Case IPR2016-01622
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KINGSTON TECHNOLOGY COMPANY, INC.,
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`Petitioner
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`v.
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`POLARIS INNOVATIONS LTD.,
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`Patent Owner
`____________
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`Case IPR2016-01622
`Patent 6,850,414 B2
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`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
`PURSUANT TO UNITED STATES v. ARTHREX, 141 S. Ct. 1970 (2021)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`KINGSTON TECHNOLOGY COMPANY, INC.,
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`Petitioner
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`v.
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`POLARIS INNOVATIONS LTD.,
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`Patent Owner
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
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`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
`PURSUANT TO UNITED STATES v. ARTHREX, 141 S. Ct. 1970 (2021)
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`The Director Should Grant Patent Owner’s Request In Its Motion
`To Amend For Cancellation Of Claims 1 And 5–8. ................................... 2
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`The Director Should Reverse The Board’s Rejection Of Claim 4
`After The End Of Trial When Claim 4 Had Never Been Part Of
`The Trial. ........................................................................................................ 4
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`III. Claim 9 Should Be Found Patentable But Is Contingently
`Withdrawn. ..................................................................................................... 8
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`The Board’s Analysis Of Substitute Claim 9 Was Improper. ........ 8
`A.
`Patent Owner Contingently Stipulates To Withdraw Claim 9. ...... 9
`B.
`IV. A Principal Officer Or His Delegate Must Perform Director
`Review. .......................................................................................................... 10
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`V. Conclusion .................................................................................................... 10
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`COURT DECISIONS
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`TABLE OF AUTHORITIES
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`Page(s)
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`Aqua Prods. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) ............................................. 8
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`LM-M v. Cuccinelli, 442 F. Supp. 3d 1 (D.D.C. 2020) ........................................... 10
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`SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018) .................................................. 6
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`United States v. Arthrex, 141 S. Ct. 1970 (2021) ............................................... 1, 10
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`STATUTES
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`5 U.S.C. § 554(b) ....................................................................................................... 1
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`5 U.S.C. § 554(c) ....................................................................................................... 1
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`5 U.S.C. § 556(d) ....................................................................................................... 1
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`5 U.S.C. § 556(e) ....................................................................................................... 1
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`5 U.S.C. § 557(b) ....................................................................................................... 1
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`5 U.S.C. § 557(c) ....................................................................................................... 1
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`35 U.S.C. § 282(a) ..................................................................................................... 8
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`35 U.S.C. § 316(a)(9) ................................................................................................. 2
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`35 U.S.C. § 316(d)(1)(A) ........................................................................................... 3
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`35 U.S.C. § 318(a) ..................................................................................................... 6
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`AGENCY DECISIONS
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`Adidas AG v. Nike, Inc.,
`IPR2013-00067, Paper 60 (PTAB Jun. 20, 2014) ................................................ 2
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`Alcohol Monitoring Sys., Inc. v. Soberlink, Inc.,
`IPR2015-00556, Paper 28 (PTAB May 3, 2016) ................................................. 2
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`Facebook, Inc. v. EveryMD LLC,
`IPR2014-00242, Paper 31 (PTAB May 12, 2015) ............................................... 2
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`Gnosis S.p.A. v. S. Ala. Med. Sci. Found.,
`IPR2013-00116, Paper 68 (PTAB Jun. 20, 2014) ................................................ 2
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`Intellectual Ventures Mgmt., LLC v. Xilinx, Inc.,
`IPR2012-00020, Paper 34 (PTAB Feb. 11, 2014) ................................................ 3
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00128, Paper 92 (PTAB Jul. 25, 2014) ................................................. 2
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00266, Paper 73 (PTAB Oct. 28, 2014) ................................................ 2
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`Kingston Tech. Co., Inc. v. Polaris Innovations Ltd.,
`IPR2017-00974, Paper 8 (PTAB Aug. 14, 2017) ................................................. 5
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`Liberty Mut. Ins. v. Progressive Cas. Ins.,
`CBM2013-00002, Paper 27 (PTAB May 14, 2013) .........................................2, 3
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`Merck Sharp & Dohmen Corp. v. Mayne Pharma Intl. Pty Ltd.,
`IPR2016-01186, Paper 61 (PTAB Aug. 30, 2017) ............................................... 2
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`MotivePower, Inc. v. Cutsforth, Inc.,
`IPR2013-00268, Paper 31 (PTAB Oct. 30, 2014) ................................................ 3
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`Riverbed Tech. Inc. v. Silver Peak Sys., Inc.,
`IPR2013-00402, Paper 35 (PTAB Dec. 30, 2014) ............................................... 2
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`Riverbed Tech. Inc. v. Silver Peak Sys., Inc.,
`IPR2013-00403, Paper 33 (PTAB Dec. 30, 2014) ............................................... 2
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` iii
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`Semiconductor Components Indus., LLC, d/b/a ON
`Semiconductor v. Power Integrations, Inc.,
`IPR2016-01600, Paper 35 (PTAB Feb. 14, 2018) ................................................ 2
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`Syntroleum Corp. v. Neste Oil OYJ,
`IPR2013-00178, Paper 63 (PTAB Aug. 29, 2014) ............................................... 2
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`RULES, RULEMAKING, AND OTHER AGENCY AUTHORITIES
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`37 C.F.R. § 42.120 (2018) .....................................................................................5, 8
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`37 C.F.R. § 42.73(b) .................................................................................................. 4
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`37 C.F.R. § 42.73(b)(2) .............................................................................................. 2
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`USPTO, Arthrex Q&As, Question A1 (July 20, 2021) ............................................. 1
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` iv
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`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)
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`Exhibit 2006
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`Exhibit 2013 Exh. 1 To Deposition Transcript Of Subramanian (Apr. 19, 2017)
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`Exhibit 2014 Transcript of October 5, 2017 Conference Call
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`Exhibit 2015
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`[expunged]
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`Exhibit 2016
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`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)
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`Exhibit 2021
`[NEW]
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`Exhibit 2022
`[NEW]
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`Exhibit 2017
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`Exhibit 2018
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`Exhibit 2019
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`PGS Geophysical AS v. Iancu, No. 16-2470 (Fed. Cir. May 4,
`2018) (nonprecedential order) (per curiam)
`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
`Exhibit 2020 Response. Br. For Intervenor—Director of USPTO, PGS
`Geophysical AS v. Iancu, 891 F.3d 1354 (Fed. Cir. 2018) (No.
`16-2470)
`Email thread between Petitioner counsel, Patent Owner counsel,
`and PTAB Staff re Request to Withdraw: IPR2016-01621,
`IPR2016-01622, IPR2017-00116
`Principal Brief of Patent Owner (Dkt. 33), Polaris Innovations
`Ltd. v. Kingston Tech. Co., Inc. & Iancu (Fed. Cir. No. 19-1202,
`May 24, 2019)
`Reply Brief of Patent Owner (Dkt. 55), Polaris Innovations Ltd.
`v. Kingston Tech. Co., Inc. & Iancu (Fed. Cir. No. 19-1202, Sep.
`24, 2019)
`Notice of Oral Argument (Dkt. 78), Polaris Innovations Ltd. v.
`Kingston Tech. Co., Inc. & Iancu (Fed. Cir. No. 19-1202, Jan. 21,
`2020)
`Order Remanding Under Arthrex (Dkt. 79), Polaris Innovations
`Ltd. v. Kingston Tech. Co., Inc. & Iancu, (Fed. Cir. 2020) (per
`curiam) (nonprecedential) (No. 19-1202, slip op., Jan. 27, 2020)
`Order On Petitions For Panel Reh’g And Reh’g En Banc (Dkt.
`94), Polaris Innovations Ltd. v. Kingston Tech. Co., Inc. & Iancu,
`(Fed. Cir. 2020) (per curiam) (nonprecedential) (No. 19-1202,
`slip op., Apr. 14, 2020)
`Letter order re grant of certiorari, Polaris Innovations Ltd. v.
`Kingston Tech. Co., Inc., No. 19-1459 (Nos. 2018-1831; 2019-
`1202; et al.) (June 28, 2021)
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`Exhibit 2023
`[NEW]
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`Exhibit 2024
`[NEW]
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`Exhibit 2025
`[NEW]
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`Exhibit 2026
`[NEW]
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`Exhibit 2027
`[NEW]
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` vi
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`Patent Owner respectfully requests Director review, under United States v.
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`Arthrex, 141 S. Ct. 1970 (2021), of the Patent Trial and Appeal Board’s decisions
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`in this inter partes review (i) denying Patent Owner’s motion to amend the ’414
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`Patent to cancel claims 1 and 5–8; (ii) as the Director’s delegate, adding claim 4 to
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`the instituted trial after trial was over; and (iii) finding claims 1 and 4–9 obvious.
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`The Federal Circuit remanded this case to the Director after it was fully
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`briefed on appeal, and after a writ of certiorari was granted. Exs. 2022-2023
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`(briefing), 2024 (notice of oral argument), 2025 (remand order), 2027 (grant of
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`certiorari). The parties to this case settled their dispute in mid-2020, and Petitioner
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`has been seeking to withdraw from the case ever since. Ex. 2021. A request to
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`authorize a motion to terminate for settlement remains pending. Id. The appeal in
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`this extraordinary case has already fully briefed the Board’s extraordinary errors.
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`The Director should correct those errors, by overruling the decision to add claim 4
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`to a trial that was already over, and granting the motion to amend to cancel claims.
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`“The Director’s review may address any issue, including issues of fact and
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`issues of law, and will be de novo.” USPTO, Arthrex Q&As, Question A1.
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`Since the Director’s review of the Board is in the context of a formal
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`adjudication, it must comply with APA §§ 554(b)–(c), 556(d)–(e), and 557(b)–(c).
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`1
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`I.
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`The Director Should Grant Patent Owner’s Request In Its Motion To
`Amend For Cancellation Of Claims 1 And 5–8.
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`After institution is granted, patent owners have a right to move to cancel a
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`subset of the challenged claims. 35 U.S.C. § 316(a)(9).1 For years, the Board’s
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`practice concerning such requests was settled and consistent: it would always grant
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`the request and cancel the claims, and never address the merits of those claims.
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`This practice was uniformly followed in literally dozens of IPR and CBM
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`decisions.2 The Board explained that such voluntary cancellations “reduce issues
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`and streamline the trial” by taking the voluntarily canceled claims entirely out of
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`the case. E.g., Liberty Mut. Ins. v. Progressive Cas. Ins., CBM2013-00002, Paper
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`27, 2 (PTAB May 14, 2013). The Board granted such requests even when
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`opposed, explaining that it was not its role to address the patentability of
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`voluntarily canceled claims, but only the patentability of claims remaining at trial.
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`E.g., IPR2016-01600, Paper 35, 10 (“we are not called upon to address whether
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`1 The rule construing requests to cancel all challenged claims, “such that the party
`has no remaining claim in the trial,” as requests for adverse judgment as to the
`canceled claims, 37 C.F.R. § 42.73(b)(2) (emphasis added), is not at issue here.
` Accord, e.g., IPR2016-01186, Paper 61, 2 (PTAB Aug. 30, 2017); IPR2015-
`00556, Paper 28, 2, 6 (PTAB May 3, 2016); IPR2014-00242, Paper 31, 2-3 (PTAB
`May 12, 2015); IPR2013-00403, Paper 33, 1, 10 (PTAB Dec. 30, 2014); IPR2013-
`00402, Paper 35, 2, 36 (PTAB Dec. 30, 2014); IPR2013-00266, Paper 73 (PTAB
`Oct. 28, 2014); IPR2013-00178, Paper 63 (PTAB Aug. 29, 2014); IPR2013-00128,
`Paper 92 (PTAB Jul. 25, 2014); IPR2013-00116, Paper 68 (PTAB Jun. 20, 2014);
`IPR2013-00067, Paper 60, 4 (PTAB Jun. 20, 2014). See generally Paper 36, 4–7.
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` 2
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`2
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`claims 1 and 2 are unpatentable because Patent Owner’s Motion to Amend
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`requests cancellation of those claims”); IPR2013-00268, Paper 31, 2 (“Patent
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`Owner requested cancellation of [some challenged] claims .... Accordingly,
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`Petitioner’s challenges to these claims were rendered moot.”); IPR2012-00020,
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`Paper 34, 6 (“we grant [patent owner]’s motion ... and cancel claim 1. Thus, we
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`need only address the patentability of [the remaining] challenged claims”).
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`This uniform practice obeyed the statute, and made sense. When a motion to
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`amend is filed asking the Board to “[c]ancel [a] challenged patent claim” at trial,
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`35 U.S.C. § 316(d)(1)(A), there is no statutory basis for adverse judgment on such
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`a claim. Moreover, patent owners must be able to move to narrow the number of
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`claims for trial without risking adverse judgment. Otherwise, moving under
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`§ 316(d)(1)(A) would not “streamline the trial.” Liberty, supra, Paper 27, 2.
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`Patent owners would be unable to cancel challenged claims without risking adverse
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`judgment. They would have to defend the merits of every single claim every time.
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`The Board panel in this case ignored this settled practice, and went rogue.
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`Patent Owner’s motion to amend included an unopposed request to cancel claims 1
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`and 5–8, leaving proposed claim 9 remaining in the trial. Paper 18 (Motion to
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`Amend), 1–2. Departing from every prior Board decision that had ever considered
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`such a request, the Board sua sponte refused to cancel claims 1 and 5–8, and
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`instead entered adverse judgment on them. Paper 35 (FWD), 2, 14, 27.
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`3
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`The panel did not contend that § 42.73(b), or any other rule, supported its
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`refusal to cancel claims 1 and 5–8 and instead enter adverse judgment. The panel
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`merely asserted, without citing any support, that “[b]y not filing a response to the
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`Petition, and requesting cancellation of claims 1 and 5–8 not based on any apparent
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`contingency, Patent Owner has waived any argument that the challenged claims for
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`which we instituted review—claims 1 and 5–8 of the ’414 patent—would not have
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`been obvious.” Paper 35 at 11, 27. In no prior AIA trial had any Board panel ever
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`found any such “waiver,” ever refused such a request for voluntary cancellation, or
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`ever granted adverse judgment on the claims requested to be voluntarily canceled.
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`The panel’s action was unsupported, unprecedented, arbitrary and capricious.
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`The Director should grant Patent Owner’s request in its Motion to cancel
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`claims 1 and 5–8, and vacate the Board’s adverse judgment as to those claims.
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`II.
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`The Director Should Reverse The Board’s Rejection Of Claim 4 After
`The End Of Trial When Claim 4 Had Never Been Part Of The Trial.
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`The Director should also correct the Board’s extraordinary decision, made
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`on the Director’s behalf, after the instituted trial had already concluded with a final
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`written decision of the Board, and after the time to seek rehearing had expired, that
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`modified the institution decision in this case to add claim 4 to the already-
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`completed trial—and, in the very same June 11, 2018 order, simultaneously found
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`claim 4 unpatentable. Just that bare description, without more, of this astonishing
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`after-trial order should be more than enough to show that it must be overturned.
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`4
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`In its February 15, 2017 institution decision in this case, the Board (acting as
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`then-Director Lee’s delegate) instituted trial on claims 1 and 5–8, but declined on
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`the merits to institute on claim 4. Paper 7, 2. Petitioner sought rehearing of the
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`decision to deny institution on claim 4, which was denied. Papers 11, 16.
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`Petitioner filed a second IPR petition challenging claim 4, which the same panel
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`denied, and then sought rehearing of that denial, which was also denied. IPR2017-
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`00974, Paper 8, 13 (Aug. 14, 2017). The Board explained that the 00974 petition’s
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`arguments and references still failed to raise a probability of unpatentability and
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`were “‘substantially the same’ as those in the first petition.” Id. See Paper 23, 2.
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`Patent Owner moved to amend the patent to voluntarily cancel claims 1 and
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`5–8 and add substitute claim 9. Paper 18. The Motion to Amend was drafted to
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`add no new patentability issues to the trial. Id., 1, 3–4. As the Motion noted,
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`substitute claim 9 contained “[n]o newly-drafted limitations,” but only “the
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`limitations of claim 8 and the limitations of claim 4, which the Board ha[d] already
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`determined has not been shown to have a reasonable likelihood of being
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`unpatentable.” Id.
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`Relying on the Board’s decision not to institute on claims 2–4, Patent Owner
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`did not file a Patent Owner Response (“POR”) defending the patentability of non-
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`instituted claim 4. Indeed, since claim 4 was not within the scope of trial, Patent
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`Owner could not have filed a POR defending claim 4. 37 C.F.R. § 42.120 (2018).
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`5
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`Following oral hearing, the Board issued a final written decision under 35
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`U.S.C. § 318(a) denying Patent Owner’s request in its Motion to Amend to cancel
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`claims 1 and 5–8, and entering a determination that those claims, and substitute
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`claim 9, were unpatentable. Paper 35. Petitioner did not file any request for
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`rehearing. Patent Owner did. Paper 36. The Board denied rehearing. Paper 37.
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`Well after the deadline for all parties to seek rehearing of that decision had
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`expired, Petitioner sought leave to file an out-of-time request for rehearing of both
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`the institution decision and the Board’s final written decision. Ex. 1016
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`(Transcript of Board Conference). Petitioner argued that the issuance of SAS
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`Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), justified waiver of the rules to
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`permit its request. Ex. 1016, 4. Patent Owner opposed the request, and explained,
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`among other things, that it “was not aware of any order of the Board in which the
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`Board ha[d] done” what Petitioner was requesting, and had not been afforded any
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`opportunity after institution to present evidence and argument about the
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`patentability of claim 4, since claim 4 had never been in the trial, so the Board and
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`parties were “dealing with a merits record which is entirely one sided.” Id., 13,
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`15–18, 25, 35–37. Patent Owner pointed out that it would be more appropriate,
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`and within the Board’s power as the Director’s delegate, to retroactively deny
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`institution in light of SAS Institute, not to retroactively grant institution on a new
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`claim after trial was over. Id., 19. Patent Owner explained that in other
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`6
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`proceedings in which the Board had revisited institution determinations in light of
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`SAS Institute, the Board had expunged all filings made by both parties in reliance
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`on the original institution decision, and noted that, if the Board were to revisit its
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`institution decision in this case, it would be more appropriate to either consider the
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`patentability of claim 4 “only on the basis of the evidence and argument . . . found
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`in the petition,” or to expunge all post-institution filings including the motion to
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`amend. Id., 28–30.
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`The Board granted Petitioner leave to file an out of time request for
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`rehearing of the institution decision. Paper 39. In that authorized out of time
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`request, Petitioner argued that not only should claim 4 be retroactively added to the
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`trial, but it should be immediately found unpatentable without further briefing.
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`Paper 40. The Board granted Petitioner’s out of time request, ordered claim 4
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`added to the already-completed trial, and, in the same order, found claim 4
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`unpatentable. Paper 42. The Board stated that it would not accept any briefing by
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`Patent Owner on claim 4 because allegedly “it is Patent Owner that, in some sense,
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`instituted a review of the subject matter of claim 4.” Id., 12.
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`In sum, the Board instituted on claim 4, and invalidated it, in one stroke.
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`Patent Owner never had an opportunity, at any stage, to file a POR regarding claim
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`4. In the original institution decision, the Board ruled that claim 4 was not part of
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`the trial. Paper 7, 1–2. That meant that, by rule, Patent Owner could only respond
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`7
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`to the Petition at trial by “addressing any ground for unpatentability not already
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`denied.” 37 C.F.R. 42.120 (2018). Until the Board’s June 11, 2018 order, claim 4
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`was never part of the trial, despite Petitioner’s numerous unsuccessful attempts to
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`add it. Thus, Patent Owner had no prior notice that the Board might find claim 4 to
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`be unpatentable, and was denied the opportunity to file a POR on that issue. Then,
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`at the instant when the Board issued its June 11, 2018 order, claim 4 went from
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`never having been in the trial, to having trial instituted against it and being
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`summarily found unpatentable. That cannot stand.
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`III.
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`Claim 9 Should Be Found Patentable But Is Contingently Withdrawn.
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`A. The Board’s Analysis Of Substitute Claim 9 Was Improper.
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`The Board’s error in retroactively instituting trial on all petitioned claims,
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`without allowing Patent owner to ever file a POR on all petitioned claims, infected
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`not only its decision regarding the patentability of issued claim 4, but also its
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`decision of unpatentability as to substitute claim 9 from Patent Owner’s Motion To
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`Amend.
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`Because the Board’s decision as to claim 4 should have been decided in light
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`of Patent Owner’s right (or lack thereof) to file a POR as to claim 4, and because
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`the Board’s decision on substitute claim 9 was based on a decision about the merits
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`of claim 4—when claim 4 was not even in the trial—the same rule and due process
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`violations that affected claim 4 also undermine the Board’s decision on substitute
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`8
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`claim 9. “A proposed substitute claim by definition is different from the issued
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`claims and, under 35 U.S.C. § 282(a), must be evaluated on its own terms.” Aqua
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`Prods. v. Matal, 872 F.3d 1290, 1349 n.6 (opinion of Taranto, J.). The Board’s
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`errors in handling claim 4 thus also deprived Patent Owner of its rights to fairly
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`defend claim 9.
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`The Board’s errors as to claim 1 also affected the Board’s treatment of claim
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`9. The Board’s trial decision reached the patentability of claim 1, which the Board
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`then used as part of its alleged basis for finding claim 9 unpatentable. Paper 42,
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`10-12 & n.2. Rather than analyze the limitations of claim 9 that appear in claim 1
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`anew for the Motion to Amend, the Board relied on its prior discussion of “the
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`limitations of independent claim 1 ... in the context of the challenge thereto in the
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`Petition.” Paper 35, 23. The Board should never have reached claim 1, however,
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`because the Motion to Amend moved to cancel it. See Section I supra.
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`B.
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`Patent Owner Contingently Stipulates To Withdraw Claim 9.
`
`To streamline the Director’s review in this case, Patent Owner offers a
`
`contingent stipulation to remove claim 9 from this already appealed and remanded
`
`case. If the Director overrules (i) the Board’s denial of its request to cancel claims
`
`1 and 5–8 from trial and (ii) the addition of claim 4 to trial, Patent Owner hereby
`
`stipulates to withdraw its request to amend the patent to add claim 9.
`
`Petitioner is no longer participating herein, so this stipulation is unopposed.
`
`
`
`9
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`
`
`
`
`If the Director declines to review or overrule these decisions, Patent Owner
`
`reserves the right to continue to defend claim 9, as it did before the Federal Circuit,
`
`and to also continue to press all the issues it has already raised in that appeal.
`
`IV.
`
`A Principal Officer Or His Delegate Must Perform Director Review.
`
`Consistent with the Supreme Court’s holding in Arthrex, consideration of
`
`this request for review must be by a principal Officer appointed by the President
`
`and confirmed by the Senate, or his proper delegate. See, e.g., L.M.-M. v.
`
`Cuccinelli, 442 F. Supp. 3d 1, 23-24 (D.D.C. 2020) (“The fact that an officer holds
`
`a PAS office [(i.e., appointed by the President, with the advice and consent of the
`
`Senate)] does not mean, however, that one who performs the duties of that office in
`
`an acting capacity is also a PAS officer.”), 35-37 (holding that actions that are
`
`committed to PAS officer, but performed “without lawful authority” by non-PAS
`
`officeholder, “must be set aside”).
`
`V.
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`Conclusion
`
`The purpose of constitutional Director review under Arthrex is, at a
`
`minimum, to correct departures from the law and rules that are so egregious that
`
`they should never have been countenanced by the Office, and should not need the
`
`work of an Article III appellate court to be corrected in the first place. The present
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`case has been pending for over four years. It has already featured an
`
`unprecedented denial of an unopposed request for voluntary cancellation, a
`
`
`
`10
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`
`
`
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`retroactive expansion of an already completed trial and simultaneous invalidation
`
`of the added claim, two requests for rehearing after the institution decision, two
`
`requests for rehearing of the trial decision, a follow-on petition with another
`
`request for rehearing, an out of time request to seek rehearing after the time for
`
`rehearing had expired, a fully briefed appeal, and a granted petition for writ of
`
`certiorari. It would be difficult to find a more misguided procedural tangle than the
`
`one that this Board panel created by its improvident decisions following the
`
`original institution decision.
`
`All of those decisions were adverse to the patent owner, to the rules and
`
`practices of the Board, and to the requirements of due process. None of them was
`
`necessary, good policy, or procedurally or substantively fair.
`
`Moreover, this case, which began in 2017, settled in April 2020. The only
`
`question is why the Office is still insisting on keeping this case going, instead of
`
`letting the parties voluntarily terminate it as they have requested. It is time for the
`
`Director to put an end to these labyrinthine, error-filled, long settled proceeding.
`
`Because the case is settled, the Board and parties should have an opportunity
`
`to address termination under 35 U.S.C. § 317(a). If the Director does not grant the
`
`pending requests to move to terminate and terminate this case under § 317, the
`
`Director should grant review, grant the motion to amend the patent to cancel
`
`claims 1 and 5–8, deny the out of time request to add claim 4 to trial, and remand.
`
`
`
`11
`
`
`
`
`
`The Director should grant review.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Date: October 22, 2021
`
`____/ Kenneth J. Weatherwax /_________
`
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
`
`
`
`12
`
`
`
`
`
`Case IPR2016-01622
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`by electronic service, by agreement between the parties, on the date signed below:
`
`
`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
`PURSUANT TO UNITED STATES v. ARTHREX, 141 S. Ct. 1970 (2021)
`
`The names and address of the parties being served are as follows:
`
`IPR37307-0007IP1@fr.com (David Hoffman)
`IPR@sjclawpc.com (Martha Hopkins)
`
`
`
`Respectfully submitted,
`
` / Kenneth J. Weatherwax /
`
`Date: October 22, 2021
`
`
`
`
`
`
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