20 that substitutes in for Independent Claim 1. And
`you can see what was added, it's been underlined and
`highlighted here. They added a handheld, they added a
`single housing, a printed circuit board, and a display
`device built-in and integrated into a 3D pointing device.
` If you turn to Slide 6, this is a Dependent
`Substitute Claim 21. This substitutes in for Dependent
`Claim 5. Here they say that the 3D pointing device is a
`cellular phone.
` Slide 7. Substitute Claim 22. This substitutes for
`Independent Claim 14. This is a new independent claim.
`Again, they introduced the same things we looked at before;
`a single circuit board, a single housing unit to display a
`device built in and integrated with a 3D pointing device.
` The next slide, Slide 18, is Substitute Claim 23.
`This substitutes for Dependent Claim 15, and this adds an
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`IPR2019-00143
`Patent 8,441,438 B2
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`extended Kalman filter and a Jacobean.
` The final substitute claim is Claim 24, also an
`independent claim. This is on Slide 9. And you can see
`here that it's much of the same; adding a single printed
`board, a cellular phone, a display device built into the 3D
`pointing device, the Kalman filter, and the Jacobean.
` So that's it I want to point out. And if you jump
`to the next Slide 10, that the revised motion to amend makes
`some impermissible changes to unchallenged claims.
` We've included the rule again at the bottom of the
`slide. And you can see a motion to amend can only cancel a
`challenged claim, or for each challenged claim, propose a
`reasonable number of substitute claims.
` At the top part of the slide you can see an excerpt
` from Appendix A of Cywee's motion. And you can see that
` they're saying on Amended Claims 2 to 4, 6 to 9, and 16 to
` 18, depending from the proposed contingent claims.
` Out of those claims, 2, 3, 6 to 9, and 18 are not
` challenged, so they're effectively amending claims that were
` never challenged, which they're not allowed to do.
` I also want to point out that this is not
` contingent. These amended claims, they say, "If any of the
` proposed contingent claims get in, then these are the
` amendments to the dependent claim." That's simply not
` allowed under the rules. Okay.
` JUDGE OGDEN: Mr. Bregman, don't you think that
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`IPR2019-00143
`Patent 8,441,438 B2
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`Cywee just simply means that if we grant the proposed amended
`claims, then these dependent claims, which are not themselves
`amended, would ultimately depend from the amended claims?
` MR. BREGMAN: I think that's what they're trying to
`say, Your Honors, but if you look at the claims themselves,
`they still have antecedents back to the original claims.
`It's very confusing, to be perfectly honest.
` Normally, what would happen is, let's say Claim 1
` gets killed, and there's a new Substitute Claim 20 that is
` allowed. Well, Claims 2, 3, 4, 5, 6 that are in the patent
` are still in the patent. They either are challenged or
` they're not challenged. Their independent claim may be
` canceled, but those claims are still in existence.
` I think what they were trying to do here, which
` again is not clear because they don't actually change the
` antecedent or the dependencies in the claims, but I think
` you're absolutely right that they were saying, well, if you
` substitute in Claim 20 for Claim 1, then all these other
` claims are going to shift across from being dependent on
` Claim 1 to being dependent on Claim 20, and they're not
` allowed to do that. As far as we can tell, the rule says
` that if a claim is not being challenged, you can't cancel
` it, and you can't propose a reasonable number of substitute
` claims for their claim because it's not being challenged.
` So that's our reading of the rule. I hope that
` answers your question.
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`Patent 8,441,438 B2
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` JUDGE OGDEN: Yes. Thank you.
` MR. BREGMAN: Great. Let's turn to the threshold
`showing.
` So if you jump to our Slide 12, I'm going to briefly
` go through some threshold showings that patent owner has
`failed to meet.
` We'll start with the legal standard, and that is
`shown firstly on Slide 13. And this is from the Board's
`precedential case for claim amendments. That's the
`Lectrosonics case. And the Board made very clear in that
`case two things:
` One, it made clear that you have to provide support
`for each proposed substitute claim as a whole and not just
`for the features added by amendment. So you have to provide
`support for every limitation in the claim, not only the
`limitations that were added by amendment.
` The other thing -- we don't have it on this slide
`but you can find it in our brief -- our position on page 2
`or in the Lectrosonics case on page 8 -- "The written
`description support must be set forth in the motion itself,
`not in the claim listing," and we'll see why that's
`important in a minute.
` So what the patent owner has to do, whether you call
`it a threshold showing or you call it a burden of
`production, there's some dispute in the briefs about that,
`but really, it's a bit of a red herring.
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` What's clear from the cases and what's clear from
`the rule is patent owner has an initial threshold that they
`have to meet, they have to show support, they have to show
`some various other things, and it's not until they show
`those things that you actually look at the merits.
` If we look at the rule itself -- and that's on
`Slide 14, this is Rule 42-121 -- it says, "The motion to
`amend the claims must include three things: It must include
`a claim listing, it must show the changes clearly, and it
`must set forward the support."
` It also says that, "The claim listing can be
`contained in an appendix." That the case law is clear,
`Lectrosonics case again, "The written description support
`must be set forth in the motion itself, not in the claim
`listing."
` And you'll hear from my friend, Mr. Kesan, that he's
`going to say, well, this rule actually allows you to put the
`support in the claim listing. That's, of course, not what
`Lectrosonics said. Again, at the risk of boring you, I'll
`repeat it again because it's important, this is a direct
`quote from page 8 of the case, "Written description support
`must be set forth in the motion itself, not in the claim
`listing."
` If we jump to Slide 17, let's see what patent owner
`actually did. So there's a nice graphic on Slide 17.
`You'll see patent owner filed their revised motion to amend,
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`Patent 8,441,438 B2
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`25 pages. They're completely allowed to do that. They're
`within their page count.
` They then filed something called an Appendix A, a
`claim listing. Again, we just read the rule, they're
`allowed to do that. They can have a claim listing.
` And then they add something new that is never heard
`of before called a “claim listing appendix,” which is an
`additional 12 pages, and that is the sole place that they
`have any alleged support for any of the limitations that
`were not added in this revised motion to amend.
` In essence, they're adding 50 percent increase to
`their page count, directly contradicting what the
`requirements are in the rule and what the requirements are
`in the Lectrosonics case which says that, "The support must
`be in the motion itself, not in the claim listing," and
`certainly not in some additional document called “the claim
`listing appendix” at the end of -- tacked on to their motion.
` JUDGE OGDEN: Now, Mr. Bregman --
` MR. BREGMAN: Sorry. Go ahead. Yes.
` JUDGE OGDEN: -- I understand that -- or I believe
`that Cywee's original motion to amend took this same approach
`in only addressing the newly added limitations in the actual
`motion and then including a similar claim listing, an
`appendix at the end that dealt with the original limitations.
` But as far as I'm aware, ZTE did not object to that
` at the time in their opposition to the original motion to
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` amend, and so in our preliminary guidance, we didn't address
` that issue.
` So is it fair for LGE to raise this issue now with
` respect to the revised motion to amend when that same issue
` could have been raised previously in response to the
` original motion to amend at a time when Cywee could have
` fixed the issue?
` MR. BREGMAN: We, of course, do think it's fair.
`Every motion stands on its own two feet. What happened in a
`previous motion -- that motion's no longer relevant, the
`earliest motion. They chose to file a revised motion to
`amend. So really, the only thing that's important now is the
`revised motion to amend. It's as if the original motion
`doesn't exist, and they have to meet all the requirements for
`the revised motion to amend.
` Because ZTE didn't raise it earlier in a different
`motion to amend shouldn't prevent us from raising the issue
`in a brand new revised motion to amend.
` This is the only motion to amend that counts, and
`this is the one that Cywee needs to comply with the rules.
`They chose not to comply with the rules.
` There's only something like one or two precedential
`cases on motions to amend that the Board has. Lectrosonics
`is by far the leading case. The law couldn't be laid out
`clearer in that case. And we don't think it's excusable to
`misinterpret the rule in a convenient way that gives them
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`50 percent more pages than they were entitled to in the
`motion and just flout both the rule and the Board's
`precedential decision. So that's the first point.
` It's, of course, deficient as well because they just
`have a table. There's no explanation in the table
`explaining how those citations provide support for the
`limitations in the claim. That was their job. Their job is
`to explain why the underlying documents provide support for
`the claims, not just a listing of citations, string
`citations.
` So there's multiple reasons why this doesn't work;
` not just because they violated the rules in the Board's
` precedent, but because they also didn't provide an
` explanation which explains how those portions of the patent
` support the original claim limitations.
` Does that answer your question?
` JUDGE OGDEN: Yes. Thank you.
` MR. BREGMAN: All right.
` JUDGE BOUCHER: This is Judge Boucher.
` MR. BREGMAN: If you go to Slide 19 --
` JUDGE BOUCHER: Actually, could I interrupt,
`Mr. Bregman?
` MR. BREGMAN: Yes.
` JUDGE BOUCHER: Because I have a related question, and
`it seems like a good opportunity to ask it.
` It seems like a number of your arguments are
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` arguments that ZTE could have made with respect to the
` original motion to amend.
` And wouldn't it be the case that ZTE would be
` precluded from making those arguments with respect to the
` revised motion to amend because it didn't make them with
` respect to the original motion to amend? And if that's the
` case, wouldn't you also be precluded --
` MR. BREGMAN: So I --
` JUDGE BOUCHER: -- as to the circumstances under
`which you're participating?
` MR. BREGMAN: I understand the question.
` Your Honor, Judge Boucher, I don't think that that's
` the case.
` If that was the case, then whatever arguments you
` make with respect to the first motion to amend, you're done.
` Like, those are the only arguments you can make.
` That would be completely unfair that the patent
` owner gets an opportunity to rewrite their motion to
` amend -- they could do a complete rewrite of their motion to
` amend, they're entitled to change it, they don't even have
` to have the same amendments, they can make new amendments in
` their revised motion to amend, and then to hold our feet to
` the fire to say, oh, no, that was an argument you could have
` made with respect to the original motion to amend, but you
` didn't make it.
` The two motions stand on their own two feet. They
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` need to. They necessarily have to.
` The first motion, they filed, we address it, ZTE
` addressed it, Your Honors provided some preliminary guidance
` on that. Patent owners took that preliminary guidance, they
` went back to the drawing board, filed a brand new motion.
` This is a new motion. This motion has to stand on its own
` two feet, and we can address that motion de novo. Because
` ZTE didn't raise this earlier is in no way a waiver that we
` can't raise something for a brand new motion.
` Cywee could have done whatever they wanted in their
` motion. They could have made new amendments, in fact, they
` did make new amendments, and we are entitled to treat that
` motion as if it is a standalone motion, on its own, that has
` to meet all the requirements.
` JUDGE BOUCHER: Let me ask the question at a higher
`level of abstraction.
` If we were to find that ZTE would be precluded from
` making a certain argument with respect to the revised motion
` to amend, is there any basis under which LGE is entitled to
` make that argument?
` MR. BREGMAN: I'm not sure I have an easy answer to
`that question. It's not something that we've considered.
` I don't think it should be. And ZTE -- there are
` two petitioners in this proceeding. ZTE has chosen not to
` participate in the revised motion to amend. They're out.
`While the other petitioner jumps in and they take the
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`position, you know, they are not the petitioner for all
`intents and purposes with respect to the revised motion to
`amend.
` So it's not like there was only one petitioner,
`there were two petitioners. ZTE decided it did not want to
`participate anymore. Well, then we are -- second petitioner
`steps up. It's not that we're stepping into the shoes of
`ZTE, we are a separate petitioner that is now taking the
`lead in the case going forward, and I think that's what Your
`Honors allowed us to do by filing an opposition to the
`revised motion to amend.
` Of course, if we weren't going to do it, Your
`Honors, the rules say that you have to do it. The rules say
`that if we don't step up, and ZTE chooses not to do
`anything, well, then the Board has to take positions.
` Well, the Board certainly is not bound by what ZTE
`does, the Board can make up whatever new arguments it wants.
`So, to me, that's one in the same issue. If the Board can
`just step in and sua sponte make rejections if the
`petitioner chooses not to participate, the second
`petitioner, us, LGE in this instance, can step in as if
` anew, because it is a revised motion to amend, and deal with
` the issues presented.
` JUDGE BOUCHER: Okay. Thank you.
` MR. BREGMAN: Thank you.
` So if we look at Slide 19, just a final point on
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` this. Patent owner's expert also didn't attempt to show any
` support. Our expert, of course, showed that there was no
` support, so it's really one-sided here.
` If you look at the question we asked their expert.
` We asked him, "Does the third declaration" -- this is his
` declaration -- "discuss support for the amended claim
` limitations?" And he says he doesn't see any support for
` the original claims.
` Therefore, patent owner ignored the rules, ignored
` the Board's precedent, gave themselves a 50 percent longer
` brief than they were entitled to, and for this reason alone,
` their revised motion to amend should be denied.
` JUDGE OGDEN: To the extent that -- now, as I
`understand it, the claims that issued in the '438 patent are
`very similar to the originally filed claims except for one
`examiner amendment that was made at the end, and then I also
`believe that Claim 19 was a newly added claim.
` But to the extent that the claims are exactly the
` same as the originally filed claims, isn't it self-evident
` that those original claim limitations would have support in
` the application as originally filed?
` MR. BREGMAN: So you're saying because the claim --
`the claims themselves provide support for the claims?
` JUDGE OGDEN: Yes. The claims, as filed in the
`original application, before they were amended.
` MR. BREGMAN: Yes. So we don't believe that it's
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`just sufficient to just repeat one word, and if you repeat
`that word, that provides support.
` Mr. Stein's going to be talking about the other
` requirements under Section 112. So in addition to written
` description, of course, having enablement is the second
` prong of that, and we'll show that the claims aren't
` enabled.
` So I think maybe we'll get to that in a little bit
` more detail about how there's 112 lacking in the original
` application when we get to that section in a moment.
` JUDGE OGDEN: But in terms of Cywee's burden of
`production, initial burden of production --
` MR. BREGMAN: Yeah.
` JUDGE OGDEN: -- to the extent that the existing --
`or to the extent that the claims that they are proposing --
`the substitute claims that they are proposing have exactly
`the same limitations that were in the original application as
`filed, is it really necessary for Cywee to go through and
`provide support for those? Because they could just point to
`the originally filed claims.
` MR. BREGMAN: And, Your Honor, maybe they could do
`that, but they didn't do that. I mean, the rules tell us
`what they need to do.
` We could help Cywee along and say, well, they could
` have done this, they could have done that. They didn't do
` it. The rules require that they do it. The rules are
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` strict in what is required. The precedential decision from
` the Board tells us they need to do it. They just didn't do
` it.
` So I don't know if they could have done it. They
` didn't do it is my point.
` JUDGE OGDEN: Okay. Thank you.
` MR. BREGMAN: Thanks.
` So I want to leave Mr. Stein with time. I'm just
` going to quickly go to the second threshold showing.
` So the second threshold showing, if we go to Slide
`No. 20 and then 21, is that the patent owner needs to
`explain how any amendments that they make are responsive to
`ground of unpatentability, and there are two claims where
`they simply don't do this.
` So on Slide 21 you'll see 20H. They make some
`amendments to Claim 20. They don't describe anywhere or
`explain why the revised motion to amend is responsive. A
`failure to meet this threshold requirement dooms this claim.
` What about the next claim, Claim 22? They just
`strike out the word “and.” Now, you might say, well, that
`seems like a trivial amendment, they're just striking out
`the word and, but they provide no explanation of why they
`did that. It's certainly not for grammar because they
`didn't add anothe
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