Teleconference Session - May 11, 2018
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` ______________________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` _______________________
`
`___________________________
` )
`KINGSTON TECHNOLOGY )
`COMPANY, INC., )
` )
` Petitioner, )
` ) Case IPR2016-01622
` v. ) Patent 6,850,414,B2
` )
`POLARIS INNOVATIONS, LTD., )
` )
` Patent Owner.)
`___________________________)
`
` TELECONFERENCE SESSION
`
` Friday, May 11, 2018
`
` 2:00 p.m.
`
`BEFORE: JUDGE KEN BARRETT, JUDGE JEAN HOMERE
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`KINGSTON 1026
`Kingston v. Polaris
`IPR2016-01622
`
`
`
`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` ______________________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` _______________________
`
`___________________________
` )
`KINGSTON TECHNOLOGY )
`COMPANY, INC., )
` )
` Petitioner, )
` ) Case IPR2016-01622
` v. ) Patent 6,850,414,B2
` )
`POLARIS INNOVATIONS, LTD., )
` )
` Patent Owner.)
`___________________________)
`
` TELECONFERENCE SESSION
`
` Friday, May 11, 2018
`
` 2:00 p.m.
`
`BEFORE: JUDGE KEN BARRETT, JUDGE JEAN HOMERE
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`KINGSTON 1026
`Kingston v. Polaris
`IPR2016-01622
`
`
`
`Teleconference Session - May 11, 2018
`
`Page 2
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`APPEARANCES:
`
` On behalf of Petitioner:
`
` DAVID HOFFMAN, ESQUIRE
` Fish & Richardson P.C.
` IPR37307-0007IIP1@fr.com
` hoffman@fr.com
`
` On behalf of Patent Owner:
`
` KENNETH WEATHERWAX,ESQUIRE
` NATHAN LOWENSTEIN, ESQUIRE
` weatherwax@lowensteinweatherwax.com
` lowenstein@lowensteinweatherwax.com
`
` Reported By: CAROL E.M. SUGIYAMA, RPR
` Gregory Edwards LLC
` forellana@gregoryedwards.com
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`Teleconference Session - May 11, 2018
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`Page 3
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` P R O C E E D I N G S
`
` --o0o--
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` Friday, May 11, 2018 2:00 p.m.
`
` THE COURT: Good afternoon. This is Judge Ken
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`Barrett with the Patent Trial and Appeal Board. This is
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`IPR 2016-01622. Who do we have on the phone for
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`Petitioner?
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` MR. HOFFMAN: Your Honor, David Hoffman for
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`Petitioner and I have the court reporter on the call as
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`well.
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` THE COURT: Thank you, Mr. Hoffman. And who
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`do we have for the patent owner?
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` MR. WEATHERWAX: Your Honor, this is Ken
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`Weatherwax, lead counsel for patent owner, and I also
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`have my colleague, Nathan Lowenstein.
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` THE COURT: Good afternoon, Gentlemen, and I
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`understand we do have a court reporter on the phone.
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` Mr. Hoffman, if you could please file that
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`transcript as an exhibit when it comes in, that would be
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`much appreciated.
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` MR. HOFFMAN: Yes, Your Honor.
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`Teleconference Session - May 11, 2018
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` THE COURT: Mr. Hoffman, you asked for the
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`call, so I'll let you speak first.
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` MR. HOFFMAN: Certainly, Your Honor. As the
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`Board may remember, Claim 4 in this IPR was not
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`instituted. But under the recent Supreme Court case,
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`SAS, which is occupying quite a bit of time, I'm sure,
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`at the Board, and we believe that it should be.
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` We are in a post final (inaudible) decision
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`situation, obviously, and I'm taking some guidance off
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`the chief judge's slide, which indicated that a
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`petitioner or patent owner may request to extend a
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`hearing deadline if it is past.
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` In this case, the deadline for request for
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`reconsideration has past for our IPR. We're in the
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`period now for seeking an appeal.
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` Certainly, if that's the Board's preferred
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`mechanism to address the issue by filing an appeal and
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`taking it up to the Fifth Circuit, petitioner is willing
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`to do that. But we wanted to ensure that we can take
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`what would be considered a more direct route and file a
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`motion seeking reconsideration via SAS and ask the Board
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`to render a decision on Claim 4, in view of what we
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`Teleconference Session - May 11, 2018
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`believe as a complete briefing on the substance of that
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`claim and its patent ability.
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` THE COURT: Say that last part again. You
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`mentioned complete briefing.
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` MR. HOFFMAN: Yes, Your Honor. We believe
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`that through the motion to amend practice that was taken
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`by the patent owner and the oral argument that we had,
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`the patent owner had a full and fair opportunity to
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`argue for the patentability of Claim 9, obviously, but
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`Claim 4, as the Board may recall, is wholly contained
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`within Claim 9. And in rendering a decision on Claim 9,
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`the Board has essentially rendered a decision on
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`Claim 4.
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` We believe that the Board can stand on that
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`decision, simply expand the final written decision,
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`given that, again, patent owner has a complete full
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`opportunity to argue the merits of Claim 4 both in
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`briefing and before the Board.
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` THE COURT: Okay, thank you for that.
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` So you're not asking for more briefing at this
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`time?
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` MR. HOFFMAN: No, Your Honor, we're not.
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`Teleconference Session - May 11, 2018
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` THE COURT: And I should have mentioned, I
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`have Judge Homere on the phone too, also.
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` What about the other claims and grounds in
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`this case?
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` MR. HOFFMAN: We're only seeking -- certainly
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`we wouldn't oppose if the Board wanted to expand
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`further, but in this case, we only would be seeking
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`reconsideration as to the grounds that apply to Claim 4.
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` THE COURT: The reason I ask is because you
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`invoked SAS, which is at least all claims, and you've
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`seen the guidance, so you know the agency's position is
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`all claims and all ground.
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` I believe the petition had three separate
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`grounds and Claims 1 through 8 and that would also
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`include Claims 2 and Claims 3 that we did not go forward
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`on. Is that your understanding?
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` MR. HOFFMAN: Yes, Your Honor.
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` THE COURT: Okay. All right. Mr. Weatherwax,
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`would you like to respond?
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` MR. WEATHERWAX: I would, Your Honor. Thank
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`you.
`
` I would first point out -- to summarize, we
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`Teleconference Session - May 11, 2018
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`think that the request as stated for partial
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`reinstitution could be denied on some terms as being
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`contrary to SAS, which is just an up or down petition.
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`We're not convinced that the panel has the jurisdiction
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`to do what the petitioner is requesting. We also think
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`it didn't preserve the issue, while it's timely while
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`the trial was pending.
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` And if the Board would have decided that it
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`both can and should do a modification of its institution
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`decision, we think that it shouldn't proceed on the
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`basis of the motion to amend briefing as petitioner is
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`requesting, but we think it's premature to reach that
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`issue.
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` We think the first decision is whether to
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`authorize the out-of-time request for the hearing, and
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`if so, whether to grant it.
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` And the first thing we want to point out in
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`the context of our opposition, the only thing that
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`petitioner asked us was whether we would consent to an
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`out-of-time request that would ask the Board to
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`institute on Claim 4 only, and, quote, "in view of the
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`arguments presented and argued render a final written
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`Teleconference Session - May 11, 2018
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`decision on Claim 4," end quote.
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` We said "no." We said they only cited SAS in
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`the guidance. We didn't think those required that, and
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`we didn't see a basis -- they didn't disclose any other
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`authority. And their response is not to disclose more
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`authority, but to go right to the Board.
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` We're ready to cooperate. We think this case
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`is in a very unusual posture, I think you'll agree. We
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`don't think there's so much of a meet and confer on it.
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` We think what most of the Board should do
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`right now is decide its the power and decision. We
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`think that in every other case that we've seen, when
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`briefing was complete like this, the trial was still
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`pending, that the Board has been sua sponte, granting
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`full institution retroactively and directing the party
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`to meet and confer on what to do next and come back in a
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`week.
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` The panel has not issued an order in this
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`case, and we think that's proper. It's already been an
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`appealable decision in this case, but the deadline is
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`ticking set by the director. And, frankly, a notice of
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`appeal could already have been filed. It hasn't
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`Teleconference Session - May 11, 2018
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`Page 9
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`happened to have been, and we think if the Board were
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`to -- we don't think there's an order that is done.
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`What petitioner has requested is guidance, written
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`guidance on April 26th specifically directed to pending
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`trial, which this is not, and also said that the Board
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`did not have to expand institution. And if it revisited
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`institution, it could either retroactively grant info or
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`deny info based on the circumstances.
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` And in the webinar, which has the slide that
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`Mr. Hoffman is relying upon, none of this is, of course,
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`rule making. He speculates, I think that the Board
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`could waive the deadline in this case. But he also went
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`on the webinar to answer the question of whether there
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`could be full retroactive denial of institution in such
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`a case, and he said "yes."
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` If a lot of claims have been filed by the
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`Board to not have been successfully challenged in the
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`petition, the Board could well decide in the
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`circumstances to fully deny institution. Here, of
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`course, almost half the claims were denied outright
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`institution. So we think the Board should consider
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`that, if it even thinks it has the power to revisit that
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`Teleconference Session - May 11, 2018
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`Page 10
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`issue.
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` We also would point out that, this is not
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`strictly speaking in the Board's position, but we've got
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`issues committed through the director here through both
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`institution and a deadline for the notice of appeal. So
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`we don't think, for example, that the PTAP (sic) could
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`direct us not to file a notice of appeal, which makes
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`this a strange situation. And the chief judge himself
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`said that none of this guidance applies if a notice of
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`appeal has been filed.
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` But I want to turn to the question that
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`petitioner discussed with you here for the first time
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`we've heard him discuss it, which is the choices about
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`what to do afterwards. And we think it's premature to
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`reach that. We think that we could meet and confer on
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`it, but unless the Board tells me that they're not at
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`all going to reach that issue, I'm going to give you
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`some thoughts on it. We think we're constrained to do
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`so.
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` Actually, before I say that, though, I want to
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`say that petitioner has not preserved its objection
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`under the SAS. The federal circuit has said in Belden
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`Teleconference Session - May 11, 2018
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`Page 11
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`(phonetic) that if you want to preserve an objection to
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`the rules, that you've got to do so in a concrete and
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`focused request made when trial is pending.
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` And that is exactly what the petitioner did in
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`the SAS institute case itself. It filed a timely
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`request for the hearing. It laid exactly the issue on
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`which it was eventually going to win in the Supreme
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`Court. So it preserved that issue. Here, the
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`petitioner was well aware of the SAS Institute case. So
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`it had an advantage over the SAS Institute petitioner.
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`Yet it did not file any timely request. So we think
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`it's waived its challenge to partial institution unlike
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`the SAS Institute petitioner, and we think that's what
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`the Board should rule.
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` THE COURT: Okay. So that's based on --
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`because the final written decision was issued, but we're
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`still in the window, correct, for appeal? Because my
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`understanding is the clock was reset with the
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`determination on patent owners' request for
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`reconsideration.
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` Is that your understanding, too?
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` MR. WEATHERWAX: My understanding is that we
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`Teleconference Session - May 11, 2018
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`Page 12
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`filed a timely request for a hearing; petitioner didn't.
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`Now, then that moved the clock. So that's in abeyance.
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`So then you issued your decision denying our request for
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`the hearing but not changing the decision.
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` As I recall, that means that what's left is 63
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`days to file the notice of appeal, which is currently
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`ticking. In other words, you get an extension of time
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`to file the notice of appeal for however long it takes
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`to file the timely request for consideration and have it
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`decided.
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` We don't think that they now -- it doesn't
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`change the deadlines for notice of appeal from 63 days
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`from your decision on April 12th to deny rehearing.
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` THE COURT: Okay, you're saying petitioner's
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`clock ran at the end of the opportunity to file a
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`request for rehearing.
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` MR. WEATHERWAX: That's correct.
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` What they're appealing is the request for
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`original final decision.
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` Now, if the Board were to rule that our denied
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`request for rehearing reopens petitioner's clock for
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`requesting rehearing of the unchanged position, well,
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`Teleconference Session - May 11, 2018
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`Page 13
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`then obviously, they're still within a rehearing
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`deadline.
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` But we don't think that that's correct. The
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`Board may feel otherwise. But the point we make is
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`unless that's true, we think there's a waiver of this
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`issue.
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` THE COURT: Okay.
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` MR. WEATHERWAX: And we wanted to -- the last
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`thing, as I said, we wanted to address is -- well,
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`there's a jurisdictional question we wanted to point
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`out. Not only is it committed to the director to set
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`the deadline, but we think that it's not entirely clear
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`that the Board has jurisdiction as a matter of law to do
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`what it's doing, and we're not aware of any order in
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`which the Board has done so.
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` THE COURT: You say what the Board is doing,
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`the Board has not done anything yet.
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` MR. WEATHERWAX: I understand, but I mean in
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`other cases. I apologize if I was unclear.
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` THE COURT: So explain to me a little bit more
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`on the jurisdiction part. You talked about deadlines
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`committed to the director, okay.
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`Teleconference Session - May 11, 2018
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`Page 14
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` What do you think the Board is doing that we
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`don't have jurisdiction to do? And I'm not pushing
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`back. I'm really interested in your thoughts here.
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` MR. WEATHERWAX: In all honesty, you issued an
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`appealable decision, a final written decision. There
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`was a time frame for requesting a change to that
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`decision on rehearing. That time has elapsed for both
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`parties, we would argue.
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` We filed a request for rehearing, and that was
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`denied in full. And there was no request to respond to
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`it. So we think that closes the door and that the time
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`for appeal is currently ticking. And like I said, a
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`notice of appeal could be filed at any moment. It could
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`have been filed since April 12th. And by the terms of
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`their own guidance, that would mean that we wouldn't
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`even be having this conversation.
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` And so we think it would be strange to rule
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`that the Board will be thinking about something that
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`could be mooted at any moment. We think that the better
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`reasoning is that the Board should not be going back and
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`on behalf of the director changing its mind on
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`institution at this time and waiving or suspending the
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`rule on timeliness and waiving or suspending the waiver
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`of the issue and going back and reopening all the doors.
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` In other words, even if it were
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`jurisdictional, I think the guidance is clear that the
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`Board does not have to revisit its decision. There have
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`been decisions that have come out that have simply gone
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`on and issued a partial final written decision after the
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`guidance and after SAS. For example, (inaudible) 2017
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`87, that went ahead and issued, even though it
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`instituted on only 22 of the 35 claims.
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` THE COURT: What's the number again? I'm
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`sorry. 2017?
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` MR. WEATHERWAX: 201700087, Paper 75. That
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`was on May 2nd.
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` THE COURT: Okay.
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` MR. WEATHERWAX: So unless you have other
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`questions on that, I wanted to address what happens if
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`you were to decide that you can and should go ahead with
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`the partial institution here.
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` I do not think that it would make any sense or
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`be legal to decide on the basis of the papers filed to
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`this point.
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` Certainly, the guidance does not indicate that
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`the Board would be required to do that at all, but we
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`think one of the fundamental issues here is they should
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`not render a final written decision on other than the
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`grounds and evidence that were submitted with the
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`petition, first of all.
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` The guidance does not determine that the
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`petitioner should be allowed to supplement their
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`petition, and other APJ that have instituted on the
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`basis of SAS have remarked this is not an invitation to
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`petitioner to supplement its petition. I'll point to
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`PGR2018 number 1 where they said that in Paper 17.
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` We also think that the SAS Institute petition
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`itself confirms that you can't assert post-petition
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`grounds and evidence against these claims, the
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`petitioner controls the scope of review. And SAS
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`Institute specifically said that the statute doesn't
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`contemplate, quote, "a petition that asks not the
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`director to initiate whatever kind of (inaudible) he
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`might choose," end quote. Must be, quote "guided by the
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`petition describing the grounds on which the challenge
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`to each claim is based."
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` There's no quote like this to the part the
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`petition institute in a different review of its own
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`design. And we would point out that the Board denied
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`institution on Claim 4 on the merits, denied rehearing
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`on the merits, denied a second petition on the merits,
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`and denied rehearing of that on the merits.
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` So there's no reason to give it a fifth or
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`sixth shot, even if it were proper under the
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`circumstances to stand on what we have thought. And we
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`would point second to the fact that the final written
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`decision specifically pointed out that the only
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`arguments that we have filed post institution are two
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`pages in our reply in support of our motion to amend.
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` And there's a reason for that, because we were
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`relying on the partial institution decision. And we
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`think that we should not be subjected to our reliance on
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`that decision. The petitioner might argue that had the
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`Board known of SAS, it would have fully instituted, but
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`I assume you, we would have proceeded very differently.
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`But it came to whether we filed a patent owner response
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`and what, if any, motion to amend was filed.
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` We would note that there was -- if you want to
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`have guidance as to what to do in such a situation, we
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`did find a case where what happened was that the Board
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`expunged all of the great things that happened after the
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`partial institution decision. So an Elite performance,
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`which is IPR 2017-01676, the Board had already received
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`a patent owner response and motion to amend, and then
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`along came SAS. What the Board did was it ordered full
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`institution, and it asked the parties to meet and,
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`quote, "confer and attempt to come to an agreement as to
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`any needed modifications." But they said, quote, "The
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`proposed modifications must include expunging the patent
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`owner's responses and motions to amend already of record
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`and allowing the patent owner to file new patent owner's
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`responses and motions to amend." And that order has
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`been issued in three IPRs, the one I mentioned,
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`2017-1680 and 2017-1689.
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` And if the Board were to find it appropriate
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`to (inaudible) institute here, we think that that would
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`be a relatively appropriate procedure in this case,
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`because things would have been very different in the
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`briefing. As you know, we relied on the partial
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`institution which is rather unusual, I think. We're in
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`an unusual posture.
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` Another thing the Board could do is what's
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`especially suggested in the written guidance on SAS. It
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`could retroactively deny institution and fall, as I
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`indicated, and that would not deprive the petitioner of
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`the right to challenge this claim. They could do it in
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`district court. Indeed, if you expunge everything, they
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`could bring the final written decision to the district
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`court and argue that it is persuasive. And if it is,
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`they'll win.
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` So we think that certainly what petitioner
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`asks for shouldn't be granted even if the Board has the
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`power to do so. And if the institution is granted, the
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`decision should be rendered on only in view of the
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`arguments presented in argument argued and given
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`evidence in the petition which the Board has already
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`considered and rejected many times.
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` THE COURT: Okay. That was very thoughtful.
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` Mr. Hoffman, I'd like to give you an
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`opportunity to respond. But, first, as you do so, I'm
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`intrigued with Mr. Weatherwax's argument that should we
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`go forward and institute on all these claims, shouldn't
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`petitioner be bound by the position set forth in the
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`petition? That's where the prima facie case has to be
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`made out.
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` MR. HOFFMAN: I can start there, Your Honor.
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` I guess I will start by saying that we don't
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`intend to provide any additional records or additional
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`evidence in this case. However, it is patent owners'
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`own decision to move to amend here. It moved to amend
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`on claims that were found to be unpatentable in an
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`institution decision. If the patent owner simply
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`stopped there, the record would be what it is, but it's
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`not.
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` In fact, the Board has rendered a final
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`written decision finding claims invalid and finding
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`unpatentable and finding Claim 9 unpatentable. I
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`appreciate the patent owner's desire to make that go
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`away or attempt to undo it, but that's not the
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`appropriate remedy given the Board has already
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`considered the evidence and rendered a decision.
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` I haven't looked at these cases that
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`Mr. Weatherwax cited because it hadn't been raised to
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`our attention until now. But it certainly sounds as if
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`what is going on there was a process that was partway
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`complete, I mean, where the patent owner essentially
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`wanted to start over again. I guess they hadn't
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`finished the briefing up, that is distinguishable from
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`here. We've gone through a full and fair briefing on
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`all of the issues. We're not asking for any additional
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`briefing or to add anything to what is already in the
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`record.
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` If I could briefly address some of the issues,
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`and there was a lot so I may not get them all, and I
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`think the briefing could help fill in some of the
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`details here.
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` But as to the notice of appeal, it sounded as
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`if at one point that the patent owner was asserting that
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`there was now a different appellate period for
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`petitioner. I don't believe that is correct. I've
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`never seen law that says that.
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` We're still within the appellate period, and
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`the patent owner is certainly right. They could have
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`filed a notice of appeal. In fact, they still can. And
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`if that does happen, as I understand it, what will occur
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`is that the federal circuit will receive immediate
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`jurisdiction over the matter, and then we'd have to move
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`to remand back to the Board that there's no
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`consideration.
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` Certainly, we don't think that's the most
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`efficient way to proceed, but that always remains a
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`possibility if they were to choose to file an motion to
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`amend.
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` As to the -- sorry, Your Honor.
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` THE COURT: I understand Mr. Weatherwax not
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`saying that you've met the time to appeal, but that
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`petitioner had missed the time to file a request for
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`reconsideration; and, therefore, that's water under the
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`bridge at this point, and the only thing that's left is
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`appeal.
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` MR. HOFFMAN: Your Honor, I don't think
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`dispute that we have certainly missed the period to
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`request reconsideration, and that is in fact why we're
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`asking to file it out of time.
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` And in an attempt to avoid the potential
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`effort and work for public resources, private resources,
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`of going through with an appeal just to be remanded
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`back. So that was all what we were saying. If I
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`misunderstood, I apologize. We're not disputing that we
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`are requesting leave from the Board to file out of time
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`on the request for reconsideration.
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` As to preserving the issue, we don't believe
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`there is any waiver here. Originally Claim 4 was not
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`instituted. Briefing in the case have to focus on the
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`issues and claims that pertain to the instituted claims
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`and grounds in the proceeding. There was no opportunity
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`in the proceeding to provide a response to noninstituted
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`claims. That was to say a request for reconsideration,
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`but that's not required in any sort of context for
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`waiver.
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` So the first chance that we would have to
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`raise this issue within the confines of previously
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`instituted IPR would be on appeal. And so we don't
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`believe there's any waiver.
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` As to the up and down, we were attempting to
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`focus dispute and to limit the amount of work for the
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`Board and the parties, as focusing on the grounds that
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`pertain to Claim 4.
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` To the extent there would be any argument that
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`somehow that is a defect in the request, petitioner is
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`happy to expand the request, and (inaudible) is the
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`request if that's a requirement to cover all claims and
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`grounds. But we certainly don't believe that the
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`decision to focus the request is somehow the barrier to
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`its being granted, and we could expand.
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` As to meeting and conferring, there was no
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`intention here not to meet and confer. Mr. Weatherwax's
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`e-mail did not seem, as least the way I reviewed it, to
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`open the option for meet and confer. We think certainly
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`there are scheduling issues or anything else that we
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`need to meet and confer on, we'll be happy to do so, and
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`should do so.
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` MR. WEATHERWAX: May we briefly respond, Your
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`Honor? This is Ken Weatherwax.
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` THE COURT: Certainly. Certainly,
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`Mr. Weatherwax. Go ahead.
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` MR. WEATHERWAX: If Mr. Hoffman is finished.
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`I assume he is.
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` MR. HOFFMAN: I am.
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` MR. WEATHERWAX: Mr. Hoffman said a couple of
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`things that I want to respond to. He said that these
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`claims had been found unpatentable in the institution
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`decision. Of course, that's not true. That's just a
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`preliminary determination on a very low standard.
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` It's argued that the Board has already
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`considered these issues. No, indeed. As you know, we
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`filed only two pages of evidence-free argument on these
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`issues because we were relying on the partial
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`institution and the Board's previous decision in
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`Amerigen.
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` Now this panel disagreed with us in that
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`reliance. But it is remarkable for petitioner to argue
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`that it had no opportunity to respond to the partial
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`institution for two reasons: (1) If that is the case,
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`then we most certainly have no opportunity to file a
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`further briefing on this in response to the finding that
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`the partial institution couldn't be relied upon.
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` The first time we could have done so is in our
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`reply in support of our motion to amend. That would
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`have been the first time any expert evidence on our side
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`appeared, that we filed any post-institution evidence at
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`all, and that would seem extraordinarily strange to be
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`an opportunity to begin that process under the rules.
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` As you know, there were two changes of law in
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`this case, the decision in Aqua (sic) and the decision
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`in SAS. So at this point we're in a very unusual
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`posture.
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` And the second reason it's remarkable for
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`petitioner to argue that it had no opportunity to raise
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`this issue is because that it exactly had the same
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`opportunity that the petitioner did in SAS Institute.
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`It could have filed a timely petition for rehearing at
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`the final written decision. And with a concrete focused
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`argument, it could have said that SAS Institute is
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`correct, and it should have been allowed full
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`institution, and then it would have preserved the issue,
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`just like the pe
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