Kingston v. Polaris Innovations
`
`IPR2016-01622
`U.S. Patent No. 6,850,414
`
`Patent Owner Polaris Innovations, LLC
`
`November 14, 2017
`
`Slide 1
`
`
`
`IPR2016-01622
`U.S. Patent No. 6,850,414
`
`Patent Owner Polaris Innovations, LLC
`
`November 14, 2017
`
`Slide 1
`
`
`
`Overview Of Arguments
`
`I.
`
`
`The Scope Of The Hearing
`
`II. The Effect Of Aqua Products v. Matal (Fed. Cir.) (en banc)
`
`III. The Merits Of The Motion To Amend
`
`
`Slide 2
`
`
`
`Overview Of Arguments
`
`I.
`
`
`The Scope Of The Hearing
`
`II. The Effect Of Aqua Products v. Matal (Fed. Cir.) (en banc)
`
`III. The Merits Of The Motion To Amend
`
`
`Slide 3
`
`
`
`Scope Of IPR Review –
`Set by Director’s determination Under § 314(a)
`(a) The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition . . . .
`
`(c) The Director shall notify the petitioner and patent owner, in
`writing, of the Director’s determination under subsection (a) . . . .
`
`(d) The determination by the Director whether to institute an inter
`partes review under this section shall be final and nonappealable.
`
`35 U.S.C. § 314 (2012)
`
`Slide 4
`
`
`
`Scope Of IPR Review –
`Set Under Office Rules
`(a) Institution of trial. The Board institutes the trial on behalf of the
`Director.
`
`37 C.F.R. § 42.4
`(a) When instituting inter partes review, the Board may authorize the
`review to proceed on all or some of the challenged claims and on all
`or some of the grounds of unpatentability asserted for each claim.
`
`(b) At any time prior to institution of inter partes review, the Board
`may deny some or all grounds for unpatentability for some or all of
`the challenged claims. Denial of a ground is a Board decision not to
`institute inter partes review on that ground.
`
`37 C.F.R. § 42.108
`
`Slide 5
`
`
`
`Board Determinations
`
`Claim(s) Basis
`1, 5-8
`§ 103 Simpson
`§ 103 Simpson
`2-4
`1-8
`§ 103 Simpson & Intel Specification
`1-8
`§ 103
`Intel
`
`Kingston Technology v. Polaris Innovations, IPR2016-01622
`Art
`Director’s Determination Under § 314(a)
`IPR authorized
`IPR not authorized
`IPR not authorized
`IPR not authorized
`
`Rehearing as to
`Claim 4 denied
`
`Kingston Technology v. Polaris Innovations, IPR2017-00974
`Reference
`Claim(s) Basis
`4
`§ 103 Simpson & Karabatsos
`4
`§ 103 Bechtolsheim & Tokunaga & Karabatsos
`
`IPR not authorized
`IPR not authorized
`
`Rehearing as to
`Claim 4 denied
`
`Slide 6
`
`
`
`Issues For Oral Argument
`
`
`
`
`
`• No Patent Owner Response or Petitioner Reply
`• Motion To Amend:
`o cancel instituted Claims 1, 5-8, add substitute Claim 9
`“[T]he substitute claim is the same as challenged claim 8 in
`every respect, except that it simply adds the limitations of
`claim 4, which the Board has already repeatedly determined
`has not been shown by Petitioner in this case to have a
`reasonable likelihood of being unpatentable.” (Motion at 1)
`
`
`
`
`
`Slide 7
`
`
`
`Overview Of Arguments
`
`I.
`
`
`The Scope Of The Hearing
`
`II. The Effect Of Aqua Products v. Matal (Fed. Cir.) (en banc)
`
`III. The Merits Of The Motion To Amend
`
`
`Slide 8
`
`
`
`The en banc Aqua Products v. Matal decision:
`
`• Heard by 11 judges
`Written by
`Joined by
`
`WestLaw
`pages
`5 (O’Malley, Newman, Lourie, Moore, Wallach) + 2 as to result (Dyk, Reyna) *1-*29
`
`O’MALLEY
`
`MOORE
`
`3 (O’Malley, Newman, Moore)
`
`REYNA (I-II) 2 (Dyk, Reyna)
`
`REYNA (III)
`
`6 (Prost, Dyk, Reyna, Taranto, Chen, Hughes)
`
`*29-*35
`
`*35-*40
`
`*40-*41
`
`TARANTO
`
`4 (Prost, Taranto, Chen, Hughes) + 2 “in part in other respects” (Dyk, Reyna) *41-*55
`
`HUGHES
`
`2 (Hughes, Chen)
`
`*55-*63
`
`Slide 9
`
`
`
`The en banc Aqua Products v. Matal decision:
`Majorities
`
`• 7-judge majority:
`Petitioner, not Patent Owner, has burden to prove
`proposed claim unpatenable.
`
`Aqua Prods. v. Matal, 2017 WL 4399000, *26, *28, *40, *42 (Fed. Cir. 2017) (en banc)
`
`• Aqua Products does not purport to add any new
`burdens to Patent Owner for Motions To Amend.
`
`Paper 30 (Patent Owner Brief Addressing Aqua Products) at 2-3
`
`Slide 10
`
`
`
`The en banc Aqua Products v. Matal decision:
`Majorities
`
`
`
`
`
`• different 6-judge majority:
`Patent Owner continues to have movant’s burden to:
`-
`state reasons for granting motion to amend
`-
`show proposed claim is responsive to an instituted ground
`
`-
`show proposed claim is non-broadening
`
`-
`show proposed claim is supported
`
`- point out proposed claim’s patentably distinct features
`
`Aqua Prods. v. Matal, 2017 WL 4399000, *26, *28, *40, *42 (Fed. Cir. 2017) (en banc)
`
`Paper 30 (Patent Owner Brief Addressing Aqua Products) at 1, 3-4
`
`Slide 11
`
`
`
`The en banc Aqua Products v. Matal decision:
`Effect On Motions To Amend
`
`• Aqua Products does not purport to add any new
`burdens to Patent Owner for Motions To Amend.
`
`• Aqua Products makes it easier to grant the Motion
`To Amend.
`
`Paper 30 (Patent Owner Brief Addressing Aqua Products) at 1-2
`
`Slide 12
`
`
`
`The en banc Aqua Products v. Matal decision:
`Other Statements In Opinions
`• 5 (of 11) of judges:
`“When a petitioner does contest an amended claim, the
`Board is free to reopen the record to allow admission of
`any additional relevant prior art proffered by a petitioner
`or to order additional briefing on any issue involved in the
`trial. The Board may then consider all art of record in the
`IPR, including any newly added art, when rendering its
`decisions on patentability.”
`
`Aqua Prods. v. Matal, 2017 WL 4399000, *17 (Fed. Cir. 2017) (en banc) (O’Malley opinion) (citations omitted)
`
`(quoted in Paper 25 (Board’s Order Granting Sur-Reply To Motion To Amend) at 4)
`
`Slide 13
`
`
`
`The en banc Aqua Products v. Matal decision:
`Other Statements In Opinions
`• 5 (of 11) of judges:
`“Simply put, the patent owner’s right to propose amended claims is an
`important tool that may be used to adjust the scope of patents in an
`IPR. . . .
`“Congress deemed the patent owner’s right to amend so important
`that, in § 316(d), it mandated that the patent owner be permitted to
`amend the patent as of right at least once during the course of an IPR,
`provided certain specified statutory conditions were met. . . .
`
`“Congress saw the amendment process in IPRs as analogous to
`narrowing reissues . . . .”
`Aqua Prods. v. Matal, 2017 WL 4399000, *4 (Fed. Cir. 2017) (en banc) (O’Malley op.) (italics in original)
`
`
`
`Slide 14
`
`
`
`The en banc Aqua Products v. Matal decision:
`Other Statements In Opinions
`• 5 (of 11) of judges:
`“The goal underlying the AIA is twofold: (1) eliminating patents that
`foster abusive litigation; and (2) affirming and strengthening viable
`patents. . . .
`“Allowing narrowing amendments during an IPR helps strengthen and
`clarify patents. As the PTO itself testified before Congress, providing a
`patent owner with a meaningful opportunity to amend subject to
`minimal statutory and regulatory criteria helps ‘preserve the merited
`benefits of patent claims better than the win-all or lose-all validity
`contests in district court.’”
`
`
`
`Aqua Prods. v. Matal, 2017 WL 4399000, *15 (Fed. Cir. 2017) (en banc) (O’Malley op.)
`
`Slide 15
`
`
`
`The en banc Aqua Products v. Matal decision:
`Other Statements In Opinions
`• 5 (of 11) of judges:
`“Both by statute and by the PTO’s own directives, any proposed
`amendment must seek to cancel a challenged claim and/or propose a
`substitute for a challenged claim, and it must do so by responding to
`an instituted ground of unpatentability. See 35 U.S.C. § 316(d)(1); see
`also 37 C.F.R. § 42.121(a)(2)(i). The structure of an IPR does not allow
`the patent owner to inject a wholly new proposition of unpatentability
`into the IPR by proposing an amended claim. The patent owner
`proposes an amendment that it believes is sufficiently narrower than
`the challenged claim to overcome the grounds of unpatentability
`upon which the IPR was instituted.”
`Aqua Prods. v. Matal, 2017 WL 4399000, *10 (Fed. Cir. 2017) (en banc) (O’Malley opinion) (italics in original)
`
`Slide 16
`
`
`
`The en banc Aqua Products v. Matal decision:
`Other Statements In Opinions
`• 5 (of 11) of judges:
`“Both by statute and by the PTO’s own directives, any proposed amendment must
`seek to cancel a challenged claim and/or propose a substitute for a challenged claim,
`and it must do so by responding to an instituted ground of unpatentability. . . .
`“When the petitioner disputes whether a proposed amended claim is patentable, it
`simply continues to advance a ‘proposition of unpatentability’ in an ‘inter partes
`review instituted under this chapter.’ 35 U.S.C. § 316(e).
`“Contrary to other provisions of Chapter 31, which repeatedly make distinctions
`between original and amended claims, the “proposition of unpatentability”
`referenced in § 316(e) is not tethered to only one type of claim. . . .
`“If the Board decides that an original or entered amended claim overcomes the
`petitioner’s unpatentability challenge, the claim is ‘patentable’ and treated as a valid
`claim, regardless of how the claim arose.”
`Aqua Prods. v. Matal, 2017 WL 4399000, *10 -11(Fed. Cir. 2017) (en banc) (O’Malley opinion) (italics in original)
`
`
`
`Slide 17
`
`
`
`
`
`
`
`The en banc Aqua Products v. Matal decision:
`Other Statements In Opinions
`• 5 (of 11) of judges:
`“[O]ne [may not] divorce consideration of proposed amended or substitute
`claims from the issued and challenged claims which they, by right, seek to
`modify or replace. . . . [B]oth by virtue of the text of § 316(d) and the plain
`language of Rule 42.121, that cannot be done; the very unpatentability
`challenges by the petitioner are the same unpatentability challenges to
`which any proposed amendment must respond and which continue
`throughout the proceeding. . . .
`
`Aqua Prods. v. Matal, 2017 WL 4399000, *12 (Fed. Cir. 2017) (en banc) (O’Malley opinion)
`
`Slide 18
`
`
`
`The en banc Aqua Products v. Matal decision:
`Other Statements In Opinions
`• 5 (of 11) of judges:
`“[A]mendments do not create a ‘new’ claim for the Board’s consideration;
`they merely respond to at least one ground of unpatentability originally
`raised by the petitioner.”
`
`“[T]he petitioner raises its best arguments at the outset; the patent owner
`has the opportunity to adjust the scope of its claims if need be; and the
`Board provides a speedy ruling as to the patentability of the original and
`amended claims.”
`
`Aqua Prods. v. Matal, 2017 WL 4399000, *13, *15 (Fed. Cir. 2017) (en banc) (O’Malley opinion)
`
`Slide 19
`
`
`
`The en banc Aqua Products v. Matal decision:
`Other Statements In Opinions
`• 5 (of 11) of judges:
`“Both by statute and by its own rules, the Board has only limited
`grounds for denying a motion to amend:
`
`(1) if the amendment “does not respond to a ground of
`unpatentability involved in the trial,” 37 C.F.R. § 42.121(a)(2)(i); or
`
`(2) if the amendment “seeks to enlarge the scope of the claims of the
`patent or introduce new subject matter,” id. § 42.121(a)(2)(ii).”
`Aqua Prods. v. Matal, 2017 WL 4399000, *20 (Fed. Cir. 2017) (en banc) (O’Malley opinion) (italics in original)
`
`Slide 20
`
`
`
`The en banc Aqua Products v. Matal decision:
`Other Statements In Opinions
`• 4 or 6 (of 11) of judges:
`“Additional prior art may be needed to evaluate a new
`claim with a new element: if that element was absent
`from the claims on which the IPR was instituted, the
`petitioner may not have initially introduced prior art that
`addressed the element.”
`
`Aqua Prods. v. Matal, 2017 WL 4399000, *48 n.6 (Fed. Cir. 2017) (en banc) (Taranto opinion)
`
`Slide 21
`
`
`
`The en banc Aqua Products v. Matal decision:
`Policy Statements In Opinions
`• 5 (of 11) of judges:
`“Despite repeated recognition of the importance of the patent owner’s
`right to amend during IPR proceedings—by Congress, courts, and the
`PTO alike—patent owners largely have been prevented from amending
`claims in the context of IPRs.”
`
`“[T]he Board . . . may decide that the amended claims are patentable in
`the face of prior art challenges challenges precisely because they are
`narrower than the original claims, and that it is important for the
`patent to be amended to reflect that fact so the public can benefit
`from that narrowing.”
`Aqua Prods. v. Matal, 2017 WL 4399000, *4 , *15(Fed. Cir. 2017) (en banc) (O’Malley op.)
`
`Slide 22
`
`
`
`Overview Of Arguments
`
`I.
`
`
`The Scope Of The Hearing
`
`II. The Effect Of Aqua Products v. Matal (Fed. Cir.) (en banc)
`
`III. The Merits Of The Motion To Amend
`
`
`Slide 23
`
`
`
`The Motion Does Not Open A Door For Petitioner
`To Raise New Grounds
`
`Petitioner may not raise uninstituted or unpetitioned grounds.
`
`• The “unpatentability challenges to which any proposed amendment must respond” are
`the ones that “continue throughout the proceeding.” Aqua Prods. 2017 WL 4399000, *12 (O’Malley op.)
`
`“When the petitioner disputes whether a proposed amended claim is patentable, it simply
`continues to advance a ‘proposition of unpatentability’ in an ‘inter partes review instituted
`under this chapter.’ 35 U.S.C. § 316(e). . . . If the Board decides that an original or entered
`amended claim overcomes the petitioner’s unpatentability challenge, the claim is
`‘patentable’ and treated as a valid claim, regardless of how the claim arose.”
`
`Aqua Prods., 2017 WL 4399000, *10 -11 (O’Malley op.)
`
`Slide 24
`
`
`
`Petitioner’s Additional References And Grounds
`Are Untimely And Improper
`• The new references and grounds should not be considered.
`
`• Petitioner has sought to add new references and grounds of
`unpatentability to the record.
`
`
`
`
`
`
`When motions to amend are filed, petitioners may “ask[]”
`that “new art relevant to § 102 or § 103 . . . be introduced
`into the IPR.”
`
`Papers 20, 28; Exs. 1011-1013 , 1017-1021
`
`Aqua Prods. v. Matal, 2017 WL 4399000, *17 (Fed. Cir. 2017) (en banc) (O’Malley opinion)
`
`Slide 25
`
`
`
`Petitioner’s Additional References And Grounds
`Are Untimely And Improper
`
`• No “[a]dditional prior art [is] needed to evaluate a new claim
`with a new element:”
`o proposed claim has no “element [that] was absent from the
`claims on which the IPR was instituted.”
`
`
`
`
`
`
`
`(Aqua Prods., 2017 WL 4399000, *48 n.6) (Taranto op.)
`
`“‘A motion to exclude, however, is not an appropriate
`vehicle for challenging a reply, or a reply’s supporting
`evidence, as exceeding the scope of a proper reply.”
`
`Cf. Conopco, Inc. v. Procter & Gamble Co., IPR2013-00505, Paper 69 at 29-30 (PTAB 2/10/15)
`
`Slide 26
`
`
`
`The en banc Aqua Products v. Matal decision:
`Consistency With Other PTO Proceedings
`• 5 (of 11) of judges:
`IPR procedural burdens for amending claims should be “interpret[ed] .
`. . consistent with other PTO-based proceedings,” including, first, “pre-
`AIA inter partes reexamination proceedings. . . .
`“When enacting the AIA, Congress acted against this backdrop. . . .
`“It is only after the institution decision that the patent owner may elect
`to adjust the scope of its patent grant by proposing narrowing
`amendments to protect its patentable subject matter. In this way, IPR
`functions as a process for refining and limiting patent scope, similar to
`the inter partes reexamination process. ”
`Aqua Prods. v. Matal, 2017 WL 4399000, *9 n.6, *14 (Fed. Cir. 2017) (en banc) (O’Malley op.)
`
`
`
`
`
`Slide 27
`
`
`
`“Background” Rules: Other PTO Proceedings
`
`In inter partes reexamination “the scope of reexamination” “may not
`include other prior art than what constituted the basis of the Director’s
`determination of a substantial question of patentability”—with the
`exception of an “amended or substituted claim.”
`Belkin Int’l, Inc. v. Kappos, 696 F.3d 1379, 1383, 1384 n.2 (Fed. Cir. 2012))
`
`For amended or added claims, the Office “limits the [requester]’s ability to cite
`additional prior art against a newly-added or amended claim with respect to
`limitations for which the prior art has already been considered either during original
`prosecution or in the request for reexamination.”
`Airbus S.A.S. v. Firepass Corp., 793 F.3d 1376 , 1380 (Fed. Cir. 2015)
`
`Slide 28
`
`
`
`The Proposed Claim Includes Only Limitations
`Already Considered In The Institution Decision
`No additional prior art is justified
`• “This Motion is specifically drafted to not raise any new issues.”
`
`Paper 23 (Reply i/s/o Motion To Amend) at 4
`
`
`
`
`• It involves only limitations with respect to which patentability
`was already considered in the Director’s § 314(a) determination.
`• Under the Director’s determination of the scope of this IPR, the
`claim necessarily “is sufficiently narrower than the challenged
`claim to overcome the grounds of unpatentability upon which
`the IPR was instituted.” Aqua Prods. 2017 WL 4399000, *10 (O’Malley opinion) (italics in original)
`
`Slide 29
`
`
`
`Aqua Products Confirms That The Board’s Only
`Decision Addressing This Situation Was Correct
`
`• The Board’s grant of the motion to amend in Amerigen
`Pharmaceuticals v. Shire, IPR2015-02009, was correct before the
`Aqua Products decision, and even more correct after it—at least
`as to proposed claims with no “newly drafted” limitations
`o May respond to, and overcome, instituted unpatentability grounds by
`relying on patentability of non-instituted claims outside scope of IPR
`o Will not open the door to art and grounds not asserted in the petition
`
`
`
`
`
`Paper 23 (Patent Owner Reply i/s/o Motion To Amend) at 5-8; Amerigen, IPR2015-02009, Paper 38 at 6 (PTAB Mar. 31, 2017) (Ex. 2011).
`
`Slide 30
`
`
`
`
`Extra Slides
`
`Slide 31
`Slide 31
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`on the date stated below by electronic service, by agreement between the parties:
`
`
`PATENT OWNER POLARIS INNOVATIONS LTD’S
`ORAL HEARING DEMONSTRATIVES
`
`The names and address of the parties being served are as follows:
`
`IPR37307-0007IP1@fr.com
`IPR@sjclawpc.com
`
`
`Respectfully submitted,
`
`/ Shawn Chi /
`
`Date: November 6, 2017
`
`
`
`
`
`
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