Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 1 of 13
`Case 1:19-cv-11586—IT Document 60-3 Filed 04/03/20 Page 1 of 13
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`EXHIBIT C
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`EXHIBIT C
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`4/3/2020
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`PTAB Trial Insights | Insights | Foley & Lardner LLP
`Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 2 of 13
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`01 APRIL 2020
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` COURTENAY C. BRINCKERHOFF, GEORGE E. QUILLIN
`The United States Patent and Trademark Office (USPTO) has now announced how it will exercise its
`authority under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to extend
`certain statutory deadlines.
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`4/3/2020
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`PTAB Trial Insights | Insights | Foley & Lardner LLP
`Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 3 of 13
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`Arthrex Stands (For Now)
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`PTAB Cannot Invalidate Challenged Claims for Indefiniteness in an IPR
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`PTAB Strict on Motivation Evidence for Obviousness
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`PTAB - 2019 Year in Review
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`Remanding to PTAB After Demoting Judges: Too Far or Not Far Enough?
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`https://www.foley.com/en/insights/blogs/ptab-trial-insights
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`2/6
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`26 MARCH 2020
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` JONATHAN I. TIETZ, GEORGE E. QUILLIN
`As we previously covered , on October 31, 2019, the Federal Circuit held in Arthrex, Inc. v. Smith &
`Nephew, Inc., 941 F.3d 1320 , that PTAB judges (i.e., administrative patent judges, or APJs) were
`principal officers appointed in violation of the Constitution, and held that the proper remedy was to
`judicially eliminate their for-cause removal protections.
`18 FEBRUARY 2020
`|
` MELISSA J. EL MENAOUAR, ALEXANDER M. LODGE
`The Federal Circuit definitively rejected arguments to cancel challenged claims for reasons other
`than anticipation or obviousness in an inter partes review proceeding.
`31 JANUARY 2020
`|
` JOSEPH P. MEARA, AUDE S PEDEN
`Two PTAB decisions recently designated as informative show that failure to provide detailed
`evidence of motivation to combine references for an obviousness challenge, can sink a Petition
`before or after institution of trial.
`23 JANUARY 2020
`|
` JEANNE M. GILLS, STEPHEN B. MAEBIUS, GEORGE E. QUILLIN, JONATHAN I. TIETZ
`To wrap up 2019 and usher in 2020 for practitioners who handle Patent Trial and Appeal Board
`(PTAB) matters, Foley partners Jeanne Gills, Steve Maebius, and George Quillin discussed 2019’s
`major developments in a webinar on January 23, 2020.
`12 NOVEMBER 2019
`|
` JONATHAN I. TIETZ, GEORGE E. QUILLIN
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`4/3/2020
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`PTAB Trial Insights | Insights | Foley & Lardner LLP
`Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 4 of 13
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`Federal Circuit Demotes Unconstitutionally Appointed PTAB Judges
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`While Tempting, PTAB Requests for Rehearing Face Long Odds
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`Primary Contacts
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`Stephen B. Maebius
`Partner
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`https://www.foley.com/en/insights/blogs/ptab-trial-insights
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`3/6
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`On October 31, the Federal Circuit held that PTAB judges were principal officers appointed in
`violation of the Appointments Clause and, to remedy the violation, severed the portion of the Patent
`Act conferring them (through Title 5) with for-cause removal protection.
`01 NOVEMBER 2019
`|
` JONATHAN I. TIETZ, GEORGE E. QUILLIN
`15 OCTOBER 2019
`|
` JASON N. MOCK, MICHAEL R. HOUSTON
`When the PTAB renders a decision, one of the parties is almost certain to be unhappy. Providing
`appropriate advice in the face of an undesired outcome requires an understanding of the odds of
`changing the outcome.
`smaebius@foley.com
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`4/3/2020
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`PTAB Trial Insights | Insights | Foley & Lardner LLP
`Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 5 of 13
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`George C. Beck
`Partner
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`Courtenay C. Brinckerhoff
`Partner
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`https://www.foley.com/en/insights/blogs/ptab-trial-insights
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`4/6
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`gbeck@foley.com
`cbrinckerhoff@foley.com
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`4/3/2020
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`PTAB Trial Insights | Insights | Foley & Lardner LLP
`Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 6 of 13
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`Michael R. Houston
`Partner
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`George E. Quillin
`Partner
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`https://www.foley.com/en/insights/blogs/ptab-trial-insights
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`5/6
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`mhouston@foley.com
`gquillin@foley.com
`Keeping informed of the nuances, the impact of decisions and new rules, and the new shades of
`interpretation of the rules for PTAB trials can consume a great deal of both your time and effort. In
`PTAB Trial Insights, Foley attorneys, with experience in various proceedings across Tech Centers,
`will analyze and assess the particulars of the latest developments, providing you with the most
`current evaluation of each situation and how it may affect your patent protection and enforcement
`strategies.
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`4/3/2020
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`PTAB Trial Insights | Insights | Foley & Lardner LLP
`Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 7 of 13
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`4/3/2020
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`PTAB Cannot Invalidate Challenged Claims for Indefiniteness in an IPR | Blogs | PTAB Trial Insights | Foley & Lardner LLP
`Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 8 of 13
`PTAB Cannot Invalidate Challenged Claims for Indefiniteness in
`an IPR
`
`https://www.foley.com/en/insights/publications/2020/02/ptab-cannot-invalidate-challenged-claims-ipr
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`1/6
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`18 February 2020
`|
` PTAB Trial Insights
`|
` Blog
`Authors: Melissa J. El Menaouar, Alexander M. Lodge
`The Federal Circuit definitively rejected arguments to cancel challenged claims for reasons other
`than anticipation or obviousness in an inter partes review proceeding.
`1
` In Samsung Electronics
`America, Inc., v. Prisua Engineering Corp.,
`2
` the Federal Circuit rejected Samsung’s challenge that
`the PTAB has authority to cancel claims it has found indefinite in an IPR.
`After being sued for infringing U.S. Patent 8,650,591 (assigned to Prisua), Samsung filed an IPR
`petition
`3
`challenging claims 1-4, 8, and 11 of the ’591 patent.
`4
`The Board initially instituted the
`IPR only on the ground challenging claim 11 as obvious over a published U.S. patent application.
`The Board explained it did not institute on any ground challenging claims 1-4 and 8, because it
`could not determine the scope of those claims, which were indefinite under 35 U.S.C. § 112,
`paragraph 2 in accordance with the analysis set forth in IPXL
`5
`and 35 U.S.C. § 112, paragraph
`6.
`6
`While the IPR was pending, the Supreme Court decided SAS,
`7
`and the Board subsequently
`modified its institution decision to include all challenged claims on all grounds presented in the
`petition presented in the petition. The Board allowed the parties to file supplemental briefs and
`evidence on the newly added claims and grounds.
`In supplemental briefing, Samsung argued the Board should cancel claims 1-4 and 8 for
`indefiniteness or, in the alternative, the Board should apply the prior art to the claims despite the
`indefiniteness issue. In its final written decision, the Board held claim 11 unpatentable for being
`obvious in view of a published U.S. patent application, repeating its conclusion that claims 1-4 and
`8 were indefinite and declining to apply the prior art to anticipation or obviousness. Samsung and
`Prisua cross-appealed the decision.
`On appeal, Samsung argued the Board should have canceled claims 1-4 and 8 for indefiniteness or,
`in the alternative, if the Board did not have the authority to cancel the claims for indefiniteness,
`then they should have reviewed the claims for anticipation and obviousness. Samsung argued that
`even though the statute
`8
`may not authorize the Board to institute an IPR based on a claim’s
`indefiniteness, after institution has been established on a statutorily authorized ground, the Board
`has the authority to cancel claims on indefiniteness grounds. Samsung pointed to several
`provisions in the IPR statute in an effort to show Congress authorized the Board to cancel claims for
`indefiniteness after an IPR has been instituted, including an interpretation of the term
`“patentability” in the IPR statute.
`9
`

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`4/3/2020
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`PTAB Cannot Invalidate Challenged Claims for Indefiniteness in an IPR | Blogs | PTAB Trial Insights | Foley & Lardner LLP
`Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 9 of 13
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`https://www.foley.com/en/insights/publications/2020/02/ptab-cannot-invalidate-challenged-claims-ipr
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`2/6
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`Although the court acknowledged that “it is undisputed that the Board may review newly added
`claims for compliance with section 112,”
`10,11
`the court unambiguously rejected “Samsung’s
`contention that the IPR statute authorizes the Board to cancel challenged claims for
`indefiniteness.”
`12
`In reaching its conclusion, the court reviewed the history of challenging the
`validity of patent claims both in the federal courts and at the USPTO, including an explanation of
`the types of challenges available under each (e.g., patentable subject matter, anticipation,
`obviousness, and indefiniteness). Additionally, the court explained “the proper course for the Board
`to follow, if it cannot ascertain the scope of a claim with reasonable certainty for purposes of
`assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only
`certain claims, to conclude that it could not reach a decision on the merits with respect to whether
`petitioner had established the unpatentability of those claims under sections 102 or 103.”
`13
`In response to Samsung’s alternative argument, the court agreed that the Board improperly
`construed claim 1 as a “means-plus-function” claim and prematurely ended its anticipation and
`obviousness analysis. The court explained that even if claims 1-4 and 8 may be subject to question
`for IPXL-type indefiniteness, the Board should have further considered the anticipation and
`obviousness grounds. The court noted its “decision here is limited to IPXL-type indefiniteness and
`does not affect claims that are indefinite for other reasons,” and “does not affect the disposition of
`cases in forums that are authorized to consider indefiniteness as a basis for invalidating a
`claim.”
`14
`The court additionally upheld the Board’s determination that claim 11 was unpatentable
`as obvious.
`In summary, the court concluded “[i]t would not be proper for the Board to cancel claims on a
`ground that is unavailable in an IPR”
`15
`and even if claims are subject to question for
`indefiniteness, this “does not necessarily preclude the Board from addressing the patentability of
`the claims on section 102 and 103 grounds.” The Samsung decision cautions petitioners to
`thoroughly evaluate the scope of each challenged claim and all potential grounds of invalidity in
`assessing the proper forum to bring an invalidity challenge to a patent’s claims.
`---------------------------------------------
`1
`35 U.S.C. § 311.
`2
`Samsung Electronics America, Inc., v. Prisua Engineering Corp., No. 2019-1169 (Fed. Cir. 2020).
`3
`IPR No. IPR2017-01188.
`4
`Claims 1 and 11 are independent and claims 2-4 and 8 ultimately depend on claim 1.
`5
`IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) held that a
`single claim covering both an apparatus and a method of use of that apparatus is indefinite under
`section 112, paragraph 2.
`6
`35 U.S.C. § 112, paragraph 6 provides the requirements for “means-plus-function” limitations in
`

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`4/3/2020
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`PTAB Cannot Invalidate Challenged Claims for Indefiniteness in an IPR | Blogs | PTAB Trial Insights | Foley & Lardner LLP
`Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 10 of 13
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`https://www.foley.com/en/insights/publications/2020/02/ptab-cannot-invalidate-challenged-claims-ipr
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`3/6
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`a claim.
`7
`SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`8
`35 U.S.C. § 311.
`9
`35 U.S.C. § 318(a).
`10
`35 U.S.C. § 316(d).
`11
`Samsung Electronics America, Inc., v. Prisua Engineering Corp., No. 2019-1169, slip op. at p.
`12 (Fed. Cir. 2020).
`12
`Id., p. 11.
`13
`Id., p. 16.
`14
`Id., p. 21, n. 5.
`15
`Id.
`16
`Id., p. 20.
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`4/3/2020
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`PTAB Cannot Invalidate Challenged Claims for Indefiniteness in an IPR | Blogs | PTAB Trial Insights | Foley & Lardner LLP
`Case 1:19-cv-11586-IT Document 60-3 Filed 04/03/20 Page 11 of 13
`Authors
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`Melissa J. El Menaouar
`Associate
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`Alexander M. Lodge
`Associate
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`Related Services
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`https://www.foley.com/en/insights/publications/2020/02/ptab-cannot-invalidate-challenged-claims-ipr
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`4/6
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`melmenaouar@foley.com
`alodge@foley.com
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