Case IPR2016-01622
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`KINGSTON TECHNOLOGY COMPANY, INC.,
`
`Petitioner
`
`v.
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`POLARIS INNOVATIONS LTD.,
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`Patent Owner
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`PATENT OWNER’S
`REQUEST FOR REHEARING
`OF FINAL WRITTEN DECISION
`PURSUANT TO 37 C.F.R. § 42.71(d)(2)
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`TABLE OF CONTENTS
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`Page
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`I. 
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`THE PANEL SHOULD BE EXPANDED ON REHEARING. ................. 3 
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`II.  CLAIMS CANCELED BY AMENDMENT ARE OUT OF THE
`CASE. .............................................................................................................. 3 
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`III.  MOTIONS TO AMEND DO NOT REOPEN ISSUES DENIED
`TRIAL. ............................................................................................................ 7 
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`IV.  CONCLUSION ............................................................................................ 15 
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` i
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`JUDICIAL DECISIONS 
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`TABLE OF AUTHORITIES
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`Page(s)
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`Airbus S.A.S. v. Firepass Corp., 793 F.3d 1376, 1380 (Fed. Cir. 2015) ................. 12
`
`Aqua Prods.. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) ........... 2, 7, 12, 13
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`Belkin Int’l, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012) .................................. 12
`
`AGENCY DECISIONS 
`
`Adidas S.p.A. v. Nike, Inc., IPR2013-00067, Paper 60 (PTAB Jun. 20, 2014),
`appeal on other grounds, 812 F.3d 1326 (Fed. Cir. 2016) ................................... 5
`
`Amerigen Pharms. Ltd. v. Shire LLC, IPR2015-02009,
`Paper 38 (PTAB Mar. 31, 2017) .................................................. 1, 2, 8, 9, 10, 13
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`Amerigen Pharms. Ltd. v. Shire LLC, IPR2015-02009, Paper 8
`(PTAB Apr. 18, 2016) (decision regarding institution) ....................................... 8
`
`Apple Inc. v. Personalized Media Comm’ns LLC, IPR2016-01520,
`Paper 38 (PTAB Feb. 15, 2018) ........................................................................... 8
`
`Bright House Networks, LLC v. Focal IP, LLC, IPR2016-01261,
`Paper 71 (PTAB Dec. 28, 2017), appeal filed (Mar. 1, 2018) ............................. 8
`
`Cisco Sys., Inc. v. Focal IP, LLC, IPR2016-01257, Paper 56
`(PTAB Dec. 27, 2017), appeal filed (Mar. 1, 2018) ............................................. 8
`
`Elekta, Inc. v. Varian Med. Sys., Inc., Paper 20 (PTAB Oct. 7, 2016) ...................... 6
`
`Facebook, Inc. v. EveryMD LLC, IPR2014-00242, Paper 31
`(PTAB May 12, 2015) .......................................................................................... 5
`
`Gnosis S.p.A. v. S. Ala. Med. Sci. Found., IPR2013-00116, Paper 68
`(PTAB Jun. 20, 2014), aff'd, 808 F.3d 823 (Fed. Cir. 2015),
`reh’g en banc denied (Fed. Cir. 2016) .................................................................. 5
`
`HTC Corp. v. Parthenon Unified Mem. Arch. LLC, IPR2016-01135,
`Paper 47 (PTAB Oct. 6, 2017) .............................................................................. 8
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` ii
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`Intellectual Ventures Mgt., LLC v. Xilinx, Inc., IPR2012-00020,
`Paper 34 (PTAB Feb. 11, 2014) .......................................................................5, 6
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., IPR2013-00128,
`Paper 63 (PTAB Aug. 29, 2014), aff'd, 638 Fed. Appx. 999
`(Fed. Cir. 2016) (nonprecedential) ....................................................................... 5
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., IPR2013-00266,
`Paper 73 (PTAB Oct. 28, 2014), aff’d, 638 Fed. Appx. 999
`(Fed. Cir. 2016) (nonprecedential) ....................................................................... 5
`
`Liberty Mut. Ins Co.. v. Progressive Cas. Ins. Co., CBM2013-00002,
`Paper 27 at 2 (PTAB May 14, 2013), aff’d,
`625 Fed. Appx. 552 (Fed. Cir. 2015) (nonprecedential) ...................................... 4
`
`Merck Sharp & Dohme Corp. v. Mayne Pharma Int’l Pty Ltd.,
`IPR2016-01186, Paper 61 (PTAB Aug. 30, 2017) ...........................................5, 6
`
`Minerva Surgical, Inc. v. Hologic, Inc., IPR2016-00868, Paper 63
`(PTAB Dec. 15, 2017), appeal filed (Feb. 9, 2018) ............................................. 8
`
`MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00268, Paper 31
`(PTAB Oct. 30, 2014), rev’d on other grounds,
`643 Fed. Appx. 1008 (Fed. Cir. 2016) (nonprecedential) .................................... 5
`
`Nikon Corp. v. ASML Netherlands B.V., IPR2015-00002/00003,
`Paper 15 (PTAB May 28, 2015) ........................................................................... 6
`
`ON Semiconductor v. Power Integrations, Inc., IPR2016-01600,
`Paper 35 (PTAB Feb. 14, 2018) ........................................................................... 8
`
`Parrot S.A. v. QFO Labs, Inc., IPR2016-01550, Paper 60
`(PTAB Feb. 15, 2018) ........................................................................................... 8
`
`Parrot S.A. v. QFO Labs, Inc., IPR2016-01559, Paper 55
`(PTAB Feb. 15, 2018) ........................................................................................... 8
`
`Polygroup Ltd. v. Willis Elec. Co., Ltd., IPR2016-01613,
`Paper 118 (PTAB Feb. 26, 2018) ......................................................................... 8
`
` iii
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`Prime Focus Creative Servs. Canada Inc. v. Legend3D, Inc., IPR2016-01243,
`Paper 54 (PTAB Dec. 18, 2017), reh’g requested (Jan. 16, 2018) ...................... 8
`
`REG Synthetic Fuels, LLC v. Neste Oil Oyj, IPR2013-00178, Paper 63 (PTAB
`Aug. 29, 2014), aff'd w/o op., 607 Fed. Appx. 988 (Fed. Cir. 2015) ................... 5
`
`Riverbed Tech., Inc. v. Silver Peak Sys., Inc., IPR2013-00402,
`Paper 35 (PTAB Dec. 30, 2014) ........................................................................... 5
`
`Riverbed Tech., Inc. v. Silver Peak Sys., Inc., IPR2013-00403,
`Paper 33 (PTAB Dec. 30, 2014) ........................................................................... 5
`
`Silver Peak Sys., Inc. v. Riverbed Tech., Inc., IPR2014-00128/00149,
`Paper 20 (PTAB Aug. 7, 2014) ............................................................................ 6
`
`Taiwan Semiconductor Mfg. Co. v. Godo Kaisha IP Bridge 1, IPR2016-01259,
`Paper 47 (PTAB Dec. 20, 2017) (per curiam) ...................................................... 8
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`YMax Corp. v. Focal IP, LLC, IPR2016-01258, Paper 60
`(PTAB Dec. 28, 2017), appeal filed (Mar. 1, 2018) ............................................. 8
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`STATUTES 
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`35 U.S.C. § 312(a)(3) ............................................................................................... 15
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`35 U.S.C. § 314(a) .............................................................................................. 2, 13
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`35 U.S.C. § 314(c) ................................................................................................... 13
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`35 U.S.C. § 316(d)(1)(A) ........................................................................................... 7
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`REGULATIONS AND RULEMAKING 
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`37 C.F.R. § 42.108(a) ............................................................................................... 14
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`37 C.F.R. § 42.108(b) .............................................................................................. 14
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`37 C.F.R. § 42.71(d) .................................................................................................. 1
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`37 C.F.R. § 42.73(b)(2) .............................................................................................. 6
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`PTAB Standard Operating Procedure #1 (rev. 14) ................................................3, 7
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` iv
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`EXHIBIT LIST
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`Exhibit 2001
`
`Exhibit 2002
`
`Exhibit 2003
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`Exhibit 2004
`
`Cara Garretson. “More DRAM vendors involved in Justice
`Department probe.” IDG News Service July 21, 2002.
`Computer World, Inc. November 21, 2016.
`“Error Correction Code in SoC FPGA-Based Memory
`Systems.” Altera Corporation April 2012.
`“133 MHz PC SDRAM 64-Bit Non-ECC/Parity 144 Pin
`UNBUFFERED SO-DIMM SPECIFICATION.” Intel, Revision
`1.0C. August 2000
`“PC SDRAM Serial Presence Detect (SPD) Specification.”
`Intel, Revision 1.2B. November 1999.
`Exhibit 2005 Declaration of Nathan Nobu Lowenstein in support of Motion
`for Admission Pro Hac Vice
`Institution Decision, Amerigen Pharms. Ltd. v. Shire LLC,
`IPR2015-02009, Paper 8 (PTAB Apr. 18, 2016)
`Patent Owner’s Motion To Amend, Amerigen Pharms. Ltd. v.
`Shire LLC, IPR2015-02009, Paper 14 (PTAB Jul. 18, 2016)
`Petitioner’s Opposition To Motion To Amend, Amerigen
`Pharms. Ltd. v. Shire LLC, IPR2015-02009, Paper 17 (PTAB
`Oct. 18, 2016)
`Patent Owner Reply To Petitioner’s Opposition, Amerigen
`Pharms. Ltd. v. Shire LLC, IPR2015-02009, Paper 21 (PTAB
`Nov. 17, 2016)
`Petitioner’s Request For Oral Argument, Amerigen Pharms.
`Ltd. v. Shire LLC, IPR2015-02009, Paper 27 (PTAB Dec. 9,
`2017)
`Final Written Decision, Amerigen Pharms. Ltd. v. Shire LLC,
`IPR2015-02009, Paper 38 (PTAB Mar. 31, 2017)
`Exhibit 2012 Deposition Transcript Of Vivek Subramanian (Apr. 19, 2017)
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`Exhibit 2006
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`Exhibit 2007
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`Exhibit 2008
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`Exhibit 2009
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`Exhibit 2010
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`Exhibit 2011
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`Exhibit 2013
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`Exhibit 2014
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`Exhibit 2015
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`Exhibit 1 To Deposition Transcript Of Vivek Subramanian
`(Apr. 19, 2017)
`Transcript of October 5, 2017 Conference Call
`
`[ADDED] J. Glass & R. Lowry, “IPR Claim Amendments In
`The Wake Of Aqua Products,” Law360 (Mar. 5, 2018)
`
` v
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`Rehearing of the panel’s Final Written Decision (“FWD”) is respectfully
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`requested. Paper 35.1 The FWD denied both aspects of Patent Owner’s Motion to
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`Amend: it denied the request to cancel Claims 1 and 5–8, and it denied to add
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`proposed substitute Claim 9 to the patent. Both of these rulings are incorrect, and
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`contrary to every prior Board decision on point on either issue.
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`Requests for rehearing “must specifically identify all matters . . . the Board
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`misapprehended or overlooked, and the place where each matter was previously
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`addressed” in the record. 37 C.F.R. § 42.71(d). The FWD’s denial of Patent
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`Owner’s request to cancel Claims 1 and 5-8 (leaving proposed Claim 9 for trial)
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`was never previously addressed, however, because it was denied sua sponte.
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`Petitioner never presented any argument why the request should be denied, and the
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`panel asked no questions about it. And the FWD’s sua sponte denial of it not only
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`overlooked 35 U.S.C. § 316(d), it is contrary to all of the Board’s 20+ prior
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`decisions considering such requests—which all found that such requests should be
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`granted as long as, like this one, they leave at least one claim for trial.
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`As for the FWD’s denial of proposed substitute Claim 9, it misapprehended
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`the Board’s sole prior decision on point, Amerigen Pharmaceuticals v. Shire,
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`IPR2015-02009, Paper 38 (PTAB Mar. 31, 2017), and the law that it applied. As
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`Patent Owner’s papers explain, the Motion to Amend in this case was based as
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`1 Patent Owner reserves the right to raise additional issues on appeal.
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`1
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`closely as possible on the motion to amend granted in Amerigen. Amerigen
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`allowed a substitute claim containing no newly-drafted limitations, based on the
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`fact that all of its limitations were already found in original claims that were either
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`unchallenged or had been denied institution. And the Board refused to consider
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`the unpetitioned arguments and evidence submitted in opposition. For purposes of
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`amendments in IPR, the Board held, “there is no requirement for [the patent
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`owner] to prove, after the Institution Decision, that original non-amended claims
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`are patentable over all potential prior art, especially non-instituted claims,” and the
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`motion to amend could therefore rely on the patentability of non-instituted claims
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`to show that the proposed claim was patentable. Id. at 6.
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`Contrary to Amerigen, the Federal Circuit’s guidance in Aqua Prods. v.
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`Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), and the law and rules of other
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`inter partes proceedings, the FWD overlooked or misapprehended this principle,
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`and instead reached the unprecedented conclusion that patent owners filing
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`motions to amend may not rely on the patentability of non-instituted claims, and
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`instead re-open the door to trial of the patentability of the subject matter of non-
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`instituted claims, notwithstanding that it had been excluded from trial at institution.
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`The Board should correct these rulings, which contradict all of the Board’s
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`prior decisions on these questions, and will, if not corrected, add still more
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`roadblocks to patent owners’ already virtually moribund right to amend.
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`2
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`I.
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`THE PANEL SHOULD BE EXPANDED ON REHEARING.
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`Patent Owner respectfully suggests that the panel “suggest to the Chief
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`Judge the need for the designation of an expanded panel,” “before consideration of
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`[the] request for rehearing of the decision of the merits panel.” S.O.P. #1 (rev. 14).
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`“Reasons for expanding a panel include: 1. [a]n issue of exceptional importance,”
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`and “2. [c]onflicting decisions by different panels of the Board.” Each of these
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`reasons is present here. Conforming IPR amendment procedure to Federal Circuit
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`guidance in the wake of Aqua is of exceptional importance. And both aspects of
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`the FWD—its denial of Patent Owner’s request to cancel claims and its denial of
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`Patent Owner’s proposed amended claim on the basis that it reopened doors to
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`attack non-instituted subject matter—contradict all prior Board decisions on point.
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`II.
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`CLAIMS CANCELED BY AMENDMENT ARE OUT OF THE CASE.
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`The FWD erred in denying the Motion to Amend’s noncontingent request to
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`cancel Claims 1 and 5-8. Petitioner raised no arguments, and established no
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`reasons, that Patent Owner’s request to cancel these claims should be denied. The
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`possibility of denying the request to cancel these claims never came up in briefing
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`or at the hearing. Nevertheless, the FWD silently denied Patent Owner’s request,
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`without explaining why. Paper 35 at 2, 14, 27. Rather than cancel the claims, the
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`FWD entered adverse judgment of unpatentability, with the passing remark that
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`“[b]y not filing a response to the Petition, and requesting cancellation of claims 1
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`3
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`and 5–8 not based on any apparent contingency, Patent Owner has waived any
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`argument that the challenged claims for which we instituted review—claims 1 and
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`5–8 of the ’414 patent—would not have been obvious.” Paper 35 at 11, 27.
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`The FWD’s sua sponte reasoning on this unbriefed question appears to
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`contradict all of the Board’s dozens of prior decisions that have considered
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`noncontingent requests to cancel a subset of claims for trial. So far as Patent
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`Owner has found, the Board has never before found that a patent owner’s request
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`to cancel the claims without presenting a response to the instituted grounds of
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`unpatentability is a “waiver” militating in favor of proceeding to judgment of
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`unpatentability. Rather, until now, the Board has consistently held that requests to
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`cancel some of the triable claims “will be entered, as it will reduce issues and
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`streamline the trial,” and render the patentability of the canceled claims moot by
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`taking the canceled claims entirely out of the case. Liberty Mut. Ins. v. Progressive
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`Cas. Ins., CBM2013-00002, Paper 27 at 2 (PTAB May 14, 2013).
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`Patent Owner has found approximately 20 prior IPR decisions, in addition to
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`many CBM decisions,2 that have considered noncontingent requests in motions to
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`amend to cancel fewer than all claims for trial. Those decisions have been
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`strikingly consistent, and none can be reconciled with the FWD.
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`2 All decisions on such issues in CBM have followed exactly the same rules.
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`4
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`In every such previous case, no matter what the stage of trial and regardless
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`whether the patent owner filed a response to the petition, the Board has granted the
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`patent owner’s request and canceled the claims without entering adverse judgment.
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`See IPR2016-01600, Paper 35 at 10 (PTAB Feb. 14, 2018); IPR2016-01186, Paper
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`61 at 2 (PTAB Aug. 30, 2017); IPR2015-00556, Paper 28 at 2, 6 (PTAB May 3,
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`2016); IPR2014-00242, Paper 31 at 2-3 (PTAB May 12, 2015); IPR2013-00403,
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`Paper 33 at 1, 10 (PTAB Dec. 30, 2014); IPR2013-00402, Paper 35 at 2, 36 (PTAB
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`Dec. 30, 2014); IPR2013-00268, Paper 31 at 2 (PTAB Oct. 30, 2014); IPR2013-
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`00266, Paper 73 at 3 (PTAB Oct. 28, 2014); IPR2013-00178, Paper 63 (PTAB
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`Aug. 29, 2014); IPR2013-00128, Paper 92 (PTAB Jul. 25, 2014); IPR2013-00116,
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`Paper 68 (PTAB Jun. 20, 2014); IPR2013-00067, Paper 60 at 4 (PTAB Jun. 20,
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`2014); IPR2012-00020, Paper 34 at 6 (PTAB Feb. 11, 2014). Furthermore,
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`whenever the Board has discussed the applicable law in any of these cases, it has
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`always reached the same conclusion, contrary to the FWD: that such a request to
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`cancel claims takes them out of the case, and renders their patentability moot. See
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`IPR2016-01600, Paper 35 at 10 (holding, over petitioner’s opposition, that: “In this
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`proceeding, . . . we are not called upon to address whether claims 1 and 2 are
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`unpatentable because Patent Owner’s Motion to Amend requests cancellation of
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`those claims”); IPR2013-00268, Paper 31 at 2 (“Patent Owner requested
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`cancellation of [some challenged] claims . . . . Accordingly, Petitioner’s challenges
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`5
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`

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`to these claims were rendered moot.”); IPR2012-00020, Paper 34 at 6 (“we grant
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`[patent owner]’s motion [to amend] . . . and cancel claim 1. Thus, we need only
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`address the patentability of [the remaining] challenged claims”).
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`The Board has consistently identified only one exception to this rule—which
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`does not apply in this case. If a motion to amend cancels all instituted claims, and
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`proposes no replacement claims, the Board has uniformly construed it as a request
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`for adverse judgment on all instituted claims, and granted adverse judgment of
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`unpatentability instead of canceling them. IPR2016-00341, Paper 20 at 2 (PTAB
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`Oct. 7, 2016) (“Actions construed as a request for entry of adverse judgment
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`include cancellation of a claim such that the party has no remaining claim in the
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`trial. 37 C.F.R. § 42.73(b)(2) . . . . We thus construe Patent Owner’s Motion to
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`Amend as a request for adverse judgment”); IPR2015-00002/00003, Paper 15
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`(PTAB May 28, 2015); IPR2014-00718/00721, Paper 21/20 at 3 (PTAB Jun. 8,
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`2015) (same); IPR2014-00128/00149, Paper 20 (PTAB Aug. 7, 2014) (same). In
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`contrast, until now, when fewer than all claims (including proposed claims) at trial
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`are canceled, the Board does cancel the claims and does not enter such an adverse
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`judgment. See, e.g., Merck v. Mayne, IPR2016-01186, Paper 61 at 2 (PTAB Aug.
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`30, 2017) (“We do not construe the request for cancellation of claims [in the
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`motion to amend] . . . to be a request for adverse judgment as claims . . . remain
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`under challenge in the proceeding. 37 C.F.R. § 42.73 (b)(2).”).
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`6
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`These straightforward rules make sense. The statute does not even purport
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`to authorize estoppel upon patent owners by adverse judgment, and when trial is
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`held and a motion to amend is filed to “[c]ancel any challenged patent claim,” 35
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`U.S.C. § 316(d)(1)(A), there is no express statutory basis for adverse judgment on
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`those claims. Moreover, patent owners wishing to avoid adverse judgment on
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`instituted claims should be able to rely on the granting of their requests to cancel
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`the claims. Otherwise, patent owners will be inefficiently forced to also mount a
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`full-blown defense of them, just in case the Board might refuse.
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`Here, Patent Owner’s Motion to Amend properly requested cancellation of a
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`subset of triable claims, leaving proposed claim 9 for trial. Every prior decision of
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`the Board to consider such a request would have granted it. That is the right result.
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`III.
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`MOTIONS TO AMEND DO NOT REOPEN ISSUES DENIED TRIAL.
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`“Despite repeated recognition of the importance of the patent owner’s right
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`to amend during IPR proceedings—by Congress, courts, and the PTO alike—
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`patent owners largely have been prevented from amending claims in the context of
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`IPRs.” Aqua Prods., 872 F.3d at 1299 (opinion of O’Malley for 5 of 11 judges);
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`Paper 33 at 22. Yet in the months since the en banc court overruled the Board’s
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`overburdening of patent owners who amend their patents (id. at 1328), little has
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`changed: In that time the Board has approved only a single proposed claim in only
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`three of thirteen motions to amend. One claim was allowed in each of IPR2016-
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`7
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`01613, Paper 118, IPR2016-01249, Paper 47, and IPR2016-01135, Paper 47. But
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`in IPR2016-01520, Paper 38; IPR2016-01550, Paper 60; IPR2016-01559, Paper
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`55; IPR2016-01600, Paper 35; IPR2016-01258, Paper 60; IPR2016-01261, Paper
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`71; IPR2016-01257, Paper 56; IPR2016-01243, Paper 54; IPR2016-00868, Paper
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`63; and the present case, every proposed claim was denied.
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`The FWD worsens this imbalance. Congress intended motions to amend to
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`narrow, not expand, the matters for trial. Paper 23 at 5. And in the present case,
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`unlike all the other cases just listed above, the Motion to Amend proposed a claim
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`that is drawn to non-instituted subject matter. Yet the FWD holds that Patent
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`Owner’s exercise of its right to amend threw open the door, as a matter of law, to
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`revisit any relevant issues already denied trial, including in non-instituted claims.
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`In its sole prior decision addressing this issue, Amerigen, Ex. 2011, however,
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`the Board already held otherwise. Instead, it held, amending patent owners are
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`entitled to rely on the scope of trial established at institution. Paper 23 at 6-8. It is
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`undisputed that Patent Owner drafted its motion to amend to be as nearly identical
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`as possible to the motion granted in Amerigen. Id.; Paper 34 at 85:4-8. It should be
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`granted, for the same reason the Board granted the motion in Amerigen.
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`In Amerigen, the patent owner filed a motion to cancel all instituted claims,
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`proposing as a substitute a narrowed version of a challenged, non-instituted claim.
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`Paper 23 at 6-7; Exs. 2006-07. The motion attached no evidence; added no newly-
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`8
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`drafted limitations; and, for patentability, relied solely on the fact that the Board
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`had partially denied institution as to certain challenged claims. Id. Opposing the
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`motion, the petitioner argued that, by proposing the substitute claim, the patent
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`owner put back at issue the patentability of all of the subject matter relevant to that
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`claim’s limitations, including matter on which institution had already been denied.
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`Id. Petitioner’s opposition also raised a host of new prior art and unpatentability
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`arguments previously absent from the petition. Id.; Paper 23 at 6.
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`Without a hearing, the Board granted in full the patent owner’s motion to
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`amend, canceled all the instituted claims as requested, found the proposed claim
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`patentable, and declined to address any of the newly raised art or arguments. Id.;
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`Ex. 2010 at 3-4; Ex. 2011 at 7. “[T]here is no requirement,” the Board
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`explained, “to prove, after the Institution Decision, that original non-amended
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`claims are patentable . . . , especially non-instituted claims”—particularly where
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`the substitute claim included no “newly drafted” limitations, but only limitations
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`already found in existing claims, including limitations found in “non-instituted”
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`claims. Ex. 2011 at 4-5, 7 (emphases added, alteration marks omitted); see also
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`Paper 23 at 7; Paper 34 at 106:21-107:13.
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`The FWD overlooks or misapprehends the Board’s decision in Amerigen
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`and the law it applied. The FWD recasts Amerigen as relying solely on other,
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`“fact-specific” considerations, such as the happenstance that its proposed
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`9
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`substitution was a multiply-dependent claim, and not its clear statement of law just
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`quoted above. Paper 35 at 19. The FWD suggests that Amerigen has no bearing at
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`all on this case, and is supposedly consistent with the view that, if a patent owner is
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`so unwise as to “propose a substitute amended claim that includes the limitation of
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`[a] challenged and instituted dependent claim along with the limitation of [a] non-
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`instituted dependent claim,” he thereby re-injects the patentability of any such
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`latter limitation “back into the case”—and, “because of those actions,” at his peril,
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`causes “the . . . limitation[s] of [the non-instituted] claim” to be “again involved in
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`th[e] proceeding.” Id. at 20-21 (claim numbers omitted). Respectfully, however,
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`the FWD cannot be squared with Amerigen’s central holding that IPR has no
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`requirement to re-prove the patentability of subject matter of non-instituted claims.
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`The FWD’s suggestion that it must always determine whether the substitute claim
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`is patentable “based on the entirety of the record, including any opposition made
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`by the petitioner,” id., would be correct if Patent Owner had proposed claims to
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`instituted or newly drafted subject matter, but not when Patent Owner’s Motion,
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`like the one in Amerigen, proposes only a claim that adds to an existing claim the
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`existing limitations of a claim that was denied institution. Paper 23 at 4; Paper 35
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`at 19-20. That is different, as Amerigen recognized. Indeed, as already noted,
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`Amerigen ignored the petitioner’s untimely opposition evidence. Paper 23 at 6.
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`If this motion to amend opens the doors to unpetitioned attacks on non-
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`instituted subject matter, it is impossible to write a motion to amend in reliance on
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`the non-institution decision that does not do so. And that means patent owners that
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`wish to exercise their right to propose amended claims without opening a door to
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`attacks on non-instituted claims will have to propose amended claims whose added
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`limitations are all newly drafted, and not found in original claims. That makes no
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`sense. It should be the other way around. Paper 23 at 4.
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`The panel argues “that this is not simply a case where Patent Owner seeks to
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`rewrite dependent claim 4 in independent form,” but instead, because the proposed
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`claim adds the existing limitations of claim 4 to those of claim 8, it “is the first
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`time that the width and height limitations have appeared in the same claim.” Paper
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`35 at 15. However, the panel does not explain why that should make any
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`difference, nor why it should open any door to attacks on non-instituted subject
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`matter. The fact that these limitations are now “in the same claim” does not mean
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`there are any new limitations. And it is undisputed that the proposed claim is
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`supported by the specification. Paper 18 at 4.
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`The FWD further overlooks or misapprehends contrary Board practice and
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`law in post-grant inter partes reexamination, which, as Patent Owner and the
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`Federal Circuit’s judges have explained, should guide the Board in interpreting the
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`requirements for amending patents in IPR. Paper 33 at 27. By allowing patent
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`owners to “elect to adjust the scope of [their] patent grant by proposing narrowing
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`amendments” “only after the institution decision,” “IPR functions as a process for
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`refining and limiting patent scope[] similar to the inter partes reexamination
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`process,” and, accordingly, the procedure for motions to amend in IPR should be
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`“interpret[ed] . . . consistent with” the practice in inter partes reexamination. Aqua,
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`872 F.3d at 1305 n.6, 1310 (O’Malley op.); see also id. at 1352 n.11 (Taranto op.)
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`(citing reexamination provisions to guide interpretation of IPR provisions).
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`Contrary to this guidance, the FWD’s conclusion that amendments re-open attacks
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`on non-instituted subject matter in IPR is just the opposite of what happens in inter
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`partes reexamination. Paper 33 at 27-28; Paper 34 at 98:19-99:10.
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`In inter partes reexamination, the grant of a reexamination request sets “the
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`scope of reexamination,” which “may not include other prior art than what
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`constituted the basis of the Director’s determination of a substantial question of
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`patentability.” Belkin Int’l v. Kappos, 696 F.3d 1379, 1384 n.2 (Fed. Cir. 2012);
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`Paper 33 at 28. There is a limited exception for “amended or substituted claim[s],”
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`id.—but only to the extent they add newly drafted limitations. The Office
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`specifically “limits the [requester]’s ability to cite additional prior art against a
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`newly-added or amended claim with respect to limitations for which the prior art
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`has already been considered either during original prosecution or in the request for
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`reexamination.” Airbus v. Firepass, 793 F.3d 1376, 1380 (Fed. Cir. 2015).
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`The right to amend in IPR should be interpreted consistently with these
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`practices. That is why, if claims are proposed during IPR, the Board would need to
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`consider “[a]dditional prior art” raised by the petitioner against a new claim only to
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`the extent that the claim has “new element[s]” that the Board has not previously
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`considered and that the petitioner “may not have initially introduced prior art . . .
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`address[ing].” Aqua, 872 F.3d at 1349 n.6 (Taranto op.). In contrast, new attacks
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`on old limitations the petitioner already has attacked are improper. Paper 33 at 21.
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`The FWD’s rejection of Amerigen puts IPR amendment procedure at odds
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`with inter partes reexamination amendment procedure. It means that a patent
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`owner who proposes an amended claim in IPR throws open the door to renewed,
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`unpetitioned attacks against anything in the claim—regardless whether its
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`limitations are new, old, or already a basis for non-institution. Paper 33 at 24-30.
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`The FWD’s holding not only misapprehends past reexamination practice,
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`Board decisions, and Federal Circuit guidance: it misapprehends IPR’s statutory
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`structure. Paper 23 at 4-5. In IPR “the petitioner raises its best arguments at the
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`outset; the patent owner has the opportunity to adjust the scope of its claims if need
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`be; and the Board provides a speedy ruling as to the patentability of the original
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`and amended claims.” Aqua, 872 F3d at 1312 (O’Malley op.). Under the
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`unappealable “determination under [section 314] subsection (a)” whether to grant
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`IPR, 35 U.S.C. § 314(c), “the Board may authorize the review to proceed on all or
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`some of the challenged claims and on all or some of the grounds,” 37 C.F.R.
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`§ 42.108(a), and “denial of” such authorization “is a Board decision not to institute
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`inter partes review on that ground,” id. § 42.108(b); Paper 33 at 4-5. But this
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`structure for narrowing issues for speedy trial is rendered nugatory if motions to
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`amend proposing narrowing amendments may expand the scope of trial to include
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`the very subject matter the institution decision excluded. Paper 23 at 1, 4, 7-8.
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`That is not the end of the distortions to the structure of IPR that will result.
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`If the FWD is correct that motions to amend open the doors to attacks on non-
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`instituted subject matter, oppositions to motions to amend, filed months after the
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`briefing on patentability is supposed to be complete, will routinely be stuffed with
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`unpetitioned prior art and arguments attacking non-instituted subject matter. And
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`patent owner’s replies supporting their motions will then perforce need to be filled
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`with new counter-arguments and new rebuttal evidence on that matter. Indeed,
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`under the FWD’s view, in cases where the patent owner has filed little or no
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`evidence with its POPR and filed no response to the petition, the patent owner will
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`have to start building its evidentiary record beginning with its reply in support of
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`its motion to amend—nine months after the petition was filed and only weeks
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`before the oral hearing. Ex. 34 at 99:3-94:16. Some post-Aqua panels have even
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`begun to allow petitioners sur-replies to patent owners’ replies, as has been noted
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`in press coverage, Ex. 2015 at 2, but that will just make these scheduling
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`difficulties worse. Needless to say, this situation is in tension with statute, which
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`expressly provides that all unpatentability grounds be raised in the petition, 35
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`U.S.C. § 312(a)(3), and says nothing about a second round of trial on new grounds
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`and evidence months after institution. Paper 23 at 12; Paper 34 at 99:11-100:16.
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`Finally, the FWD overlooks the unfairness of its rule to patent owners. The
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`present case is an apotheosis of