`
`
`
`
`
`Case IPR2016-01622
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`
`Petitioner
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`
`Patent Owner
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`PATENT OWNER’S
`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 42.71(d)(2)
`OF JUNE 11, 2018 ORDER
`INSTITUTING REVIEW OF CHALLENGED CLAIM 4
`AND ORDERING THAT CLAIM 4 IS UNPATENTABLE
`
`
`
`
`
`

`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I. 
`
`THE BOARD SHOULD HAVE FOUND THAT PETITIONER
`WAIVED ITS SAS ARGUMENT IN ACCORDANCE WITH
`THE DIRECTOR’S POSITION ON WAIVER OF SAS
`ARGUMENTS. .............................................................................................. 1 
`
`A. 
`B. 
`
`The Procedural History Of The June 11 Order ..................................... 2 
`The Board Erred In Ruling On The SAS Waiver Issue Without
`Considering The Director’s Position On The SAS Waiver Issue. ......... 3 
`C.  Under The Director’s Own Position On When Petitioners’ SAS
`Challenges Are Waived, Petitioner’s SAS Challenge Was Waived. ..... 7 
`The Board Should Explain Its Answer To The Waiver Question. ..... 11 
`D. 
`II.  THE BOARD SHOULD HAVE GRANTED PATENT OWNER’S
`UNOPPOSED REQUEST TO RESPOND TO A TRIAL ON
`CLAIM 4. ...................................................................................................... 12 
`
`III.  THERE IS GOOD CAUSE TO ADD EXHIBITS TO THE
`RECORD. ..................................................................................................... 15 
`
`IV.  CONCLUSION AND RELIEF REQUESTED ......................................... 15 
`
`
`
` i
`
`

`

`
`
`
`CASES 
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Abbott Labs. v. United States, 573 F.3d 1327 (Fed. Cir. 2009) ................................. 5
`
`Cooper Techs. Co. v. Dudas, 536 F.3d 1330 (Fed. Cir. 2008) .................................. 5
`
`Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1028,
`reh’g en banc denied, 826 F.3d 1366 (Fed. Cir. 2016),
`cert. denied, 137 S. Ct. 625 (2017) ....................................................................... 7
`
`Freytag v. C.I.R., 501 U.S. 868 (1991) ...................................................................... 9
`
`Hernandez v. Air Force, 498 F.3d 1328 (Fed. Cir. 2007) ......................................... 4
`
`In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc) ............................................ 5
`
`In re DBC, 545 F.3d 1373 (Fed. Cir. 2008) ............................................................... 9
`
`Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Ins. Co., 463 U.S. 29 (1983) ......... 12
`
`PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) ............... 12
`
`PGS Geophysical AS v. Director, 891 F.3d 1354, 2018 WL 2727663,
`2018 U.S. App. LEXIS 15418 (Fed. Cir. 2018). ..................................... 2, 3, 4, 7
`
`PGS Geophysical AS v. Iancu, No. 16-2470 (Fed. Cir. May 4, 2018) (per curiam)
`(nonprecedential), later proceeding, 801 F.3d 1354 (Fed. Cir. 2018) ................. 6
`
`SAS Institute, Inc. v. Iancu, 584 U.S. ___,
`138 S. Ct. 1348 (2018) ............................................................... 1, 2, 3, 10, 11, 15
`
`Service v. Dulles, 354 U.S. 363 (1957) ...................................................................... 4
`
`Splane v. West, 216 F.3d 1058 (Fed. Cir. 2000) ........................................................ 5
`
`Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) ............ 14
`
`United States v. L.A. Tucker Truck Lines, Inc., 344 U.S. 33 (1952) ......................... 9
`
` ii
`
`

`

`
`
`United States v. Olano, 507 U.S. 725 (1993) ............................................................ 9
`
`Woodford v. Ngo, 548 U.S. 81 (2006) ....................................................................... 9
`
` STATUTES 
`
`35 U.S.C. § 2(b)(2)(A) ............................................................................................... 5
`
`35 U.S.C. § 3(a) ......................................................................................................... 4
`
`35 U.S.C. § 316(a)(4) ................................................................................................. 5
`
`35 U.S.C. § 316(a)(8) ............................................................................................... 12
`
`5 U.S.C. § 557(c)(3)(A) ........................................................................................... 12
`
`REGULATIONS AND RULEMAKING 
`
`37 C.F.R. § 42.71(d)(2) ........................................................................................... 11
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`37 C.F.R. § 42.71(d)(2) .............................................................................................. 1
`
`Patent Trial and Appeal Board S.O.P. #2 (rev. 9) § VI-B ....................................... 13
`
`Trial Practice Guide, 77 FR 48,756 (Aug. 14, 2012) .............................................. 15
`
`OTHER AUTHORITIES 
`
`Joint Comments Of Appellant And Intervenor Iancu Regarding Effect
`Of SAS Institute v. Iancu On Disposition Of Appeal, PGS
`Geophysical AS v. Iancu, 891 F.3d 1354 (Fed. Cir. 2018) (No. 16-2470) .......... 6
`
`Response For Intervenor—Director of USPTO, Polaris Indus. Inc. v.
`Arctic Cat, Inc., 2018 U.S. App. LEXIS 15443 (Fed. Cir. 2018)
`(No. 16-2470) (nonprecedential) .......................................................................... 7
`
`Supp. Br. For Intervenor—Director of USPTO, PGS Geophysical AS v.
`Iancu, 891 F.3d 1354 (Fed. Cir. 2018) (No. 16-2470) ......................................... 6
`
`
`
` iii
`
`

`

`
`
`EXHIBIT LIST
`Exhibit 2001 Cara Garretson. “More DRAM vendors involved in Justice
`Department probe.” IDG News Service July 21, 2002. Computer
`World, Inc. November 21, 2016
`Exhibit 2002 “Error Correction Code in SoC FPGA-Based Memory Systems.”
`Altera Corporation April 2012.
`Exhibit 2003 “133 MHz PC SDRAM 64-Bit Non-ECC/Parity 144 Pin
`UNBUFFERED SO-DIMM SPECIFICATION.” Intel, Revision
`1.0C. August 2000
`Exhibit 2004 “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)
`Exhibit 2007 Patent Owner’s Motion To Amend, Amerigen Pharms. Ltd. v.
`Shire LLC, IPR2015-02009, Paper 14 (PTAB Jul. 18, 2016)
`Exhibit 2008 Petitioner’s Opposition To Motion To Amend, Amerigen Pharms.
`v. Shire LLC, IPR2015-02009, Paper 17 (PTAB Oct. 18, 2016)
`Exhibit 2009 Reply To Petitioner’s Opposition, Amerigen Pharms. Ltd. v.
`Shire LLC, IPR2015-02009, Paper 21 (PTAB Nov. 17, 2016)
`Exhibit 2010 Petitioner’s Request For Oral Argument, Amerigen Pharms. Ltd.
`v. Shire LLC, IPR2015-02009, Paper 27 (PTAB Dec. 9, 2017)
`Exhibit 2011 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)
`
`Exhibit 2006
`
`Exhibit 2013 Exh. 1 To Deposition Transcript Of Subramanian (Apr. 19, 2017)
`
`Exhibit 2014 Transcript of October 5, 2017 Conference Call
`
`Exhibit 2015
`
`[expunged]
`
`Exhibit 2016
`[NEW]
`
`Exhibit 2017
`[NEW]
`
`Joint Comments Of Appellant PGS Geophysical And Intervenor
`Andrei Iancu Regarding Effect Of SAS Institute v. Iancu On
`Disposition Of Appeal, PGS Geophysical AS v. Iancu, 891 F.3d
`1354 (Fed. Cir. 2018) (No. 16-2470)
`PGS Geophysical AS v. Iancu, No. 16-2470 (Fed. Cir. May 4,
`2018) (nonprecedential order) (per curiam)
`
` iv
`
`

`

`
`
`Exhibit 2018
`[NEW]
`Exhibit 2019
`[NEW]
`
`Exhibit 2020
`[NEW]
`
`Supp. Br. For Intervenor—Director of USPTO, PGS Geophysical
`AS v. Iancu, 891 F.3d 1354 (Fed. Cir. 2018) (No. 16-2470)
`Emails to and from Board (June 8-12, 2018) regarding Patent
`Owner’s requests to brief impact of PGS Geophysical AS v.
`Iancu, No. 16-2470
`Response. Br. For Intervenor—Director of USPTO, PGS
`Geophysical AS v. Iancu, 891 F.3d 1354 (Fed. Cir. 2018) (No.
`16-2470)
`
` v
`
`

`

`
`
`Patent Owner respectfully requests rehearing of the Board’s June 11, 2018
`
`Order (“June 11 Order”). This request is limited to two aspects of the Order: (i)
`
`the Board’s grant on the Director’s behalf of Petitioner’s request to modify the
`
`institution decision to include review of challenged claim 4 of the ’414 patent; and
`
`(ii) the Board’s “ordering that claim 4 is unpatentable.” June 11 Order, 14-15.
`
`Rehearing is not requested as to claims 2 or 3.
`
`Patent Owner respectfully asks that the Board reconsider Petitioner’s request
`
`to modify the institution decision, and deny that request on the basis that, under the
`
`Director’s position on that issue, Ex. 2108, 8-10, Petitioner’s request was waived.
`
`If not, Patent Owner asks that the Board reconsider its order that claim 4 is
`
`unpatentable, withdraw that order, and authorize Patent Owner to file a response to
`
`the Petition with respect to the instituted ground of review of claim 4.
`
`This request is authorized and timely under 37 C.F.R. § 42.71(d) & (d)(2).
`
`I.
`
`THE BOARD SHOULD HAVE FOUND THAT PETITIONER
`WAIVED ITS SAS ARGUMENT IN ACCORDANCE WITH THE
`DIRECTOR’S POSITION ON WAIVER OF SAS ARGUMENTS.
`
`The Board ignored Patent Owner’s request to brief the Board regarding the
`
`Director’s position on when challenges to partial institution under the argument
`
`that prevailed in SAS Institute v. Iancu are waived—a position set forth in briefing
`
`in a precedential Federal Circuit case that issued after the completion of briefing on
`
`Petitioner’s out of time request for rehearing based on the SAS argument, and in
`
`
`
`1
`
`

`

`
`
`other proceedings as well. Without acknowledging Patent Owner’s pending
`
`request to brief that issue, the Board ruled, on the Director’s behalf, that Petitioner
`
`did not waive its SAS challenge. The Board should reconsider its finding of no
`
`waiver, apply the Director’s position on waiver, and find waiver.
`
`A. The Procedural History Of The June 11 Order
`
`It is undisputed that Petitioner failed to file a timely challenge to the Board’s
`
`institution decision based on the argument that prevailed in SAS Institute, Inc. v.
`
`Iancu, 138 S. Ct. 1348 (2018). Paper 39, 6. Nevertheless, after the time for
`
`requesting rehearing of the Final Written Decision in this case had run, the Board
`
`authorized Petitioner to file an out of time request for rehearing of the institution
`
`decision and Final Written Decision based on an SAS argument. Paper 39, 6.
`
`On June 5, Patent Owner filed a response to Petitioner’s rehearing request
`
`explaining why Petitioner had waived its challenge to partial institution based on
`
`the SAS argument by failing to timely raise that argument, because, inter alia, the
`
`argument was waivable and Petitioner should have known it had to timely raise it
`
`before the Board, just as the petitioner in SAS itself had raised it. Paper 41, 2-4.
`
`On June 7, the Federal Circuit issued the precedential decision PGS
`
`Geophysical AS v. Director Iancu, confirming that SAS partial institution
`
`challenges are “waivable,” declining to “sua sponte revive the ‘non-instituted’
`
`claims and grounds” in that case, and holding that SAS’s reasoning “strongly
`
`
`
`2
`
`

`

`
`
`counsel[s] against” “exercis[ing] any discretion to revive... non-instituted claims
`
`and grounds” “in the absence of an appropriate request for relief on that basis.”
`
`891 F.3d 1354, 2018 U.S. App. LEXIS 15418, *2, *13-14 (Fed. Cir. 2018).
`
`Patent Owner promptly emailed the Board asking permission to file a brief
`
`addressing PGS’s impact, and more particularly, “pages 8-10” of “the Director’s
`
`5/21/18 Supplemental Brief on SAS” in that case. Ex. 2019, 2-3—which set forth a
`
`position virtually identical to Patent Owner’s waiver argument. See infra § I-C.
`
`On June 11, without having acted on Patent Owner’s pending requests, the
`
`Board issued its June 11 Order. The Order granted in relevant part Petitioner’s
`
`request for rehearing, and rejected, without any reasoning, Patent Owner’s waiver
`
`argument. June 11 Order, 6. The Order did not mention PGS, the Director’s
`
`position on SAS, or Patent Owner’s pending request to brief those issues.
`
`The next day, the Board denied Patent Owner’s briefing request. Ex. 2019.
`
`B.
`
`The Board Erred In Ruling On The SAS Waiver Issue Without
`Considering The Director’s Position On The SAS Waiver Issue.
`
`The Board erred by deciding whether Petitioner waived its SAS challenge
`
`without addressing the Director’s position on when petitioners waive SAS
`
`challenges. Ex. 2019. Patent Owner timely raised the issue; the Director is bound
`
`by his considered and publicly repeated position; and the Board made its institution
`
`and waiver decisions in the June 11 Order on the Director’s behalf. The Board
`
`should have considered, and applied, the Director’s position on SAS waiver.
`
`
`
`3
`
`

`

`
`
`First, Patent Owner did all it could do to bring this issue to the Board’s
`
`attention. The Board does not permit argument by email. Patent Owner sought
`
`permission to brief its impact as soon as PGS issued, and specifically sought
`
`permission to bring to the Board’s attention the Director’s position on pages 8–10
`
`of his SAS brief in the PGS case. Ex. 2019. The Board ignored, then belatedly
`
`denied, Patent Owner’s timely request, without explanation. Id. The Board should
`
`reconsider its decision in light of this timely raised authority.
`
`Second, the Director’s position on SAS waiver in his SAS briefing in PGS
`
`properly applies to the Board’s decision on the Director’s behalf. The Director is
`
`vested with “[t]he powers and duties of” the USPTO, and specifically “responsible
`
`for providing policy direction and management supervision for the Office.” 35
`
`U.S.C. § 3(a). He is empowered to “impose upon himself . . . substantive and
`
`procedural standards, . . . and having done so he could not . . . proceed without
`
`regard to them,” at least not without properly explaining his changed position.
`
`Service v. Dulles, 354 U.S. 363, 388 (1957); see also Hernandez v. Air Force, 498
`
`F.3d 1328, 1332 (Fed. Cir. 2007) (“agencies are bound to follow their own rules,
`
`even self-imposed procedural rules that limit otherwise discretionary decisions”).
`
`Even if the Director’s position were not controlling, it would be at least as
`
`relevant as the Office’s other, more general guidance on SAS. Generally “any
`
`directive by an agency head must be followed by agency employees.” Splane v.
`
`
`
`4
`
`

`

`
`
`West, 216 F.3d 1058, 1064 (Fed. Cir. 2000). When the Director sets forth an
`
`express, on the record interpretation of the rules governing waiver, that position
`
`“plainly governs the conduct of proceedings in the Office” on that issue, as an
`
`exercise of “plenary authority over PTO practice.” Cooper Techs. Co. v. Dudas,
`
`536 F.3d 1330, 1335-36 (Fed. Cir. 2008) (citations omitted) (holding that Official
`
`Gazette Notice was binding on Office); see also 35 U.S.C. §§ 2(b)(2)(A),
`
`316(a)(4). Even if the Board makes independent decisions as the Director’s
`
`delegee, such “‘independence’ in the administrative adjudicative function is not
`
`independence from the policies and program of the agency, the policies and
`
`programs of which are uniquely the responsibility of the agency head.” In re
`
`Alappat, 33 F.3d 1526, 1579 (Fed. Cir. 1994) (en banc) (Plager, J., concurring).
`
`“[A]gency positions articulated in litigation briefs,” like the Director’s SAS
`
`brief here, are fully “entitled to deference” when they “represen[t] the agency’s
`
`considered position . . . as to the issue directly involved in the litigation”—and here
`
`“the position[s] articulated in [the Director’s PGS] briefs are the types of
`
`considered determinations that would normally be entitled to deference.” Abbott
`
`Labs. v. United States, 573 F.3d 1327, 1333 (Fed. Cir. 2009). The Director has
`
`filed not one, not two, but at least three briefs consistently stating his position.
`
`First, in response to the court’s “request for a comment on the effect of
`
`[SAS] on the disposition of [PGS’] appeal,” Director Iancu submitted a joint brief,
`
`
`
`5
`
`

`

`
`
`co-signed by PTO Solicitor Nathan Kelly, stating the Director’s position that the
`
`petitioner had failed to “preserv[e] an objection to the [Board’s] partial institution.”
`
`Joint Comments Of Appellant And Intervenor Iancu Regarding Effect Of SAS
`
`Institute v. Iancu On Disposition Of Appeal, PGS (No. 16-2470) [Ex. 2016], at 2.
`
`Next, the PGS Court sought still more guidance from the Director regarding
`
`his position on SAS. It ordered him “to file [a] supplemental brie[f] that fully
`
`explain[ed] the legal basis for [his] position” in the prior brief, specifically
`
`including his “ful[l] expla[]n[ation] [of] the legal basis for [his] position” on “what
`
`the consequence of [a SAS violation] would be.” PGS, No. 16-2470 (Fed. Cir. May
`
`4, 2018) (per curiam) [Ex. 2017]. The Director duly filed a supplemental brief,
`
`setting forth in more detail his considered position on why the petitioner waived its
`
`challenge to partial institution under SAS by failing to timely raise it before the
`
`Board. Supp. Br. For Intervenor—Director of USPTO, PGS (No. 16-2470) [Ex.
`
`2018], at 8-10. As we shall see, infra § I-C, that position is essentially identical to
`
`Patent Owner’s waiver argument here.
`
`And that was not all. On the very same day that Director Iancu filed his
`
`supplemental brief in PGS, he filed a brief restating the same position, verbatim,
`
`on waiver of SAS challenges before the Board in a different Federal Circuit case,
`
`one in which the patent owner (rather than the petitioner) had requested remand
`
`based on the SAS argument. Response For Intervenor—Director of USPTO,
`
`
`
`6
`
`

`

`
`
`Polaris Indus. Inc. v. Arctic Cat, Inc. (No. 16-2470) [Ex. 2020], at 7-8. Thus, the
`
`Director has now made clear both (i) that this is his considered position on SAS
`
`waiver, and (ii) that his position does not narrowly apply to any one case’s facts.
`
`Third, the Director’s position specifically applies to the waiver question in
`
`the June 11 Order, because the Board makes its institution determinations on the
`
`Director’s behalf. “The America Invents Act gives the Director the authority to
`
`determine whether an inter partes review should be initiated, and the Director has
`
`delegated this authority to the Board.” Ethicon Endo-Surgery, Inc. v. Covidien LP,
`
`812 F.3d 1023, 1028, reh’g en banc denied, 826 F.3d 1366 (Fed. Cir. 2016), cert.
`
`denied, 137 S. Ct. 625 (2017). Here, what the Board must decide is whether
`
`Petitioner waived its challenge to the institution decision. As the Director’s
`
`delegee, the Board should follow the Director’s position on that question.
`
`C. Under The Director’s Own Position On When Petitioners’ SAS
`Challenges Are Waived, Petitioner’s SAS Challenge Was Waived.
`
`The Federal Circuit’s precedential PGS decision is itself highly pertinent to
`
`the Board’s delegated institution decision, and should have been considered by the
`
`June 11 Order. PGS confirmed SAS challenges are “waivable,” and that “the
`
`[Supreme] Court’s emphasis in SAS on the petitioner’s control of the contours of
`
`the proceeding” “strongly counsel[s] against” “exercis[ing] any discretion to revive
`
`the non-instituted claims and grounds” “in the absence of an appropriate request
`
`for relief on that basis.” PGS, 2018 U.S. App. LEXIS 15418, *13-14. The PGS
`
`
`
`7
`
`

`

`
`
`Court “d[id] not rule on whether a different conclusion might be warranted in a
`
`case in which a party has sought SAS-based relief from us,” id., but the Director’s
`
`position in that case does address that situation. In fact, his position on the SAS
`
`waiver question is indistinguishable from Patent Owner’s own argument in this
`
`case. Applied to the facts of this case, the Director’s position confirms that Patent
`
`Owner is correct that Petitioner waived its SAS challenge to partial institution.
`
`Patent Owner argued here that Petitioner waived its SAS challenge because,
`
`[t]o preserve an SAS challenge to the Board’s partial institution,
`Petitioner had to timely raise the issue before the Board. This is
`not . . . an unwaivable challenge . . . . Petitioner should have known of
`its need to preserve this issue. . . . True, the Supreme Court had not
`yet actually decided SAS. But that did not stop the petitioner in SAS
`from timely presenting the Board with the exact statutory challenge to
`the partial institution rule it would eventually win. Therefore, if
`Petitioner wanted to take advantage of the law possibly turning in its
`favor, it needed to timely [raise the argument] . . . . That’s exactly
`what the petitioner in SAS did. Unlike the SAS petitioner, Petitioner
`made the choice to forgo such arguments. The consequence of that
`choice . . . is forfeiture.
`
`Paper 41 at 2-4 (emphasis in original, citations and paragraph breaks omitted). The
`
`Board rejected this argument without any reasoning, simply stating that it “d[id]
`
`not find Patent Owner’s waiver argument to be persuasive.” Paper 42 at 6.
`
`
`
`8
`
`

`

`
`
`Director Iancu’s position on when SAS challenges are waived is materially
`
`identical to Patent Owner’s waiver argument. In PGS, the Director explained:
`
`It is well-established that a party generally may not challenge an
`agency decision on a basis that was not presented to the agency. See
`Woodford v. Ngo, 548 U.S. 81, 90 (2006) (“As a general rule . . .
`courts should not ‘topple over administrative decisions unless the
`administrative body has not only erred, but has erred against objection
`made at the . . . appropriate time under its practice.”) (quoting United
`States v. L.A. Tucker Truck Lines, Inc., 344 U.S. 33, 37 (1952)
`(emphasis omitted)); In re DBC, 545 F.3d 1373, 1378 (Fed. Cir.
`2008). . . . Indeed, “‘[n]o procedural principle is more familiar to this
`Court than that a constitutional right,’ or a right of any other sort,
`‘may be forfeited . . . by the failure to make timely assertion of the
`right before a tribunal having jurisdiction to determine it.”’ United
`States v. Olano, 507 U.S. 725, 731 (1993)). Forfeiture is “not a mere
`technicality and is essential to the orderly administration of justice.”
`Freytag v. C.I.R., 501 U.S. 868, 894–95 (1991).
`In this case, . . . the parties forfeited their right to seek relief at
`
`the agency . . . . If the petitioner was dissatisfied with the scope of the
`review, it should have raised that argument before the Board . . . .
`Parties know they have this option. Indeed, in SAS itself, the
`petitioner amply preserved its challenge to the partial institution
`before the Board . . . .
`
`Ex. 2018 at 8-10 (emphases added, citation omitted).
`
`Thus, it is the Director’s position, and Patent Owner’s position, that:
`
`
`
`9
`
`

`

`
`
` SAS challenges are waivable;
`
` to preserve “that argument,” petitioners must “timely” raise it before the Board;
`
` petitioners “know they have this option” and indeed the petitioner “in SAS . . .
`
`amply preserved its challenge to the partial institution before the Board”; and
`
` challenges not timely raised before the Board are forfeited.
`
`Applying the Director’s position in this case, the Board should find waiver.
`
`No factual distinctions distinguish this case from the Director’s position.
`
`Petitioner did, it is true, previously request rehearing of the Board’s partial
`
`institution decision. Papers 11 & 16. But that makes no difference. Petitioner
`
`challenged the institution decision only on the merits of its determination that
`
`claim 4 had not been shown to be reasonably likely to be found unpatentable.
`
`Paper 16, 3. Petitioner did not raise the SAS argument. Indeed, Petitioner did not
`
`even challenge the partial-ness of the institution. As a matter of fact, Petitioner
`
`challenged the denial of review as to only one of the several claims on which
`
`review was denied. Thus, Petitioner did not raise the SAS argument, which, as the
`
`Director explained, is what had to be raised to be preserved. Ex. 2018, 10.
`
`Petitioner also, it is true, eventually attempted to raise the SAS argument
`
`before the Board in this case—over a week after SAS was decided. That too makes
`
`no difference. Petitioner did not raise this issue until weeks after the expiration of
`
`the very last deadline for raising the issue—the 30-day extended deadline for
`
`
`
`10
`
`

`

`
`
`rehearing requests that only applies after “the entry of a final decision” ending the
`
`case, 37 C.F.R. § 42.71(d)(2))—and Petitioner expressly acknowledged that its
`
`request was not timely. Paper 39, 4. The Director’s position leaves no room for
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`excusing such delay. As the Director says, petitioners should have “know[n]”
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`about the need to preserve this argument throughout the case, including before
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`SAS was decided—as evidenced by the fact that the petitioner in SAS itself “amply
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`preserved” the issue without benefit of the SAS decision beforehand. Ex. 2018, 10.
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`Petitioner, like the PGS petitioner, raised no timely SAS challenge.
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`Petitioner, like the PGS petitioner, based its actions on the assumption that pre-SAS
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`law would not change. For the reasons the Director has explained, it is good
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`policy, and good law, to hold Petitioner to that choice. Id.1
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`D. The Board Should Explain Its Answer To The Waiver Question.
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`Even if the Board did not err by not considering the Director’s position
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`when deciding whether Petitioner’s challenge was waived, the Board erred by
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`failing to set forth the reason and basis for its decision on the waiver question.
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`“Critically, in order to allow effective judicial review, the agency is
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`obligated to provide an administrative record showing the evidence on which [its]
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`1 And, if Petitioner is not held to the consequences of its assumption that
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`pre-SAS law would not change, Patent Owner should not be, either. See infra § II.
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`
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`11
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`
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`findings are based, accompanied by the agency's reasoning in reaching its
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`conclusions.” PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed.
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`Cir. 2017) (citations omitted); see Admin. Proc. Act, 5 U.S.C. § 557(c)(3)(A)).
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`The Board may not find no waiver without a rational explanation for its decision.
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`This requirement becomes all the more important if the Board departs from
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`the Director’s position. See Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Ins. Co.,
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`463 U.S. 29, 57 (1983) (“an agency changing its course must supply a reasoned
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`analysis”) (citation omitted). Even if the Board can decide on the Director’s behalf
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`that there was not waiver where the Director would find that there was, the Board
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`must set forth a reasoned explanation for its action.2
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`II.
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`THE BOARD SHOULD HAVE GRANTED PATENT OWNER’S
`UNOPPOSED REQUEST TO RESPOND TO A TRIAL ON CLAIM 4.
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`Even if the Board maintains its decision to modify institution to expand trial
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`to claim 4 and additional grounds, the Board erred by not allowing Patent Owner to
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`file a response to the new institution. 35 U.S.C. § 316(a)(8) provides the right to
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`file “a response to the petition” “after an inter partes review has been instituted.”
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`2 The June 11 Order’s assertion that “expediency and . . . the conservation of
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`resources” support Petitioner’s request, Paper 42, 7, is not only conclusory, but
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`unsupported. It is a finding of waiver, not a retroactive institution of review, that
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`would best simplify this case, conserve resources, and speedily end the proceeding.
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`12
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`

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`Until now, the Board unambiguously, repeatedly held that no “inter partes review
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`has been instituted” on claim 4. Accordingly, Patent Owner now has the right to
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`file a response to the Petition after inter partes review has been granted on claim 4.
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`Moreover, Patent Owner’s request to file such a response was unopposed. Paper
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`40, 4 n.2. Therefore, the Board’s denial of authorization was necessarily sua
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`sponte. The Board provides no logical explanation for denying sua sponte Patent
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`Owner’s right to respond to the institution for the first time of review on claim 4.
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`The June 11 Order reasoned that Patent Owner should be denied a response
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`because “claim 4 and its subject matter have been discussed repeatedly throughout
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`the trial.” June 11 Order at 10-11. But Patent Owner was entitled to rely on the
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`Board’s rulings that claim 4 was not part of the trial. The Board issued an
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`Institution Decision expressly denying review on claim 4. From the beginning of
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`trial until the end, the Board over and over reaffirmed that ruling. Id.; Paper 16
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`(denying “rehearing of the Decision . . . denying institution of an inter partes
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`review of claim 4”) Paper 35 (FWD), 2 (“The Board did not institute a review as to
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`dependent claim 4”). Patent Owner relied on those rulings. See PTAB SOP #2
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`(rev. 9) § VI-B (Board’s opinions are “binding law of the case”).3
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`3 Moreover, the Board distinguished the subject matter of claim 4 from the
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`subject matter of the sole claim argued at trial. The Final Written Decision held
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`13
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`
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`Patent Owner was also entitled to rely on pre-SAS law and rules. The June
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`11 Order, at 10–11, asserts Patent Owner “opted” to not file a response on claim 4.
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`But Patent Owner based that action on existing law: not only the Board’s decisions
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`here, but the Board’s partial institution rule, 42.108(a); the Federal Circuit’s pre-
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`SAS partial institution cases, e.g., Synopsys, Inc. v. Mentor Graphics Corp., 814
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`F.3d 1309 (Fed. Cir. 2016); and the Board’s prior ruling in Amerigen. Paper 35,
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`16. Patent Owner was entitled to rely on the law. It did not have to preserve its
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`right to respond to a dispositive change in law negatively impacting its rights.4
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`Finally, the Board’s denial of Patent Owner’s right to respond unfairly treats
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`the parties differently. It is unfair to relieve Petitioner from its reliance on pre-SAS
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`law, while improperly holding Patent Owner to its reliance on pre-SAS law. The
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`“that this [wa]s not simply a case where Patent Owner seeks to rewrite dependent
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`claim 4 in independent form,” emphasizing the differences between claim 4 and
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`the proposed claim briefed at trial. Paper 35, 15. Having relied on finding that
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`claim 4’s subject matter is different from the subject matter at trial to deny the
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`Motion to Amend, the Board can hardly now rely on finding that claim 4’s subject
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`matter is the same as the subject matter at trial to deny Patent Owner a response.
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`4 Conversely, as the Director has explained, supra § I, Petitioner has a
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`burden to preserve challenges to existing law.
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`14
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`
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`Board allowed Petitioner to assert, and granted, a forfeited challenge based on that
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`change of law. Yet the Board refused to allow Patent Owner the chance to even
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`respond to that same change of law. That violates due process and basic fairness.
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`If claim 4 is instituted, Patent Owner is entitled to file a response.
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`III.
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`THERE IS GOOD CAUSE TO ADD EXHIBITS TO THE RECORD.
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`Good cause exists for admission of Exhibits 2016-2019 with this Request.
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`See Trial Practice Guide, 77 FR 48,756, 48,768 (Aug. 14, 2012).
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`These exhibits are public orders (Ex. 2017), public briefs (Exs. 2016 &
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`2018), or emails between the Board and the parties (Ex. 2019). Their contents are
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`known or readily knowable to the parties and the Board. Their contents are beyond
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`dispute. All are necessary and helpful to clarify the arguments in this Request,
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`establish the Director’s position on these issues (Exs. 2016-2018), and establish the
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`Board’s actions in this case (Ex. 2019). They should be added to the record.
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`IV.
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`CONCLUSION AND RELIEF REQUESTED
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`The Board should reconsider its grant of Petitioner’s request to modify the
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`institution decision based on SAS, apply the Director’s position on waiver of such
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`requests, find waiver, and explain the reasons and basis for its waiver ruling.
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`If the Board maintains its modi