Trials@uspto.gov
`571-272-7822
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` Paper 66
`Entered: June 15, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,
`Petitioners,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`____________
`
`IPR2021-00375
`Patent 8,265,096 B2
`____________
`
`Record of Oral Hearing
`Held Virtually: Thursday, May 12, 2022
`____________
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
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`571-272-7822
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`
`
`
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` Paper 66
`Entered: June 15, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,
`Petitioners,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`____________
`
`IPR2021-00375
`Patent 8,265,096 B2
`____________
`
`Record of Oral Hearing
`Held Virtually: Thursday, May 12, 2022
`____________
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
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`IPR2021-00375
`Patent 8,265,096 B2
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`A P P E A R A N C E S
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL J. FORBES, ESQUIRE
`JONATHAN I. DETRIXHE, ESQUIRE
`PETER J. CHASSMAN, ESQUIRE
`REED SMITH LLP
`811 Main Street
`Suite 1700
`Houston, Texas 77002
`(713) 469-3800
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JAY P. KESAN, ESQUIRE
`CECIL E. KEY, ESQUIRE
`HENNING SCHMIDT, ESQUIRE
`DIMUROGINSBERG, PC
`1101 King Street
`Suite 610
`Alexandria, Virginia 22314
`(703) 684-4333
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, May 12,
`2022, commencing at 9:03 a.m. EST, by video/by telephone.
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`IPR2021-00375
`Patent 8,265,096 B2
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`
` P R O C E E D I N G S
` JUDGE DROESCH: Good morning, my name is Judge Droesch, I am
`joined by my colleagues Judge Boudreau and Judge Parvis. We are here for
`the oral arguments for IPR2021-00375, IPR2021-00377, and IPR2021-
`00582.
` We're going to hear the oral argument for
`IPR2021-00375 first. We'll follow up with a short break,
`then, we'll hear the argument for IPR2021-00377, followed by
`a short break, and then, the last -- the last argument for
`IPR2021-00582.
` I mentioned at this point that we'll take at
`least five minutes' break between the hearings, and then,
`if we're running ahead on time, we may be able to go a
`little bit longer break.
` So we can begin the hearing for IPR2021-00375.
`Just a few reminders before we begin. Per the order,
`Petitioner is allotted 45 minutes for its presentation.
`Petitioner will make its presentation first, and may
`reserve some of its time for rebuttal, but that time may
`not exceed more than 22 minutes. Following Petitioner's
`presentation, Patent Owner will make its presentation, and
`also will have 45 minutes. And the time for rebuttal may
`not exceed 22 minutes.
` And then, a few more quick reminders. To aid in
`the preparation of the hearing transcript, please try to
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`Patent 8,265,096 B2
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`identify yourself before speaking, and to identify the
`demonstrative slides by their slide number and any
`exhibits by the exhibit number, as well as the papers.
` Can counsel for Petitioner please make their
`appearances.
` MR. FORBES: Good morning, Your Honor. Michael
`Forbes of Reed Smith in Houston on behalf of Petitioner.
` JUDGE DROESCH: Okay. Thank you.
` Counsel for Patent Owner, can you please make
`your appearance.
` I'm not sure if somebody is muted or not.
` MR. KESAN: Sorry about that.
` Yes, Your Honor. This is Jay Kesan for the
`Patent Owner from DiMuroGinsberg.
` JUDGE DROESCH: Okay. Thank you.
` All right. Counsel for Petitioner, please begin
`when you're ready and let us know if you'd like to reserve
`some time for rebuttal.
` MR. FORBES: Thank you, Your Honor. We would
`like to reserve eight minutes for rebuttal, and I would
`like to share my screen with the demonstratives. Is that
`acceptable?
` JUDGE DROESCH: That's fine.
` MR. FORBES: Thank you.
` MR. KESAN: And Your Honor, I would also like to
`reserve ten minutes.
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` JUDGE DROESCH: I'm sorry, counsel for Patent
`Owner, did you say eight minutes or ten minutes?
` MR. KESAN: Ten. I would like to reserve ten
`minutes for rebuttal and --
` JUDGE DROESCH: Okay. Great. I just wanted to
`make sure I understood you correctly.
` MR. KESAN: Thank you.
` JUDGE DROESCH: All right. Thank you.
` MR. FORBES: If everyone can see that on the
`screen, then, I'll proceed.
` JUDGE DROESCH: Okay. Yes, I can see it, so I
`believe everybody else can see it, so go ahead when you're
`ready.
` MR. FORBES: Thank you, Your Honor.
` Good morning, Your Honors. Michael Forbes of
`Reed Smith in Houston, on behalf of Petitioner.
` Jumping to slide 2 of Petitioner's
`demonstratives, which has been filed as Ex. 1040.
` The issues we intend to address today are whether
`Talukdar is prior art, which it applies to both claims in
`the Petition as well as to the motions to amend.
` Ground 1, whether Claims 1 through 4, 6 and 7 are
`invalid over Talukdar and Li. Which on the preliminary
`record, the Board found was more likely than not.
` Ground 2, whether Claim 8 is invalid over
`Talukdar and Nystrom, which on the preliminary record the
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`Patent 8,265,096 B2
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`Board did not find a motivation to combine those
`references.
` My colleague, Jonathan Detrixhe, will briefly
`address the procedural reasons why Patent Owner's Motions
`to Amend should be denied. And then, I will return to
`briefly address the substantive reasons why those motions
`should be denied.
` And before I jump in with the rest of the slides,
`I would like to give a brief introduction on the '096
`Patent just because there are three patents and three
`proceedings here.
` The '096 Patent is the one that claims
`constructing a frame structure that includes generating
`symbols for both a first and second communication system,
`and combining those symbols with at least one non-data
`structure into a combined frame. And that's described in
`the Petition at document Paper 1 at 15.
` In challenged Claim 1 and its dependent claims,
`the second communication system has symbols that have a
`shorter symbol period than the first communication system.
` And in challenged Claim 8, the second
`communication system has a higher pilot density in the
`time dimension than the first system.
` Slide 3. Again, before I just dive into the
`slide, a brief description Talukdar for the Petition at
`page 23. Talukdar discloses a hybrid frame or H-frame
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`Patent 8,265,096 B2
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`that consists of symbols from an 802.16(e) communication
`system, and symbols from an 802.16(m) system. Talukdar
`also teaches in paragraphs 23 and 64 that the subcarrier
`spacing symbol duration and pilot density for the 16(m)
`symbols can be different than the 16(e) symbols. So
`obviously, whether Talukdar's prior art is important.
` In its Preliminary Response, and again, in the
`Response, Patent Owner has asserted that Talukdar is not
`prior art because it believes that the '096 Patent is
`entitled to the priority date of a provisional application
`that I'll call it the '798 provisional, Ex. 1009. Patent
`Owner has not and cannot meet its burden to show that the
`challenged patent is entitled to that priority date.
` As shown on the screen in the Board's preliminary
`-- excuse me, in the Board's Institution Decision, the
`'798 application does not provide written description
`support for at least the two elements shown on the screen
`wherein each symbol in the second communication system has
`a shorter symbol period than that in the first
`communication system which applies to ground 1, claims 1
`through 4 and 6 and 7, or wherein the second communication
`system has pilot symbols that are right denser than those
`in the first communication system. Which applies to
`ground 2 for Claim 8.
` Slide 4. The Institution Decision lays out the
`law on written description at pages 25 and 26. In order
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`IPR2021-00375
`Patent 8,265,096 B2
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`to Claim the benefit of an earlier application, Patent
`Owner has the burden to show possession as shown in the
`disclosure that is based on the objective inquiry into the
`four corners of the specification. And the specification
`must disclose this invention as a whole.
` Now, as I'm sure you'll hear more when Patent
`Owner gets to speak, it is absolutely true that the four
`corners of the specification are read from the perspective
`of one of skill in the art. However, as we describe in
`detail at Paper -- in Paper 40 at page 5, a person of
`skill in the art cannot be used to gap-fill holes in the
`disclosure.
` The Ariad decision from the Federal Circuit
`confirmed that it is not enough that a person of skill in
`the art would know each element of the invention, and it
`is not enough that the disclosure would render the
`invention obvious.
` Slide 5. The '798 provisional, which is Ex.
`1009, as I mentioned before, is a nine slide presentation.
`In attempt to show written description support, Patent
`Owner relies on an original declaration and the
`supplemental declaration from its expert, Dr. Vojcic. And
`as you can see at the top of the demonstrative slide 5,
`Dr. Vojcic's fundamental opinion is that a person of skill
`in the art would have known all elements of the challenged
`claims. And as we just discussed, Ariad confirmed that
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`IPR2021-00375
`Patent 8,265,096 B2
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`that is not enough. Dr. Vojcic never opines that the --
`excuse me, that the claims are found within the four
`corners of the disclosure. And as we just discussed, even
`-- sorry, even having access to the Board's description of
`the correct standard in its Institution Decision, the
`supplemental declaration does not apply a different
`standard.
` As we discussed in some detail at 5 and 6 on
`Paper 40, Dr. Vojcic's opinion on this issue should be
`afforded no weight because he applied the wrong standard.
`Even if the Board does give some weight to Dr. Vojcic's
`declaration on this point, they both depend on the
`equation shown on the left side of slide 5. For T sub s
`symbol period, and T sub sL the legacy symbol period.
` Now, these equations do not appear in any part of
`the '798 provisional. In the Institution Decision, the
`Board correctly pointed out that Dr. Vojcic didn't provide
`any underlying factual basis to find those equations
`within the four corners of the disclosure.
` Now, in response, Dr. Vojcic's supplemental
`declaration added about 20 paragraphs of description
`involving historical development equations, and examples
`applying those equations to a different standard at
`802.11. What it does not include and cannot include is
`any evidence that those equations are part of the four
`corners of the '798 patent -- excuse me, '798 provisional
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`Patent 8,265,096 B2
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`disclosure. Both declarations require gap filling,
`limitation from the knowledge of a person skilled in the
`art. And for that reason alone, Claim 1 is not entitled
`to an earlier priority date
` Now, even if those equations were part of the
`disclosure, and again, they're not, the Board also found
`that Dr. Vojcic did not provide a factual basis for
`selecting values of the variables, N, K, NL and KL. And
`now, while Dr. Vojcic addresses this issue in his
`supplemental declaration, as we describe in our Reply, Dr.
`Vojcic's conclusion relies on circular reasoning. In
`other words, a person of ordinary skill could choose
`values of those variables that would result in shorter
`symbol period, but during deposition, Dr. Vojcic also
`confirmed that a person of ordinary skill could choose
`values of those variables that would result in a longer
`symbol period, as we discussed at 9 and 10 of our Reply.
`So even if Patent Owner was allowed to import this
`limitation from a person of ordinary skill's knowledge, it
`failed to do so.
` Slide 6. Briefly, for Claim 8, Dr. Vojcic
`applied -- opines that the increased pilot density
`limitation is a natural result of the shorter symbol
`period limitation from Claim 1. As I'll discuss, probably
`in some detail later, Petitioner agrees with that. But
`Claim 8 still lacks written description support for the
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`same reason as Claim 1. In other words, Petitioner agrees
`that increased pilot density as -- as construed is a
`natural result of shorter symbol period, but the '798 does
`not disclose shorter symbol period without gap filling
`from a person of skill.
` JUDGE DROESCH: I have a quick question for you,
`Counsel. This is Judge Droesch.
` My question is doesn't the statement of it being
`a natural result, the pilot density being a natural result
`of the shorter symbol period, is that assuming that the
`number pilot symbols is the same and does not decrease
`or increase?
` MR. FORBES: It does -- it's not depending on the
`number of pilot symbols. There's basically three
`variables that are at issue. You have basically the
`symbol duration, the total bandwidth of the system, and
`the sub -- and the number of subcarriers. And you can --
`you can calculate those in numerous ways, but those are
`not independent variables. If you want to reduce the --
`you want to reduce the period, you've got to increase the
`subchannel spacing, for example. But fundamentally, that
`what -- what I think what Petitioner and Patent Owner have
`agreed is that in order to meet the limitation of showing
`-- showing the shorter symbol period, that that would
`naturally result in more -- more pilot symbols per unit
`time, unless there was some other change which is not
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`Patent 8,265,096 B2
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`taught by any of these reference. I mean, could -- could
`you also reduce the total system frequency? Yes, you
`could, but that is not taught by any of these references.
` JUDGE DROESCH: Okay. Thank you, Counsel.
` MR. FORBES: Turning to slide 7, which Ground 1
`which relates to Claims 1 through 4, and 6 and 7. In the
`Institution Decision, the Board considered Patent Owner's
`Preliminary Response and rejected it. Patent Owner's
`Response is word-for-word identical to its Preliminary
`Response. And so then, other than the dispute about
`whether Talukdar is prior art, the identical record
`applies, and the Board should confirm its original
`decision and find these claims invalid.
` For both the elements disputed by Patent Owner,
`the Board correctly noted that Petitioner relies on a
`combination of Talukdar and Li. Whereas, Patent Owner
`only addresses the teachings of Li. So slide 8 for the
`first challenged limitation, and in more detail on slide
`9. Talukdar describes using an H-frame structure for
`802.16(e) and .16(m) systems. And as we said before,
`Talukdar also expressly teaches that the subchannel
`structure to the 16(m) system can be different than 16(e)
`system. Thus, the Board correctly determined that a
`person of skill in the art would be motivated to combine
`Talukdar's hybrid frame structure and use the subchannel
`structure taught by Li for the 16(m) symbols.
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`IPR2021-00375
`Patent 8,265,096 B2
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` Slide 10. Ground 2 of the Petition addresses
`Claim 8 of the '096 Patent and asserts that it is invalid
`over the combination of Talukdar and Nystrom. Now, in its
`Institution Decision, the Board was not convinced on
`ground 2, but it was not because there were any elements
`missing from the combination of Talukdar and Nystrom. The
`to the contrary, the Board was not convinced that the
`person of ordinary skill would have been motivated to
`combine Talukdar and Nystrom. As can be seen in the
`following slides of the developed record shows that there
`is indeed a motivation to combine.
` Starting with slide 11. The basis for this
`combination is fundamentally the same as for the Talukdar
`and Li. Talukdar teaches that H-frame structure with both
`16(e) --
` JUDGE PARVIS: Was does --
` MR. FORBES: -- and 16(m) -- I apologize.
` JUDGE PARVIS: I have a question.
` MR. FORBES: Of course, Your Honor.
` JUDGE PARVIS: Was paragraph 3 of Nystrom cited
`in the Petition?
` MR. FORBES: It was -- it was cited in Dr. Roy's
`declaration, which was cited in the Petition, I -- I
`honestly do not recall at the top of my head whether
`paragraph 3 was in the Petition itself. But I know that
`it was in Dr. Vojcic's declaration.
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` JUDGE PARVIS: Thank you.
` MR. FORBES: And -- sorry. So as I was saying,
`this combination is basically the same as for Talukdar and
`Li because Talukdar teaches an H-frame that combines 16(e)
`and 16(m) symbols, and it teaches that the subchannel and
`pilot structure does not need to be the same between those
`two types of symbols. And Dr. Roy discusses this factual
`basis at paragraphs 160 to 164 of his Ex. 1002, which was
`an exhibit to the original Petition and was cited therein.
` The combination of Talukdar and Li involves Li's
`teaching of shorter symbol period into the 16(m) symbols,
`while the combination of Talukdar and Nystrom involves
`Nystrom's teaching of higher pilot density into the 16(m)
`symbols. But fundamentally, it's the same rationale.
` Slide 12. As I mentioned, Talukdar teaches that
`the subchannel and pilot structures can be different for
`16(m) symbols as compared to 16(e) symbols. And Nystrom
`teaches at paragraphs 3 and 42 that a shorter time interval
`between successive pilot data gives better channel
`estimation, in paragraph 3, and in paragraphs 10 -- sorry,
`paragraphs 42 and combined with Fig. 5A, which we'll look
`at next, parts 110A and 110D of Fig. 5A are intended for
`high Doppler, which means higher mobility stations.
` Turning to slide 13, which is an illustrated
`version of Fig. 5A as annotated by Dr. Roy, Dr. Roy points
`out that the regions, 110A and 110D, which as we just saw
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`are assigned to higher mobility stations, each have three
`times the pilot density in the time domain, as compared to
`the bottom half of the figure, regions 110B and 110C. So
`Nystrom teaches using Dop -- triple, in this case, the
`pilot density, for higher mobility stations.
` Slide 14, and Dr. Vojcic agrees. At paragraph 93
`of his declaration, his original declaration, Dr.
`Vojcic states that, A person of ordinary skill in the art
`would understand that a large Doppler spread or
`equivalently high velocity corresponds to high time
`selectivity requiring high pilot density over time.
`That's effectively the same teaching that Pat -- that
`Petitioner is relying upon.
` In slide 15, Dr. Vojcic again confirms by
`annotating the same figure but slightly different than Dr.
`Roy. In this -- in this annotated figure, again, regions
`110A and 110D, which are the half -- the top half of the
`figure, Dr. Vojcic has annotated as high speed, by which
`again he means high mobility. And as you could see from
`those, both of those regions have three times the density
`in the time domain than the corresponding regions, 110B
`and 110C.
` Slide 16. Again, Dr. Vojcic, as quoted by the --
` JUDGE PARVIS: I have another question.
` MR. FORBES: Of course, Your Honor.
` JUDGE PARVIS: This is Judge Parvis.
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` Does Nystrom go as far to say that the -- that
`it's -- why it's beneficial that assigning the resources
`for fast bearing channel or Doppler condition, the dense
`parts of the spectrum, helps with channel estimation? Is
`that anywhere in Nystrom?
` MR. FORBES: It is, Your Honor. And at least in
`the paragraph that is -- that is paragraph 3 shown on
`slide 12 of our slides. I mean, that the Nystrom
`paragraph 3 indicates, For a single channel system, a
`shorter time interval between successive pilot data, which
`is literally the exact same thing as saying more pilot
`symbols per unit time gives a more accurate channel
`estimation. But it also has a downside of increasing the
`transmission rate, which is why you don't want to apply it
`to every station. You only apply it to the higher
`mobility, 802.16(m) in this case, symbols.
` JUDGE PARVIS: And that's only in paragraph 3 of
`Nystrom?
` MR. FORBES: I don't -- I don't know that it's
`ever as expressly stated as that. I think the other way
`that it is stated is as I've shown there in paragraph 42
`where the pilot structures, which are more dense in time.
`And I think unfortunately, the part of the paragraph 42
`that's not shown on this slide discusses how that's
`beneficial for channel estimation. I'm not sure how well
`I could pull it up before the court, but paragraph 42 of
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`Nystrom.
` JUDGE PARVIS: I think it may be on slide 12 part
`of it?
` MR. FORBES: Yes, Your Honor. I think the -- the
`last two words there, channel estimation, I think that
`that -- that sentence above was going to be relevant, but
`I'm trying to see if I can share it or if I can just pull
`it up. I apologize for the technical difficulty, but
`paragraph 42 in both the part that's represented on page
`12 and the other parts, indicate that high Doppler is, you
`know, it is beneficial to use denser pilot symbols for
`those symbols.
` JUDGE PARVIS: Is it enough to cite paragraph 3
`of Nystrom in the expert report with respect to giving
`Patent Owner notice in setting forth all of the analysis
`in the Petition?
` MR. FORBES: Well, I mean, frankly, Your Honor, I
`think that there's a significant discussion at I think
`it's page 60 of the Petition, and in paragraphs 1 -- I
`believe it's 100 through 104 of Dr. Roy's declaration. So
`it's not merely paragraph 3 of Nystrom, but the -- Dr. Roy
`opines in addition to paragraph 3 of Nystrom that it is
`well-known that increasing the channel estimation is
`better for high Doppler channels. And I -- frankly, I
`believe that Dr. Vojcic agreed with that as well. So I
`mean, citing to one single sentence may not be sufficient,
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`IPR2021-00375
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`but in the position in paragraph around page 60, and Dr.
`Roy's declarations, at least paragraph 100 and 104 are,
`you know, enough to preserve that point.
` JUDGE PARVIS: So that's a different theory than
`arguing that Nystrom expressly provides the reasoning to
`combine; is that correct?
` MR. FORBES: So yeah, I think that it's more than
`Talukdar frankly provides the -- the expressed reasoning
`to combine because Talukdar specifically says that the
`pilot structures can be different for the 802.16(m)
`regions. And so that is also expressed within, you know,
`page 60 of the Petition. But I -- I don't -- I'm not sure
`if I'm understanding your question, Your Honor. I hope
`that -- hopefully, that was responsive.
` JUDGE PARVIS: I understand Petitioner's
`position. Thank you.
` MR. FORBES: So returning to slide 16. Again,
`this confirms what I was just saying about Dr. Vojcic
`agrees that the goal of achieving higher speed in
`conjunction with the dual system or hybrid frame structure
`would suggest on its own modifying density of pilots in
`one of the systems as a solution to the problem caused by
`increased Doppler shifting. And that appears in Patent
`Owner's Response, and of course, in our papers as well
`quoting it, but that -- that began with Dr. Vojcic's
`declaration. So really, the experts agree that the idea
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`IPR2021-00375
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`that higher pilot symbols is useful for high Doppler shift
`environment is well-known to one of skill in the art.
` Slide 17. Although the Board was not convinced
`on the preliminary record, you know, I discussed multiple
`things that were not part of the preliminary record,
`including Dr. Vojcic's declaration, and -- and his -- his
`concurrence, frankly, with Dr. Roy's opinion that a person
`of ordinary skill in the art would be motivated to combine
`Talukdar and Nystrom. Because there is no element missing
`from that combination, Claim 8 is invalid over that
`combination.
` Just one last point before I turn it over to
`Jonathan to address the Motions to Amend.
` In its Response, Patent Owner also argues in one
`paragraph that Dr. Roy's declaration should be afforded no
`weight. It does not cite any authority or present any
`testimony to back that up. In its Sur-reply, Patent Owner
`presented for the first time entirely new argument, about
`five pages' worth. To the extent that that's new
`sur-reply argument is considered at all, it is largely a
`semantic argument over whether Dr. Roy wrote his
`declaration. Dr. Roy and Petitioner have been up-front
`from the beginning that this was a so-called copy --
`copycat declaration for joinder purposes that appears in
`both the Petition and the Petition for joinder. Patent
`Owner points to no authority for the basis that a copycat
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`declaration should be disregarded simply because it is a
`copycat declaration.
` With that, Jonathan, and slide 18.
` MR. DETRIXHE: Thank you.
` Good afternoon, Your Honors. I'm Jonathan
`Detrixhe, with Reed Smith for Petitioner.
` I will be addressing issues in these proceedings
`that have been created by Patent Owner following the
`Board's issuance of its Preliminary Guidance by filing a
`revised motion to amend that was directed to the same
`proposed substitute claims as its original motion to
`amend, which fails to comply with the Pilot Program Notice
`and was not authorized. In particular, Patent Owner's
`revised motion to amend plainly states that the proposed
`substitute claims are identical to those proposed in
`Patent Owner's original motion to amend.
` Now, stepping back for a moment. When Patent
`Owner first expressed interest in filing a motion to amend
`and participating in the pilot program, the Board issued
`an order directing Patent Owner to consider just two
`sources of information. First, the precedential
`Lectrosonics decision, and second, the Pilot Program
`Notice. And Patent Owner's failure to follow the guidance
`set forth in each of those sources has created a
`procedural morass. In particular, as found in the
`Preliminary Guidance, Patent Owner's original motion to
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`IPR2021-00375
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`amend failed to satisfy its burden of production as stated
`in Lectrosonics to show written description support for
`the proposed substitute claims as a whole including the
`limitations carried over from the original claims. In
`fact, the original motion to amend failed to make any
`showing at all for the original claim limitations, which
`leads to the next issue. Is that Patent Owner filed
`revised motion to amend directed to those same proposed
`substitute claims and relief as the original motion to
`amend, even though this was strictly prohibited by the
`Pilot Program Notice. So as stated in this excerpt from
`the Pilot Program Notice shown on this slide, a revised
`motion to amend must include one or more new proposed
`substitute claims in place of previously presented claims.
` In the Orthofix Medical decision, which is the
`only decision that Petitioner is aware of that addresses
`such a failure, the Board explained that they did not
`authorize Patent Owner to file a revised motion to amend
`without new proposed substitute claims, and as such, it is
`undisputed that Patent Owner's revised motion to amend was
`unauthorized.
` Slide 19. It is also undisputed that it is
`within the Board's discretion and authority to expunge any
`unauthorized paper. Rule 42.20(b) states that the motion
`will not be entered without Board authorization, and Rule
`42.7(a) states that the Board may expunge any paper that is
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`not authorized. On this point, the Valeo decision is
`instructive. There in expunging an unauthorized motion,
`the Board observed a party's failure to comply with the
`Board's prior instructions in an order, and failure to
`obtain authorization to deviate from those instructions.
`And in the same way here, Patent Owner has failed to
`comply with the Board's instructions in its orders asking
`the parties to consider Lectrosonics and the Pilot Program
`Notice which resulted in Patent Owner filing an
`unauthorized motion and so expungement would be warranted.
` Slide 20. Expungement is particularly warranted
`here given that Petitioner has been prejudiced by Patent
`Owner's unauthorized motion. In particular, Petitioner
`has been left guessing whether Patent Owner's revised
`motion to amend would be considered at all, and if so,
`whether it would be considered a motion or a reply, which
`has prejudiced Petitioner's preparation of its responsive
`paper. Petitioner was forced to cover all of its bases,
`responding both with opposition arguments that would only
`apply if Patent Owner's paper were considered a motion,
`sur-reply arguments that would only apply if Patent
`Owner's paper were considered a reply, all while being
`uncertain whether it could even submit responsive
`evidence.
` In the Orthofix Medical decision, following a
`conference call, the Board found that the unauthorized
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`IPR2021-00375
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`papers styled as a revised motion to amend was actually a
`reply, and then, granted Petition an expanded 25 pages to
`respond in a sur-reply paper. But that same relief was
`not possible here, nor has Petitioner received either of
`those remedies. In particular, unlike the schedule in
`Orthofix Medical which provided merely six weeks following
`the revised motion to amend filing before petitioner's
`responsive paper was due, here the schedule provided only
`two weeks which even Patent Owner does not contest was too
`short to identify the issue to confer with Patent Owner as
`required before requesting a conference call, then
`requesting and obtaining that conference call, and finally
`obtaining guidance sufficiently in advance of Petitioner's
`responsive deadline that there simply wasn't time. As
`such, Petitioner has received neither of the remedies
`provided in Orthofix Medical. One, Petitioner did not
`receive advance clarity on the nature of Patent Owner's
`revised motion to amend. And two, Petitioner did not
`receive additional pages to respond on sur-reply.
`Instead, Petitioner was forced to allocate its
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