`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RIMFROST AS
`Petitioner,
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`v.
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`AKER BIOMARINE ANTARCTIC AS
`Patent Owner.
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`Case IPR2020-01533
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`U.S Patent No. 9,816,046
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`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2020-01533
`U.S. Patent No. 9,816,046
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`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .......................................................................... ii
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`I.
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`II.
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`Statement of Relief Requested .............................................................. 1
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`Summary of the Proceedings ................................................................. 2
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`III. Argument ............................................................................................... 6
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`IV. Conclusion ........................................................................................... 14
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`CERTIFICATE OF SERVICE ......................................................................... i
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`TABLE OF AUTHORITIES
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`Cases
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`IPR2020-01533
`U.S. Patent No. 9,816,046
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`Eli Lilly, 902 F.2d 943, 945 (Fed. Cir. 1990)................................................................................ 12
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`Henny Penny Corporation v. Frymaster LLC, 938 F.3d 1324, 1330 (Fed. Cir. 2019)................. 11
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) ....... 8
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`Intelligent Bio-Sys., Inc., 821 F.3d 1359, 1367 (Fed. Cir. 2016) .................................................. 11
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`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1378 (Fed. Cir. 2016) .................................... 13, 14
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`Nuvasive, Inc., 841 F.3d 966, 971 (Fed. Cir. 2016) ...................................................................... 13
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`SAS Institute, Inc. v. Complementsoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016) .............. 13, 14
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`SAS Institute, Inc. v. Iancu, ––– U.S. ––––, 138 S.Ct. 1348, 200 L.Ed.2d 695 (2018) .................. 7
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`Wasica Finance GmbH v. Continental Automotive Systems, Inc. 853 F.3d 1272, 1286-87 (Fed.
`Cir. 2017) .................................................................................................................................. 11
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`Statutes
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`35 U.S.C. §312(a)(3) ....................................................................................................... 7, 8, 11, 13
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`ii
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`Patent Owner Aker Biomarine Antarctic AS (“Aker”) requests review by the
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`IPR2020-01533
`U.S. Patent No. 9,816,046
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`Director of the Board’s finding in its Final Written Decision (Paper 33 (“FWD”))
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`that claims 1-20 (collectively, the “challenged claims”) of U.S. Patent No.
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`9,816,046 (the “ ’046 patent”) are unpatentable. (FWD, 39-40).
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`I.
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`Statement of Relief Requested
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`In the FWD, the Board held the challenged claims were unpatentable as
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`obvious, concluding: claims 1-10 were unpatentable over Breivik II, Yoshitomi,
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`Budziński, Fricke, Bottino II and Sampalis I (Ground 1); claims 11-12 were
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`unpatentable over Breivik II, Yoshitomi, Budziński, Fricke, Bottino II and
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`Randolph (Ground 2); and claims 13-19 were unpatentable over Breivik II,
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`Yoshitomi, Budziński, Fricke, Bottino II, Randolph and Sampalis I (Ground 3).
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`FWD, 39. However, as stated by the Board in Footnote 15: “As noted above, we
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`have considered Petitioner's grounds without relying on Breivik II.” FWD, 39.
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`Thus, the Board actually found the claims obvious over sub-combinations (i.e.,
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`combinations not including Breivik II) of the combinations of references identified
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`in the Petition and Instituted Grounds. In doing so, the Board specifically avoided
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`addressing Aker’s evidence that Breivik II is not prior art due to earlier invention.
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`Aker respectfully submits that the Board erred by basing its decision on
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`Grounds not including Breivik II, when all three of the Instituted Grounds
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`specifically combined and relied on Breivik II. As a result, Aker contends that
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`1
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`Petitioner did not meets its burden of establishing obviousness because Breivik II
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`IPR2020-01533
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`is not prior art, rendering all of the Instituted Grounds insufficient.
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`Aker respectfully requests that the FWD be vacated with respect to
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`unpatentability of the challenged claims and the case remanded to the Board for a
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`determination of whether Breivik II is prior art and decision on whether the
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`challenged claims are patentable over the actual requested and Instituted Grounds
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`that include Breivik II as the lead reference.
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`II.
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`Summary of the Proceedings
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`The ‘046 Patent contains claims to methods of extracting krill oil with
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`specific properties from a krill meal that has been stored from 1 to 36 months.
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`FWD, 6.
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`The Petition (Paper 2, “Pet.”) provided the following chart in a section
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`entitled “Specific Statutory Grounds on which the Challenge is Based (37 C.F.R. §
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`42.104(b)(2)).” Pet., 11.
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`2
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`In Section VII of the Petition, Petitioner stated: “A discussion of Grounds 1-3 for
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`claim invalidation is detailed below.” Pet., 40. Petitioner then presented Grounds
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`1-3 under the following headings:
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` Ground 1: § 103(a) – Breivik II, Yoshitomi, Budziński, Fricke, Bottino II,
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`Sampalis 1 [Claims 1-10] (Emphasis added) Pet., 41;
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` Ground 2: § 103(a) – Breivik II, Yoshitomi, Budziński, Fricke, Bottino II,
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`and Randolph [Claims 11-12] (Emphasis added) Pet., 57;
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` Ground 3: § 103(a) – Breivik II, Yoshitomi, Budziński, Fricke, Bottino II,
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`Randolph and Sampalis I [Claims 13-19] (Emphasis added) Pet., 60.
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`In its discussion of Claim 1 under Ground 1, Petitioner concluded:
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`“Accordingly, the method of producing krill oil as recited in claim 1 would have
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`been obvious in view of Breivik II, Yoshitomi, Budziński, Fricke and Bottino II.”
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`(Emphasis added) Pet., 46. In its discussion of independent Claim 13 under Ground
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`3, Petitioner concluded: “Based on the foregoing, the method of producing krill oil
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`as recited in claim 13 would have been obvious in view of Breivik II, Yoshitomi,
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`Budziński, Fricke, Bottino II and Randolph.” (Emphasis added) Pet., 64.
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`With respect to motivation to combine under Ground 1, Petitioner
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`concluded:
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`Accordingly, a POSITA would have possessed reasons and motivation to
`combine the processing, storage and extraction steps disclosed in Breivik
`II, Yoshitomi Budziński and Fricke, and would have been motivated to look
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`3
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`to references such as Bottino II to ascertain the other components present in
`krill oil extracts and their respective amounts, and would have administered
`krill oil extracts in an encapsulated dosage form as described in Sampalis I.
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`(Emphasis added) Pet. 56-57.
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`With respect to motivation to combine under Ground 3, Petitioner stated:
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`A POSITA would have possessed reasons and the motivation to combine
`the teachings of Breivik II, Yoshitomi, Budziński, Fricke, Bottino II,
`Randolph and Sampalis I, and would have had a reasonable expectation of
`producing krill oil as recited in claims 13-19.
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`(Emphasis added) Pet. 66.
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`The Board instituted the Inter Partes Review. (Institution Decision, Paper 6,
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`“ID”). In the ID, the Board reproduced the table from the Petition including the
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`Instituted Grounds in a section entitled “Challenged Claims and Asserted
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`Grounds” :
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`ID, 6. With regard to Ground 1, the Board stated: “Petitioner contends that the
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`subject matter of claims 1–10 would have been obvious over the combined
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`disclosures of Breivik II, Yoshitomi, Budziński, Fricke, Bottino II, and Sampalis
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`I.” (Emphasis added) ID, 8. With regard to Ground 2, the Board stated: “Petitioner
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`4
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`contends the subject matter of claims 11 and 12 would have been obvious over the
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`combined disclosures of Breivik II, Yoshitomi, Budziński, Fricke, Bottino II, and
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`Randolph.” (Emphasis added) ID, 13. With regard to Ground 3, the Board
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`specifically referred to the combined disclosures of “Breivik II, Yoshitomi,
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`Budziński, Fricke, Bottino II, Randolph, and Sampalis I.” (Emphasis added) ID,
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`18.
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`Relying on the clear statements in the ID that the three Instituted Grounds
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`were directed to combinations requiring Breivik II as the lead reference with the
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`other listed references, Aker responded, in part, by presenting evidence of
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`antedation of Breivik II by the inventors. (Patent Owner Response, Paper 9, “PO
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`Resp.,” 17-38). Specifically, Aker argued that Breivik II was not prior art and that
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`“[s]ince Ground 1 relies on Breivik II as the lead reference both for specific claim
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`elements as well as motivation to combine the references, Ground 1 must be
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`denied. As further discussed below, Grounds 2 and 3, which also rely on Breivik
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`II, should be denied as well.”
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`Petitioner filed a Reply. (Paper 14, “Reply”). In contrast to the Reply filed in
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`IPR2020-1532, Petitioner did not argue that antedation of Breivik II was
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`immaterial because one or more alternative references were provided for every
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`limitation that Breivik II is cited for. Cf. IPR2020-01532 Paper 14, 7 and
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`IPR2020-1533 Paper 14, 7. In fact, in the discussion of obviousness in its Reply,
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`5
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`Petitioner never once indicated that the combined references in each Ground do not
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`include Breivik II and instead cited to Breivik II multiple times. See Reply, 18-30.
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`The Board ultimately found the claims obvious over a sub-combination of
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`references not including Breivik II. FWD, 38-39. In so doing, the Board did not
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`reach the issue of whether Breivik II was antedated by Aker’s evidence of earlier
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`invention. FWD, 11. As stated by the Board:
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`For the reasons set forth below, we determine that Petitioner has shown by a
`preponderance of the evidence that challenged claims 1-19 would have been
`obvious over Yoshitomi, Budziński, Fricke, Bottino II, and Sampalis I
`and/or Randolph, when considered in light of the undisputed knowledge of
`one of ordinary skill in the art. Thus, we need not decide whether Patent
`Owner's evidence of conception and reduction to practice is sufficient to
`antedate Breivik II with respect to these claims, as we do not rely on it as a
`prior art reference in this proceeding.
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`FWD, 11. The Board provided no other explanation as to why it ignored the fact
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`that the Grounds as set forth in the Petition as well as Instituted Grounds all
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`combined Breivik II with the other listed references and did not present Breivik II
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`as an alternative lead reference.
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`III. Argument
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`Aker respectfully submits that the Board committed error by finding the
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`claims unpatentable over a combination of references that was different from the
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`Grounds stated in the Petition and Institution Decision. The Board
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`misapprehended that binding precedent precludes the Board from adopting in a
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`6
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`Final Written Decision obviousness theories not proposed by Petitioner. Indeed,
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`there is clear legal error in view of 35 U.S.C. §312(a)(3), the Administration
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`Procedure Act, Federal Circuit precedent, and the PTAB’s Trial Practice Guide.
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`The Board’s holding that it could rely on a sub-combination of references (not
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`including Breivik II) rather than the actual Instituted Grounds (all of which
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`included Breivik II) is not supported in the FWD by reference to any statute or
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`precedent for inter partes review proceedings. As explained below, the Board’s
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`actions directly contradict 35 U.S.C. §312(a)(3). If Aker had been provided notice
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`that specific sub-combinations in this IPR, it could have used its limited pages and
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`its expert to specifically address why those sub-combinations fail. Further, it would
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`not be possible for Aker to address all possible sub-combinations. A holding that
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`all possible sub-combinations of an Instituted Ground are in play in an instituted
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`IPR would likely lead to gaming by future petitioners.
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`The Supreme Court has explained that “in establishing inter partes review,
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`Congress set forth “a process in which it’s the petitioner, not the Director, who
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`gets to define the contours of the proceeding.” SAS Institute, Inc. v. Iancu, –––
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`U.S. ––––, 138 S.Ct. 1348, 200 L.Ed.2d 695 (2018). The Court held that if the
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`Director institutes review proceedings, the Board’s review must proceed “in
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`accordance with or in conformance to the petition,” (Id. at 1356) including “ ‘each
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`7
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`claim challenged’ and ‘the grounds on which the challenge to each claim is based.’
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`” Id. at 1355 (quoting 35 U.S.C. §312(a)(3)).
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`The Court stated: “Nothing suggests the Director enjoys a license to depart
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`from the petition and institute a different inter partes review of his own design.”
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`Id. at 1356 (emphasis in original). Thus the Court emphasized that “the petitioner’s
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`petition, not the Director’s discretion, is supposed to guide the life of the
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`litigation,” and that “the petitioner’s contentions, not the Director’s discretion,
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`define the scope of the litigation all the way from institution through to
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`conclusion.” Id. at 1356-57. Indeed, the petitioner is the “master of its
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`complaint.” Id. at 1355.
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`As further explained by the Federal Circuit: “[i]t is of the utmost importance
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`that petitioners in the IPR proceedings adhere to the requirement that the initial
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`petition identify ‘with particularity’ the ‘evidence that supports the grounds for the
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`challenge to each claim.’ ” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
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`821 F.3d 1359, 1369 (Fed. Cir. 2016) (internally quoting 35 U.S.C. § 312(a)(3)).
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`Aker respectfully submits that in the instant case the Board has departed
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`from the Petition (and ID) and rendered a decision on a combination of references
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`that was not one of the Grounds on which inter partes review was requested or
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`instituted. As highlighted above, the Petition presented three grounds, each of
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`which listed Breivik II as the lead reference. As further discussed above, in both
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`8
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`the statement of the statutory grounds (Pet., 10-11) and discussion of the three
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`grounds (Pet., 40-68), Petitioner consistently used the conjunction “and” when
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`referring to the combination of references in all three Grounds as well as when
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`arguing motivation to combine and reasonable expectation of success. Petitioner
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`did use the conjunction “or” in its claim charts with respect to what references the
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`claim elements are allegedly found in, but there is no indication in the claim charts
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`that Petitioner intended to rely on a sub-combination of the six references
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`specifically cited in Grounds 1 and 2 and the seven references cited in Ground 3,
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`all three of which required Breivik II as the lead reference.
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`When deciding to institute, the Board appeared to take Petitioner at its word
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`that the Grounds advanced in the Petition included Breivik II, stating:
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` “Petitioner contends that the subject matter of claims 1–10 would have been
`obvious over the combined disclosures of Breivik II, Yoshitomi, Budziński,
`Fricke, Bottino II, and Sampalis I.” (Emphasis added) ID, 8.
` “Petitioner contends the subject matter of claims 11 and 12 would have been
`obvious over the combined disclosures of Breivik II, Yoshitomi, Budziński,
`Fricke, Bottino II, and Randolph.” (Emphasis added) ID, 13.
` “Petitioner demonstrates a reasonable likelihood that the subject matter of
`claims 14–19 would have been obvious over the combined disclosures of
`Breivik II, Yoshitomi, Budziński, Fricke, Bottino II, Randolph, and
`Sampalis I.” (Emphasis added) ID, 18.
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`However, instead of rendering a decision based on the Grounds requested by
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`Petitioner and instituted in the ID, the Board held the claims unpatentable over
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`sub-combinations of references that did not include Breivik II. For example, the
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`9
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`FWD restates Instituted Ground 1 as follows: “Petitioner contends that the subject
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`matter of claims 1-10 would have been obvious over the combined disclosures of
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`Yoshitomi, Budziński, Fricke, Bottino II, and Sampalis I.” FWD, 12. By deleting
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`Breivik II from the Instituted Grounds, the Board introduced a new theory of
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`obviousness that did not rely on Breivik II. This was done for Grounds 2 and 3 as
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`well. As another example, neither the Petition nor the ID explained why a person
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`of ordinary skill in the art would specifically start with and modify either
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`Yoshitomi, Fricke or Budziński (in the absence of Breivik II) in view of Bottino II
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`and Randolph to arrive at the claimed invention. As another example, Petitioner
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`did not present the Statutory Statement of Grounds in the Petition for Ground 1 as
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`Breivik II or Budziński or Fricke or Yoshitomi in combination with Bottino II or
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`Sampalis and instead chose to define the grounds as Breivik II, Yoshitomi,
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`Budziński, Fricke, Bottino II and Sampalis I. See Pet., 46, 56-57.
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`Since Petitioner is the “master of its complaint” as described by the Supreme
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`Court in SAS, it could have presented Grounds that did not specifically rely on
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`Breivik II or have phrased its Grounds in a way that provided notice that it was
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`relying or intending to rely on the references in the alternative. The Grounds listed
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`in the Petition and instituted by the Board failed to do this.
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`The Federal Circuit has held that “shifting arguments” to a new theory of
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`obviousness absent from the petition “is foreclosed by statute, our precedent, and
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`10
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`Board guidelines.” Wasica Finance GmbH v. Continental Automotive Systems, Inc.
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`853 F.3d 1272, 1286-87 (Fed. Cir. 2017)(citing 35 U.S.C. §312(a)(3) as requiring
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`petitions to identify “with particularity . . . the grounds on which the challenge to
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`each claim is based.”). Aker respectfully submits that by removing Breivik II from
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`the Instituted Grounds (and the statement of Statutory Grounds requested in the
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`Petition), the Board introduced a new theory of obviousness in contravention of the
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`statutes and precedent discussed above. This is clear error.
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`Additionally, the Federal Circuit has held: “Because of the expedited nature
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`of IPR proceedings, ‘[i]t is of the utmost importance that petitioners in the IPR
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`proceedings adhere to the requirement that the initial petition identify ‘with
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`particularity’ the ‘evidence that supports the grounds for the challenge to each
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`claim.’ ” Henny Penny Corporation v. Frymaster LLC, 938 F.3d 1324, 1330 (Fed.
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`Cir. 2019)(citing Intelligent Bio-Sys., Inc., 821 F.3d 1359, 1367 (Fed. Cir. 2016).
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`Thus, it was reasonable that Aker relied on the statements in the Petition and ID
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`that identified the Instituted Grounds as including Breivik II. Indeed, if the Board
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`can depart from the Instituted Grounds as stated in the Institution Decision, then all
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`possible sub-combinations of references could be applied - numbering 720
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`separate possible combinations of 6 references at the low end in Grounds 1 and 2
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`and 5040 possible combinations of 7 references at the low end in Ground 3.
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`11
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`Because the proceeding is expedited, Aker could not reasonably be expected
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`to address all of the possible sub-combinations of references when the Petition and
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`Instituted Grounds listed in the ID did not include or refer those sub-combinations.
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`Instead, Aker relied on the Instituted Grounds as stated and used its limited time
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`and pages in its Response to remove Breivik II as a reference. Moreover, because
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`the Board pivoted from the Instituted Grounds to a different theory of obviousness
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`based on the sub-combinations of references not including Breivik II, Aker had no
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`opportunity to present expert testimony that addressed the specific sub-
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`combinations of references and make specific arguments as to why the sub-
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`combinations failed. It is well-established case law that once a prima facie case of
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`obviousness is established and evidence is submitted in rebuttal, all evidence must
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`be considered anew. In re Eli Lilly, 902 F.2d 943, 945 (Fed. Cir. 1990). The
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`expedited nature of IPR proceedings does not allow the decision maker (or
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`petitioner) to start over at some time after the institution decision. See, e.g., 2019
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`Consolidated Trail Practice Guide, 74 (prohibiting parties from submitting
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`evidence for a prima facie showing of obviousness in a reply).
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`Holding that the Board may rely on a sub-combination of multiple cited
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`references when the Petition and ID unambiguously indicate that the Grounds
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`include all of the cited references would invite petitioners to state statutory
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`grounds as including a list of “possible” references, wait for the patent owner’s
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`12
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`response, and then devise a sub-combination of references in reply to the
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`petitioner’s argument. This scenario is in contravention of 35 U.S.C. §312(a)(3)
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`and should not be the policy of the Board. This is especially true where, as in this
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`case, the Petitioner made no indication in its Reply that it was relying on a
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`combination of references not including Breivik II. See Reply, 18-30.
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`Finally, the Board’s adoption of an unpatentability theory not asserted by
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`Petitioner violates the Administrative Procedure Act (“APA”). Under the APA an
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`“agency must ‘timely inform[ ]’ the patent owner of ‘the matters of fact and law
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`asserted,’” as well as provide patent owner with an opportunity to respond after
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`notice is provided. In re Nuvasive, Inc., 841 F.3d 966, 971 (Fed. Cir. 2016)
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`(quoting 5 U.S.C. § 554). This notice requirement of the APA is, in part, intended
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`to prevent a party or the PTAB from “chang[ing] theories in midstream.” SAS
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`Institute, Inc. v. Complementsoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016). This
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`notice requirement precludes the PTAB from allowing or asserting new theories to
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`which a patent owner has no opportunity to respond. In re Magnum Oil Tools Int’l,
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`Ltd., 829 F.3d 1364, 1378 (Fed. Cir. 2016).
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`The Board’s reliance for the first time, in the FWD, on the sub-combinations
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`of Yoshitomi, Budziński, Fricke, Bottino II, and Sampalis I (new Ground 1),
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`Yoshitomi, Budziński, Fricke, Bottino II, and Randolph (new Ground 2), and
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`Yoshitomi, Budziński, Fricke, Bottino II, Randolph, and Sampalis I (new Ground
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`13
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`3) to replace the Instituted Grounds that all included Breivik II violates the APA.
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`SAS, 825 F.3d at 1351-52 (vacating-in-part decision where the Board “change[d]
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`theories in midstream” and applied a claim interpretation neither party advanced);
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`Magnum Oil, 829 F.3d at 1380-81 (“[W]e find no support for the PTO’s position
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`that the Board is free to adopt arguments on behalf of petitioners that could have
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`been, but were not, raised by the petitioner during an IPR.”). It is respectfully
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`submitted that the Board improperly amended the theory presented by Petitioner.
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`In summary, Aker respectfully submits that the evidence of record
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`demonstrates that the Board made clear errors in the FWD. The Board found the
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`claims unpatentable over a sub-combination of references not including Breivik II,
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`when the Petition and Institution Decision unambiguously stated that the Grounds
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`included Breivik II.
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`IV. Conclusion
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`For the foregoing reasons, Aker respectfully requests that the FWD be
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`vacated with respect to claims 1-19 of the ’046 patent and remanded to the Board
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`for a determination of whether Breivik II is prior art and decision on whether the
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`challenged claims are patentable over the Instituted Grounds that necessarily
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`include Breivik II.
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`Dated: May 5, 2022 Respectfully submitted,
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` /David A. Casimir /
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`Reg. No. 42,395
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`IPR2020-01533
`U.S. Patent No. 9,816,046
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on this 5th day of May 2022, a copy of
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`IPR2020-01533
`U.S. Patent No. 9,816,046
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`the foregoing Patent Owner’s Request for Director Review was served in its
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`entirety electronically (as consented to by Petitioner) to the attorneys of record as
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`follows:
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`James F. Harrington
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`Reg. No. 44,741
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`Hoffmann & Baron, LLP
`jfhdocket@hbiplaw.com
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`Ronald J. Baron
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`Reg. No. 29,281
`Hoffman & Baron, LLP
`rjbdocket@hbiplaw.com
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`046ipr@hbiplaw.com
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`Michael I. Chakansky
`Reg. No. 31,600
`Hoffman & Baron, LLP
`micdocket@hbiplaw.com
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`John T. Gallagher
`Reg. No. 35,516
`Hoffman & Baron, LLP
`jtgdocket@hbiplaw.com
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`By: /David A. Casimir/
`David A. Casimir, Ph.D.
`Registration No. 42,395
`Counsel for Patent Owner
`CASIMIR JONES, S.C.
`2275 Deming Way
`Suite 310
`Middleton, Wisconsin 53562
`(608) 662-1277
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