`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________________
`MEDTRONIC, INC., and
`MEDTRONIC VASCULAR, INC.,
`
` Petitioners,
`
`vs. Case No. IPR2020-00126
` U.S. Patent No. 8,048,032
`TELEFLEX INNOVATIONS
`S.A.R.L.,
` Patent Owner.
`___________________________________________________
`
`IPR2020-00126 (Patent 8,048,032 B2)
`IPR2020-00127 (Patent 8,048,032 B2)
`IPR2020-00128 (Patent RE45,380 E)
`IPR2020-00129 (Patent RE45,380 E)
`IPR2020-00130 (Patent RE45,380 E)
`IPR2020-00132 (Patent RE45,760 E)
`IPR2020-00134 (Patent RE45,760 E)
`IPR2020-00135 (Patent RE45,776 E)
`IPR2020-00136 (Patent RE45,776 E)
`IPR2020-00137 (Patent RE47,379 E)
`IPR2020-00138 (Patent RE47,379 E)
`____________________________________________________
`
` TRANSCRIPT OF TELEPHONIC PROCEEDINGS
`
`DATE: January 5, 2021
`TIME: 10:00 a.m. CST
`PLACE: Minneapolis, Minnesota
`(via teleconference)
`JOB NO.: MW 4394062
`
`REPORTED BY: Dawn Workman Bounds, CSR
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`1 guidance on petitioner's arguments in its reply, that
`2 patent owner violated the limitation on incorporation by
`3 reference.
`4 And then we have the December 30th request
`5 from patent owner requesting a Motion to Strike
`6 Petitioner's Reply Briefs, or at least portions thereof.
`7 And I showed them this in the beginning.
`8 Let's actually start with roll call.
`9 Who do we have on the line for patent
`10 owner, and then who do we have on the line for
`11 petitioner?
`12 MR. VANDENBURGH: Your Honor, for patent
`13 owner, this is Derek Vandenburgh of the Carlson Caspers
`14 firm, and also on the call is Peter Kohlhepp of our firm.
`15 JUDGE PAULRAJ: All right. Thank you,
`16 Mr. Vandenburgh.
`17 And who do we have for petitioner?
`18 MR. MORTON: Your Honor, for petitioner
`19 this is Cy Morton, and with me also on the line is Chris
`20 Pinahs and Sharon Roberg-Perez.
`21 And just to preview, Your Honor, usually I
`22 do the talking; but I'm just going to handle this first
`23 issue; and the motion to strike issue, Mr. Pinahs is
`24 going to handle.
`25 JUDGE PAULRAJ: All right. Thank you,
`
`1 A P P E A R A N C E S
`2 (ALL APPEARANCES VIA TELECONFERENCE )
`3 ADMINISTRATIVE PATENT JUDGES
`4 Christopher G. Paulraj
`5 Sheridan K. Snedden
`6 Jon B. Tornquist
`
`7 8
`
`ON BEHALF OF PETITIONERS:
`9 CYRUS A. MORTON, ESQ.
` CHRISTOPHER PINAHS, ESQ.
`10 SHARON ROBERG-PEREZ, ESQ.
` ROBINS KAPLAN LLP
`11 2800 LaSalle Plaza
` 800 LaSalle Ave
`12 Minneapolis, MN 55401
` 612.349.8500
`13 camorton@rkmc.com
` cpinahs@robinskaplan.com
`14 sroberg-perez@robinskaplan.com
`15
`
`ON BEHALF OF PATENT OWNER:
`
`16
`
` DEREK VANDENBURGH, ESQ
`17 PETER KOHLHEPP, ESQ.
` CARLSON CASPERS VANDENBURGH & LINDQUIST, PA.
`18 Capella Tower, Suite 4200
` 225 South Sixth Street
`19 Minneapolis, MN 55402
` 612.436.9623
`20 dvandenburgh@carlsoncaspers.com
` pkohlhepp@carlsoncaspers.com
`
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`1 P R O C E E D I N G S
`2 JUDGE PAULRAJ: This is Judge Paulraj of
`3 the Patent Trial and Appeal Board, and with me on the
`4 line I have judges Tornquist and Snedden. This is a
`5 conference call and in a series of IPRs: IPR 2020-126,
`6 127, 128, 129, 130, 132, 134, 135, 136, 137, and 138.
`7 Did I get all the cases there?
`8 MR. VANDENBURGH: I believe so.
`9 JUDGE PAULRAJ: Okay. So we have two
`10 requests, both from patent owner; so we'll address both
`11 of those in turn. I know the more recent request was
`12 requested as part of a separate phone call. But per the
`13 e-mail that we sent out this morning, we'd like to
`14 address both requests today.
`15 Do we have a court reporter on the line?
`16 THE REPORTER: Yes, Your Honor.
`17 MR. VANDENBURGH: Yes, Your Honor, we do.
`18 JUDGE PAULRAJ: All right. Excellent.
`19 So whoever did arrange for the court
`20 reporter, per usual practice, please make a transcript of
`21 that part of the record as soon as it's available.
`22 MR. VANDENBURGH: Will do.
`23 JUDGE PAULRAJ: Okay. So let's take the
`24 requests in turn. So we have down a request from Chris
`25 Hasid, December 24th, from patent owner asking for
`
`1 Mr. Morton.
`2 And if we could just make it clear for the
`3 record, identify yourself before you speak. That would
`4 be easier for myself, as well as I imagine the court
`5 reporter.
`6 So happy new year, everyone, and let's
`7 start with first request.
`8 Mr. Vandenburgh, go ahead.
`9 MR. VANDENBURGH: Thank you, Your Honor.
`10 Procedurally this is, of course, a very
`11 unique and complicated case. Not only do we have 11 IPRs
`12 consolidated into a single proceeding, but that's, you
`13 know, made even more complicated by the fact that seven
`14 of the IPRs involved as the lead reference a reference
`15 that there's a dispute over whether it actually
`16 constitutes a prior art or not.
`17 Now, the board I think wisely got out in
`18 front of this issue in setting the scheduling order sua
`19 sponte setting up a separate briefing on that issue with
`20 separate word counts. And I think of relevance to the
`21 issue that we're going to be talking about today, when we
`22 first had the first of two calls last summer relating to
`23 petitioner's request for additional briefing and words on
`24 this issue, we asked the board whether it was sort of
`25 contemplating a single brief dealing with conception and
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`1 reduction to practice or seven different briefs for each
`2 case.
`3 And the guidance we got -- of course, the
`4 board didn't say, you know, we had to do one or the
`5 other; but the guidance was that they preferred a single
`6 brief. And to us that made sense because the real
`7 disputes in this case relating to conception and
`8 reduction to practice don't really turn on the specific
`9 language of a particular claim in a particular patent.
`10 They're more generally on the issues of, you know, were
`11 prototypes made; is there corroboration; is there
`12 testing, was it sufficient. Those are the issues that
`13 seem to be in dispute, and from the evidence that we --
`14 briefing we've seen so far in the dispute.
`15 But, you know, we're asking for
`16 clarification today because there is this issue that
`17 arises in priority disputes of whether the prototypes
`18 that were built meet the limitations of the claims. And
`19 we don't -- again, we don't think there's actually much
`20 dispute on this issue. If you look at the -- when we
`21 briefed this issue, you look at the fact that the -- the
`22 specification here in describing the embodiments of the
`23 invention, basically all of the preferred embodiments are
`24 made up of two subcomponents: a relatively flexible,
`25 polymer, tubular portion at the distal end of the device
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`Page 8
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`1 we did. They attached a detailed expert declaration
`2 purporting to set forth some limitations that he thought
`3 weren't present in the claims.
`4 But the other thing the petitioner did is,
`5 in the course of essentially a single paragraph, they
`6 threw the Hail Mary pass. They said: "But, but, wait a
`7 minute. We should win as a matter of procedure because
`8 that sort of detailed element-by-element analysis is
`9 necessary to your burden of proof, patent owner. You
`10 violated the incorporation by a reference rule, and so
`11 you lose as a matter of procedure."
`12 That's basically what we are looking for
`13 here, guidance. Now, we don't think we did violate. We
`14 think that -- you know, we've got 27 pages, including
`15 detailed discussion of the prototypes, that provides
`16 guidance on how those correspond to claim elements,
`17 combined with our appendix in the declaration -- in the
`18 expert -- or the inventor's declaration.
`19 But the important thing and the other
`20 reason we're here is because there certainly was no
`21 intent to violate any word count limits. Again, we were
`22 trying to meet what the board asked for. We gave a
`23 single brief, and we put the claim-by-claim specificity
`24 into these appendices. Seemed to us to be the efficient
`25 thing and what the board wanted.
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`1 and then a proximal end that is relatively rigid, that
`2 according to the spec is preferably made out of steel
`3 hypotube.
`4 So as part of our briefing, we pointed out
`5 that our prototypes - and two specific prototypes in
`6 particular that were ordered and built - had exactly
`7 those two components. We showed them. We annotated them
`8 using language -- you know, not the exact language of
`9 each claim because the claims are different, but using
`10 the language corresponding generally to the claim
`11 language. And we pointed out how those prototypes
`12 corresponded to the invention described in the patent and
`13 claimed in the claims.
`14 We also included as an appendix to one of
`15 the inventor declarations an extremely detailed,
`16 element-by-element analysis of each and every claim, each
`17 and every claim limitation to those prototypes.
`18 So what happened then in response?
`19 In response, petitioner in their brief --
`20 first of all, they also filed only a single brief on the
`21 issue of conception and reduction to practice identical
`22 for all seven cases. And in that brief, they didn't
`23 identify a single limitation in the prototypes -- I'm
`24 sorry -- a single limitation of the claims that they're
`25 saying wasn't in the prototypes. Instead they did what
`
`1 We also note that when we had the second
`2 of our two calls relating to patent owner's request for
`3 an additional brief on this issue and for additional
`4 words, that they -- they emphasized that we had put a lot
`5 of material in as part of the request for more words, why
`6 they needed more words; and they emphasized the fact that
`7 they had the burden of proof on this issue. And now
`8 they're coming back and saying, no, that's not really the
`9 case; there's this procedural defect, and we should just
`10 win as a matter of course.
`11 So -- and I guess, before I wrap this up,
`12 I do also want to make one last point why we think that
`13 there's no need for the board to consider - and the board
`14 shouldn't consider - their procedural argument is we
`15 don't think that this is a situation where, at the end of
`16 the day, the board is going to end up having to, as some
`17 of the cases say, play archeologist with the record to
`18 figure out what the parties' arguments are on this issue.
`19 Now, there's still briefs -- two briefs to
`20 go on the issue of conception and reduction to practice.
`21 We're going to file a brief at the end of this month
`22 where we can address the limitation that their expert
`23 says was not in the prototypes, and they get yet another
`24 brief after that to discuss the issue. So the issue will
`25 be crystallized.
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`1 And, of course, there's no prejudice to
`2 Medtronic in considering this issue on the merits
`3 because, you know, they have -- they have addressed it in
`4 detail on the merits. They've taken four fact
`5 depositions on the issue of conception and reduction to
`6 practice. They've taken expert depositions on the issue.
`7 It's fully briefed and considered. There's no prejudice
`8 to that.
`9 So I guess what we'd like to ask the board
`10 to do is to confirm today that they aren't going to
`11 decide the conception and reduction to practice issue on
`12 this procedural question of what evidence and argument
`13 should have been in the briefs versus the declarations.
`14 Again, the parties have put a lot of work
`15 into the merits. Everything is there -- you know, needed
`16 to decide the issue is already there and will be there
`17 with additional briefs that are going to be filed.
`18 And I guess, most importantly then, as we
`19 continue to brief this issue, we don't want to have to
`20 devote precious words that we have remaining on this
`21 issue to arguing over this procedural issue to explaining
`22 why they're wrong. So that's our primary request for
`23 today.
`24 I think, alternatively, if the board is
`25 not, you know, willing to grant that clarity today, then
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`Page 11
`1 what we would ask for is an additional thousand words for
`2 our surreply brief so that we can brief this procedural
`3 question in detail.
`4 You know, petitioner raised it in
`5 literally a paragraph. They didn't devote words to it.
`6 But it's important. It's potentially dispositive. And
`7 so if the board is -- is not willing to just say, you
`8 know, "Oh, we're going to decide this on the merits,"
`9 then we would ask that we be given these thousand extra
`10 words to address that issue as part of our surreply.
`11 That's all I have on that issue, Your
`12 Honor.
`13 JUDGE PAULRAJ: Thank you,
`14 Mr. Vandenburgh.
`15 I don't think I have any questions at this
`16 point from what you presented.
`17 Let me turn it over to Mr. Morton, and
`18 then we may have questions for the other side after that.
`19 MR. MORTON: Yes, Your Honors.
`20 I did think that the request was more for
`21 more words. And I think from this presentation, it's
`22 clear the request is more for an advisory opinion from
`23 the board to decide an issue now that's in the briefing,
`24 which I think are generally not how things go.
`25 You know, on this issue of, you know,
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`Page 12
`1 there's one brief, and they put all their claim-by-claim
`2 analysis in an appendix to a conductory declaration, I
`3 think, in general, Your Honor, the patent owner is just,
`4 in addition to an advisory opinion, seeking a do-over on
`5 that point. And if I can just give a brief history of
`6 the issue, I think I can explain why really, at the end
`7 of the day, there's nothing the board needs to do now in
`8 terms of an advisory opinion or expanded word count.
`9 So, Your Honor, throughout this process,
`10 there have been two related issues. One issue was word
`11 count, and one issue was whether we could file different
`12 briefs for different IPRs because conception and
`13 reduction to practice is a claim-by-claim analysis which
`14 can differ for different patents. And the board's
`15 original scheduling order back in June addressed both
`16 issues setting word counts and setting consolidated
`17 briefing, one set of briefs.
`18 We sought -- petitioner sought to change
`19 that first at least by seeking identical word counts of
`20 both parties, and patent owner opposed that. In our meet
`21 and confer, they said they planned to file one brief. We
`22 wouldn't agree to that. We pointed out it was
`23 claim-by-claim analysis. And we had a board call where
`24 we made these points to the board, and the board decided
`25 to wait on any decision.
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`Page 13
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`1 The patent owner did not raise any issue
`2 with the procedure whatsoever with the board, other than
`3 to oppose our request for equal words. Patent owner went
`4 ahead then and filed one identical brief for all seven
`5 IPRs and put its claim-by-claim analysis in a chart
`6 appended to inventor Root's declaration. After that we
`7 raised the issues again, and again patent owner opposed.
`8 And this time on the board call, the board decided to
`9 order equal briefing.
`10 And we addressed the burden of proof on
`11 that time. There is a transcript. It's in the record.
`12 I said that they have to send for us. They have to make
`13 their case and shift the burden back to us on this issue.
`14 And at that time, the patent owner characterized it as
`15 their burden of production. That's in the transcript.
`16 So -- so they do that. We're going to do that.
`17 Now, this is the heart of the matter for
`18 today's decision, Your Honor; at no time did patent owner
`19 object to the limits on their word count. At no point
`20 did patent owner object to consolidated briefing. They
`21 never said, "Hey, this is going to be difficult to get
`22 this in briefs because it's claim by claim." In fact,
`23 they embraced the idea of single briefs over our
`24 objections, and they only sought to maintain unequal
`25 briefing in their favor.
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`1 Now, nothing has changed since then, Your
`2 Honor. We simply made the argument that was available to
`3 us that the Root charts are a proper incorporation by
`4 reference. Very common argument in IPRs. And the
`5 argument's not a stretch. There's nothing in the briefs
`6 about the various claims across the patents, there's only
`7 that chart.
`8 But the board certainly does not need to
`9 decide that issue here today. In the final written
`10 decision, the board can decide whether or not the patent
`11 owner met its burden on this issue in its opening briefs.
`12 The board does need to render an advisory opinion or give
`13 patent owner a do-over with more words.
`14 So I'm guessing patent owner will try to
`15 meet its burden in its surreply briefs now, which I think
`16 is improper. If they do that, we will point that out in
`17 our surreply briefs. And the board can decide the matter
`18 in the final written decision.
`19 So in conclusion, Your Honor, patent owner
`20 has known all along that it's a claim-by-claim analysis.
`21 That's basic patent law. They chose to embrace the
`22 filing of one brief and never asked for more words.
`23 There's no reason to adjust the procedure now just
`24 because we made an incorporation-by-reference argument.
`25 Thank you, Your Honor.
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`1 JUDGE PAULRAJ: Thank you, Mr. Morton.
`2 Let me put the parties on hold. I'm going
`3 to confer with my panel about whether we have any
`4 questions before we address this issue further.
`5 (Off the record 10:18-10:19.)
`6 JUDGE PAULRAJ: Mr. Vandenburgh, one
`7 question we have for the patent owner's side in terms of
`8 what you're asking for in terms of the thousand extra
`9 words: Would those thousand extra words be used to only
`10 argue that you didn't improperly incorporate Root
`11 reference, or are you going to more or less remedy
`12 perhaps the alleged improper incorporation by reference
`13 by -- by making substantive arguments in your surreply?
`14 Could you clarify that point?
`15 MR. VANDENBURGH: What we intend to do is
`16 to address the -- the alleged deficiency and obviously
`17 brief that in issue -- in detail. And there are cases
`18 from the board on this issue that need analysis.
`19 In addition, we do contemplate addressing
`20 the things that their expert says; you know, what they
`21 put their dec -- in their lengthy declaration that they
`22 incorporated and address the specific issues that the
`23 board -- or I'm sorry -- that petitioner is contending
`24 were not in the prototypes so that the board does not
`25 have to play archeologist.
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`1 But we -- it is not our intent to -- to go
`2 back and somehow -- and, of course, there's no possible
`3 way we could do so with a thousand words -- somehow
`4 incorporate, you know -- or put claim charts into our
`5 surreply brief. That is not our plan.
`6 JUDGE PAULRAJ: Okay. And just to follow
`7 up.
`8 Is it -- regardless of whether it's
`9 inappropriate or not -- and we're not, at least right now
`10 on this call, going to make a judgment on that -- is it
`11 your intent for us to rely upon the claim charts in
`12 addition to the arguments you've made in the -- in the
`13 brief itself?
`14 MR. VANDENBURGH: Well, they are -- they
`15 are evidence.
`16 JUDGE PAULRAJ: Okay.
`17 MR. VANDENBURGH: And just like I am sure
`18 that Mr. Morton would say that their expert's lengthy
`19 appendix is evidence.
`20 But, again, we -- our hope is that we are
`21 going to provide the guidance that the board would like
`22 of what's actually in dispute relative to whether the
`23 prototypes are covered in the claim in the briefs
`24 themselves and not have to somehow parse that out on
`25 their own out of the -- out of the appendices.
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`1 JUDGE PAULRAJ: Okay. And just one
`2 follow-up.
`3 Perhaps, Mr. Morton, you can answer; and
`4 I'll let both sides respond.
`5 In terms of the claim charts included with
`6 petitioner's expert declarations, are those claim
`7 charts -- and what I'm trying to get at is, are they also
`8 kind of entitled to be like a claim-by-claim,
`9 patent-by-patent analysis analogous to what -- what
`10 you've included in patent owner's briefs?
`11 MR. MORTON: So, Your Honor, I guess I
`12 wouldn't -- I wouldn't agree that we haven't made any
`13 argument about what's missing from the prototypes in our
`14 briefs. I think we did make an argument in our briefs.
`15 Certainly there are a lot more words in the claim charts
`16 in the expert's declaration.
`17 I do think there is a little bit of a --
`18 you know, if the board is going to consider their claim
`19 charts, which we say our incorporated by reference, at
`20 that point I guess it's all fair game and our stuff's
`21 probably in, too. But I don't think it's just purely a
`22 goose/gander situation. I think we've said things in the
`23 briefs as far as what's -- what's missing.
`24 JUDGE PAULRAJ: All right. Thank you
`25 both. Let me put the parties on mute again and discuss
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`1 with my panel.
`2 (Off the record 10:22-10:28.)
`3 JUDGE PAULRAJ: Counsel, this is Judge
`4 Paulraj again. Thank you for your patience as we
`5 conferred.
`6 So to patent owner's request for perhaps
`7 what petitioner might characterize as an advisory
`8 opinion, we aren't going to pass judgment on whether or
`9 not your -- your brief violated the limitation on
`10 incorporation by reference.
`11 We will give the general guidance that
`12 we've given before - and I think you're fully aware of -
`13 that, you know, the intent of that rule is to not have us
`14 dig through for arguments and expert declarations, et
`15 cetera.
`16 So to the extent that the arguments are in
`17 your brief and the evidence in the claim chart supports
`18 those arguments, that's certainly fine. That's
`19 consistent with what we said before and in our trial
`20 practice guide in prior cases, so we'll abide by that
`21 general principle.
`22 And to the extent that you want to address
`23 that incorporation-by-reference argument, we'll give 500
`24 extra words in your -- in your surreply to address that;
`25 not a thousand.
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`Page 20
`1 the same page. And along with those 500 words -- I know
`2 it's kind hard to perhaps parse which 500 words are going
`3 to be devoted to a certain argument, but as long as both
`4 parties can use those 500 words to address
`5 incorporation-by-reference argument rather than use those
`6 for substantive merits arguments.
`7 Does that make sense?
`8 MR. MORTON: Yes, Your Honor.
`9 MR. VANDENBURGH: Yes, Your Honor.
`10 JUDGE PAULRAJ: Okay. All right. Then I
`11 think we've covered the first issue. Let's turn to the
`12 second issue.
`13 MR. VANDENBURGH: Thank you, Your Honor.
`14 This is Mr. Vandenburgh again.
`15 The Trial Practice Guide clearly states
`16 that a petitioner may not submit new theories of
`17 invalidity for the first time in a reply brief, nor can a
`18 petitioner submit new evidence with their reply brief
`19 that should have been submitted with the opening
`20 petition.
`21 Here Medtronic -- Petitioner Medtronic has
`22 done both. In each of the 11 IPRs, they have submitted
`23 approximately 200 pages of additional experts'
`24 declarations and at least 18 new exhibits, you know, not
`25 counting the expert -- our expert transcript --
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`1 Any questions on that point?
`2 MR. VANDENBURGH: No, Your Honor.
`3 JUDGE PAULRAJ: Okay. If there's no other
`4 questions, then let's turn to the second request from
`5 December 30th about a motion to strike petitioner's reply
`6 briefs.
`7 MR. MORTON: Your Honor, this is Mr.
`8 Morton, if I -- if I could just pipe in.
`9 Sorry for the interruption.
`10 JUDGE PAULRAJ: You're going back to the
`11 first issue, Mr. Morton; is that right?
`12 MR. MORTON: Yeah. I just -- I just want
`13 to ask for the same words for my -- for my briefs. If
`14 they're going to get another 500, do we get another 500
`15 words?
`16 JUDGE PAULRAJ: And you want to address
`17 whatever response that -- that they may have in terms of
`18 your incorporation-by-reference argument; is that right?
`19 MR. MORTON: Correct, Your Honor.
`20 JUDGE PAULRAJ: And where do we have the
`21 page limit -- or word limits right now for the remaining
`22 briefs on those issues?
`23 MR. MORTON: 2,800 words each, Your Honor.
`24 JUDGE PAULRAJ: All right. That's fine.
`25 We'll give 500 words to both sides to make everyone on
`
`1 deposition transcripts that they put in.
`2 Additionally and unusually, among this new
`3 evidence is a 100-page declaration from a brand-new
`4 expert. You know, with their opening petition, they
`5 submitted declarations from two -- two of them - expert
`6 declarations - one from a medical doctor and one from a
`7 purported engineering expert.
`8 Now, in their reply brief, they seem to
`9 have jettisoned -- they haven't told us why, but they
`10 didn't submit anything from that first engineering
`11 expert, but instead have switched to a new engineering
`12 expert who submitted a brand-new 100-page declaration.
`13 That sort of volume in itself shows that we aren't
`14 dealing with simply rebuttal evidence. This is new
`15 evidence.
`16 Now, the Trial Practice Guide also
`17 provides guidance on when it is appropriate to object to
`18 such arguments and evidence via separate motion to strike
`19 versus simply pointing out the impropriety of the new
`20 evidence and arguments in the reply brief. And, you
`21 know, consistent with that guidance, we are willing to
`22 address most of them, to simply point out the instances
`23 of new and proper evidence and argument as part of our
`24 surreply brief.
`25 But there are four instances -- they're
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`1 the ones that we identified in our e-mail to the board --
`2 where the Trial Practice Guide's guidance indicates that
`3 a motion to strike is appropriate. First of all, these
`4 are instances where, as the TPG points out, it is beyond
`5 dispute that the arguments in evidence are new and
`6 improper.
`7 I don't -- I don't think I want to take
`8 the time, unless the board's interested, to go through
`9 all four of the issues that we decided. But just to give
`10 an example, three of the IPRs at issue are -- have
`11 grounds of obviousness based on the Kontos reference.
`12 And basically in their petition, petitioner said, "Well,
`13 it would have been obvious to make this one change to
`14 Kontos, and that then meets all the limitations of your
`15 claims."
`16 And we pointed out in response that, well,
`17 when it would be obvious to make that change, and there's
`18 problems and reasons why you wouldn't do that; but, also,
`19 even if you did that, you wouldn't have many of the
`20 limitations of the claim. So then they come back and
`21 reply and say, "Wait a minute. It wouldn't have been
`22 obvious to make one change to Kontos. It would have been
`23 obvious to make five changes to Kontos." They've totally
`24 changed their invalidity theory.
`25 As just a second example, an important
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`Page 24
`1 Practice Guide, is because of the potential prejudice to
`2 patent owner if this issue isn't resolved now. You know,
`3 first of all, of course, we are subject to word limits as
`4 well in our upcoming surreply briefs, and we shouldn't
`5 have to spend words dealing with improper arguments being
`6 raised too late in the case.
`7 And, secondly, of course, there's the
`8 issue of evidence. We had no reason, for example, to
`9 have our expert explain why it wouldn't have been obvious
`10 to make five changes to the Kontos reference, because
`11 they hadn't argued that it would have been obvious to
`12 make five changes. So if we're really going to deal with
`13 these on the merits, we would an opportunity to submit
`14 additional evidence.
`15 So that's what we're seeking leave of the
`16 board to do, to file a motion to strike, which we think
`17 is the proper relief, or alternatively, which given the
`18 complexity of this case and all that's already going on,
`19 but alternatively we would ask for the right to submit
`20 additional responsive evidence.
`21 And the other thing that we would ask of
`22 the -- of Your Honors today is that this be set up on a
`23 very quick briefing schedule, and that Your Honors
`24 hopefully resolve it quickly. Because, you know, we do
`25 need guidance on these issues before we file our surreply
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`Page 23
`1 issue in many -- most of the petitions is their argument
`2 that it would have been obvious to take this collar
`3 structure from the Ressemann reference and incorporate it
`4 into other pieces of prior art to create what is called
`5 out in many of the claims as a side opening having at
`6 least two incline portions, or other similar claim
`7 language.
`8 But what we pointed out in our response --
`9 and in fact their experts agreed -- that one of the
`10 things that they were calling an incline portion in the
`11 actual device isn't part of the opening at all. It's --
`12 it's buried underneath multiple different components, and
`13 just serves no function whatsoever in the actual
`14 Ressemann reference. And, again, because their experts
`15 have admitted it, they don't really try to defend that
`16 point in their reply.
`17 Instead they come back and say, well, wait
`18 a minute. Ressemann actually has three inclined
`19 portions. There's this different region of the Ressemann
`20 collar that we think is not what's important and
`21 relevant, and that's why your claims are invalid. This
`22 is the sort of clear changing of positions that are
`23 prohibited in reply brief.
`24 And the other reason that the -- a motion
`25 to strike is appropriate here, as indicated in the Trial
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`Page 25
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`1 briefs at the end of this month.
`2 In fact, we frankly need time -- you know,
`3 we need at least a week before those papers are filed,
`4 especially if the relief that would be granted would be
`5 we need to -- to pre -- you know, prepare rebuttal
`6 evidence to put on those topics.
`7 So we'd ask for leave to file the motion
`8 to strike, alternatively submit new evidence, and that it
`9 be set up on a very short briefing schedule.
`10 Thank you, Your Honor.
`11 JUDGE PAULRAJ: Thank you,
`12 Mr. Vandenburgh.
`13 Just to clarify, I think perhaps we
`14 weren't aware of your alternative request for submitting
`15 new evidence as part of a surreply.
`16 Was that discussed as part of the
`17 meet-and-confer process with the other side?
`18 MR. VANDENBURGH: Your Honor, I have to
`19 apologize. I don't believe it was.
`20 It's,