             SUPREME COURT
 OF THE UNITED STATES
 


          IN THE SUPREME COURT OF THE UNITED STATES
 

       SAS INSTITUTE INC.,        )

              Petitioner,     )

             v.           ) No. 16-969
 
       JOSEPH MATAL, Interim Director, )
 
       U.S. Patent and Trademark Office, )
 
       and COMPLEMENTSOFT, LLC, 	    )

              Respondents. )
 







       Pages: 1 through 72
 
       Place: Washington, D.C.
 
       Date: November 27, 2017
 

           HERITAGE REPORTING CORPORATION 
                 Official Reporters1220 L Street, N.W., Suite 206 Washington, D.C.  20005 (202) 628-4888www.hrccourtreporters.com
                                                                    1
 

                        IN THE SUPREME COURT OF THE UNITED STATES
 


                      SAS INSTITUTE INC.,               ) 
                                    Petitioner,         ) 
                                  v.                    ) No. 16-969 
                      JOSEPH MATAL, Interim Director,   ) 
                      U.S. Patent and Trademark Office, ) 
                      and COMPLEMENTSOFT, LLC,          ) 
                                    Respondents.        ) 




                                     Washington, D.C.
 
                                   Monday, November 27, 2017
 


                                  The above-entitled matter came on for
 
                      oral argument before the Supreme Court of the
 
                      United States at 11:09 a.m.
 


                      APPEARANCES:
 
                      GREGORY A. CASTANIAS, Washington, D.C.; on behalf
 
                          of the Petitioner.
 
                      JONATHAN C. BOND, Assistant to the Solicitor General,
 
                          Department of Justice, Washington, D.C.; on behalf
 
                          of the Respondents.
 
                                       C O N T E N T S 
                      ORAL ARGUMENT OF:                      PAGE: 
                      GREGORY A. CASTANIAS 
                          On behalf of the Petitioner           3 
                      ORAL ARGUMENT OF: 
                      JONATHAN C. BOND 
                          On behalf of the Respondents         30 
                     REBUTTAL ARGUMENT OF: 
                     GREGORY A. CASTANIAS 
                          On behalf of the Petitioner          66 
                                  P R O C E E D I N G S
 
                                                        (11:09 a.m.)
 
                               CHIEF JUSTICE ROBERTS: We'll hear
 
                     argument next in Case 16-969, SAS Institute
 
                     versus Matal.
 
                               Mr. Castanias.
 
                               ORAL ARGUMENT OF GREGORY A. CASTANIAS
 
                                    ON BEHALF OF THE PETITIONER
 
                               MR. CASTANIAS: Mr. Chief Justice, and
 
                     may it please the Court:
 
                               For three reasons, the Patent Trial
 
                     and Appeal Board is not authorized to issue
 
                     final written decisions on fewer than all of
 
                     the patent claims challenged by inter partes
 
                     review petitioners.
 
                               The first is the plain language of the
 
                     statute. It requires the Board to issue a
 
                     final written decision with respect to the
 
                     patentability of "any patent claim challenged
 
                     by the petitioner." That's also supported by
 
                     the context of the Act.
 
                               Second, that plain and inclusive
 
                     command is not -­
                               JUSTICE GINSBURG: And doesn't -- may
 
                     I just ask you about what you just quoted,
 
                      doesn't the provision begin "if an inter partes
 
                      review is instituted"? If there is -- it's
 
                      instituted, then -­
                               MR. CASTANIAS: Yes, that's exactly
 
                      right, Justice Ginsburg. The -- the statute
 
                      starts with a conditional. The conditional was
 
                      met in this case because an inter partes review
 
                      was -- was, in fact, instituted in this case.
 
                               The second -- the second reason -­
                               JUSTICE SOTOMAYOR: It was only
 
                      instituted with respect to certain claims. So
 
                      I have two questions.
 
                               MR. CASTANIAS: Please.
 
                               JUSTICE SOTOMAYOR: I'm not at all
 
                      clear what it is you're challenging here. Are
 
                      you challenging the Board's right to initiate
 
                      partial adjudications or are you challenging
 
                      the fact that they are not addressing all of
 
                      the claims in their final decision? What is it
 
                      that you're actually asking us to review?
 
                               MR. CASTANIAS: Well, we are
 
                      challenging the latter. Our question presented
 
                      is focused on the language -­
                               JUSTICE SOTOMAYOR: So what is it
 
                      exactly that you want the Board to do with
 
                      respect to the claims that it didn't grant
 
                      adjudication of?
 
                               MR. CASTANIAS: We -- we believe that
 
                      Section 318(a) requires the Board -­
                               JUSTICE SOTOMAYOR: So you want them
 
                      to say we didn't grant review on these claims
 
                      because? Or do you want them to say the patent
 
                      is valid with respect to these claims that we
 
                      didn't grant review?
 
                               MR. CASTANIAS: Well, I think it's
 
                      actually -­
                               JUSTICE SOTOMAYOR: Because the only
 
                      -- the only power they're given is to decide
 
                      the patentability of claims. So what exactly
 
                      is it that you're asking them to do?
 
                               MR. CASTANIAS: Well, Justice
 
                      Sotomayor, what we are asking the Board to do
 
                      is to say, in its final written decision, that
 
                      we are not finding, for example, claim 4 of the
 
                      ComplementSoft patent -- as they did in this
 
                      case, we are not finding that unpatentable.
 
                      That way, we can then appeal that decision -­
                               JUSTICE SOTOMAYOR: Ahh, you want to
 
                      get around Cuozzo.
 
                               MR. CASTANIAS: No, I don't.
 
                               JUSTICE SOTOMAYOR: That -- that's
 
                      exactly what you want to do.
 
                               MR. CASTANIAS: That -- that's what
 
                      the government -­
                               JUSTICE SOTOMAYOR: You want to -­
                               MR. CASTANIAS: That's what the
 
                      government says we want to do. That's not what
 
                      we want to do.
 
                               JUSTICE SOTOMAYOR: Well, I don't see
 
                      what else you're trying to do, because what
 
                      will you do? You will come up on appeal and
 
                      say the Board was wrong in not instituting
 
                      review of those other claims? That's what
 
                      Cuozzo was about, us saying you can't do that.
 
                               I didn't agree with Cuozzo, so -­
                               MR. CASTANIAS: Well, I certainly
 
                      under -­
                               JUSTICE SOTOMAYOR: -- you know, I
 
                      mean -­
                               MR. CASTANIAS: -- I certainly
 
                      understand that.
 
                               (Laughter.)
 
                               JUSTICE SOTOMAYOR: But -- but -- but
 
                      it is what we said. And -- and so, assuming I
 
                      stick with precedent on this issue, what other
 
                      purpose would there be for the Board basically
 
                      to say we made a decision not to institute
 
                      review?
 
                               MR. CASTANIAS: Well, first of all,
 
                      Justice Sotomayor, if you look at what the
 
                      Board actually did in saying that they were not
 
                      going to institute review, the Board
 
                      effectively did make a patentability
 
                      determination in what it calls its initial
 
                      determination. So we have a decision by the
 
                      Patent -- the Patent Trial and Appeal Board
 
                      that has, in fact, ruled on the question but
 
                      because of the way they have ruled on it, we
 
                      can't appeal it and it can't be estopping. And
 


                               JUSTICE SOTOMAYOR: All right. You do
 
                      want to get around Cuozzo.
 
                               MR. CASTANIAS: Well, it's -­
                               JUSTICE SOTOMAYOR: Because there is
 
                      absolutely no way that that's anything other
 
                      than that. What's the -- if you're not
 
                      challenging their decision not to institute
 
                      review, why would that make any difference?
 
                               MR. CASTANIAS: Well, Justice Breyer's
 
                      opinion for the Court in Cuozzo was very clear
 
                      in saying that the -- that the determination in
 
                      that case was a challenge under the Section
 
                      314(a) institution only.
 
                               We're not challenging the Section
 
                      314(a) institution; what we're saying is that
 
                      whatever institution means, whatever
 
                      institution means when the Board says we're
 
                      only instituting as to these particular claims,
 
                      it doesn't take into account the fact -- and
 
                      this was not addressed in Cuozzo -- that 318(a)
 
                      by its terms, by its text, requires a final
 
                      written decision.
 
                               JUSTICE SOTOMAYOR: So would the
 
                      review on appeal be on the basis of a motion -­
                      like a motion to dismiss? On the face of
 
                      whatever you presented the Board with, at the
 
                      beginning, did the Board have a reasonable
 
                      basis to conclude that no reasonable basis
 
                      existed to challenge the validity of that
 
                      claim?
 
                               MR. CASTANIAS: No, the review would
 
                      not be over the reasonable basis or not. The
 
                      review would be on the question of
 
                      patentability.
 
                               JUSTICE SOTOMAYOR: So how could we -­
                      how could the appellate court make that
 
                      determination if there's no record with respect
 
                      to that issue?
 
                               MR. CASTANIAS: Well, Justice
 
                      Sotomayor, there actually -­
                               JUSTICE SOTOMAYOR: If -­
                               MR. CASTANIAS: -- is a record. I'm
 
                      sorry, I didn't mean to -­
                               JUSTICE SOTOMAYOR: No, no, I -­
                               MR. CASTANIAS: -- cut you off.
 
                               JUSTICE SOTOMAYOR: If the Board
 
                      didn't institute review of those claims, there
 
                      would be an incomplete record with respect to
 
                      those other claims.
 
                               MR. CASTANIAS: Let's keep in mind
 
                      that there are -- inter partes review is a -­
                      is a much more streamlined process than trial
 
                      court litigation. And the complaint is much
 
                      more than notice pleading.
 
                               In this case, the -- the petition that
 
                      was filed here was a complete document. It
 
                      laid out all of the grounds and all of the
 
                      challenges to all 16 of the ComplementSoft
 
                      patent claims. It also included a declaration
 
                      from an expert witness.
 
                               If you look at the first few pages of
 
                      the Joint Appendix in this case, which has
 
                      the -­
                               JUSTICE SOTOMAYOR: Well, that's fine.
 
                      But if the Board didn't institute review of
 
                      those other claims, the other side has not had
 
                      an opportunity to present its evidence in
 
                      contravention of your expert.
 
                               You're asking the appellate court to
 
                      decide patentability on the basis of an
 
                      incomplete, undeveloped record.
 
                               MR. CASTANIAS: Well, we'll either ask
 
                      the appellate court to decide patentability or
 
                      at least decide that we made a case of
 
                      patentability that ought to be decided.
 
                               JUSTICE SOTOMAYOR: All right.
 
                               MR. CASTANIAS: And it -­
                               JUSTICE SOTOMAYOR: So why don't you
 
                      get to the first issue at all?
 
                               MR. CASTANIAS: Right.
 
                               JUSTICE SOTOMAYOR: What you really
 
                      want to say is the Board shouldn't institute
 
                      partial reviews; it should, if it finds -- I
 
                      think what you're saying is, once it determines
 
                      you have enough evidence to challenge one
 
                      claim, it should hold a hearing on everything.
 
                      Because without that, you can't really decide
 
                      patentability in a due process way, in a fair
 
                      way.
 
                               So why have you limited your challenge
 
                      in the way you have? What's the purpose of
 
                      doing that? And what advantage does that give
 
                      you?
 
                               It seems to me that it's an unfair
 
                      advantage to the other side. It's an unfair
 
                      advantage to the system. So why don't you just
 
                      argue what you really want to argue, which is,
 
                      I should have an opportunity to litigate all of
 
                      my claims?
 
                               MR. CASTANIAS: Well, that's exactly
 
                      -- that is exactly our argument. We should
 
                      have the opportunity to litigate them in -­
                               JUSTICE GINSBURG: But the statute
 
                      precludes you from contesting the Institution
 
                      decision.
 
                               MR. CASTANIAS: Well, the -- the
 
                      statute precludes me from contesting the
 
                      Institution decision, but, Justice Ginsburg, I
 
                      think if we could move to the -- to the
 
                      regulation that the Patent Office issued in
 
                      this case, that there -- that the government is
 
                      relying on.
 
                               What you see in the -- in the Federal
 
                      Register, at 77 Federal Register 48702, the
 
                      government considered the objection that
 
                      reviews ought to take place with regard to all
 
                      challenged patent claims.
 
                               And what you won't see in the Federal
 
                      Register, where the Patent Office took up this
 
                      regulation, is any reference to Section 318(a).
 
                      It was -- that section was never considered.
 
                               What we have under Section 318(a) is
 
                      Congress saying to us and to -- and to the
 
                      public that when an -- when an inter partes
 
                      review is instituted -- and -- and keep in mind
 
                      that that's a binary choice -­
                               JUSTICE GINSBURG: And it's -- if it's
 
                      instituted and -- here, it was instituted, but
 
                      only on two of -- what -- what?
 
                               MR. CASTANIAS: Nine out of the 16
 
                      claims.
 
                               JUSTICE GINSBURG: Nine -- okay. Nine
 
                      out of 16. So that's -- so 318 relates to when
 
                      an inter partes review is instituted.
 
                               MR. CASTANIAS: It's an if/then -­
                      it's an if/then. It's a binary, that if it's
 
                      instituted, then we're entitled to a decision
 
                      on all challenged patent claims. And that's -­
                               JUSTICE GINSBURG: If it's -- if it's
 
                      instituted on any one, then the decision has to
 
                      be on all 16?
 
                               MR. CASTANIAS: The decision has to be
 
                      on all 16, that's right. That's what Section
 
                      318 says.
 
                               JUSTICE GINSBURG: Even though the
 
                      only one that they're examining is one?
 
                               MR. CASTANIAS: Well, that is -- that
 
                      is a determination by the Board at the outset
 
                      that we apparently have not met a burden of
 
                      proof. What we end up with under the -- under
 
                      the scheme that -- that the Patent Office is
 
                      following right now is a system whereby we were
 
                      sued -- we were sued in a complaint by
 
                      ComplementSoft, in a complaint that alleged
 
                      infringement of -- and I quote the complaint,
 
                      "at least claims 1, 2, 3, 4, 8, and 10."
 
                               We asked for review of all 16 claims
 
                      because of that "at least" language. The
 
                      Patent Office then only reviewed a certain
 
                      number of the claims, and then, in their
 
                      infringement contentions in this case,
 
                      ComplementSoft asserted every single claim in
 
                      the patent against us but claim 4.
 
                               And so, now, what we're left with is a
 
                      situation whereby we are in the Patent Office,
 
                      fighting for years in the inter partes review
 
                      over the patentability of nine of the 16
 
                      claims, and then we're going to have to go back
 


                               JUSTICE SOTOMAYOR: I'm sorry. How
 
                      did you do that for years? It's a year and a
 
                      half, isn't it, at most?
 
                               MR. CASTANIAS: Well, the -- the
 
                      petition was filed in 2012, and then we've gone
 
                      up to the Federal Circuit, and now, we're
 
                      before this Court. But, yes, it's a year and a
 
                      half at most, three months -- well -­
                               JUSTICE SOTOMAYOR: It's usually a
 
                      year. How long did it take here?
 
                               MR. CASTANIAS: It took -- they took
 
                      the maximum amount of time in this case. So -­
                               JUSTICE SOTOMAYOR: A year and a half
 
                      or a year?
 
                               MR. CASTANIAS: The year, they did not
 
                      extend the time.
 
                               JUSTICE SOTOMAYOR: All right.
 
                               MR. CASTANIAS: So -­
                               JUSTICE KAGAN: Mr. Castanias, can I
 
                      ask how your statutory argument works, given
 
                      your position on canceled claims?
 
                               MR. CASTANIAS: Uh-huh.
 
                               JUSTICE KAGAN: If I understand your
 
                      position on canceled claims, it's that the
 
                      Board need not render a decision as to those
 
                      claims. Is that right?
 
                               MR. CASTANIAS: That's right.
 
                               JUSTICE KAGAN: So I guess what's the
 
                      difference between a canceled claim and a
 
                      non-instituted claim? In other words, both
 
                      were originally in the petition. Both are no
 
                      longer in dispute.
 
                               So, with respect to the one, you say
 
                      it's perfectly consistent with the statutory
 
                      language that the Board did not render a
 
                      decision. Then why not with respect to the
 
                      other as well?
 
                               MR. CASTANIAS: Well, Justice Kagan,
 
                      there's a world of difference between the two.
 
                               A canceled claim no longer exists. We
 
                      can't be sued in the district court on a
 
                      canceled claim. If the denial of institution
 
                      means that we have to go relitigate that claim
 
                      under the same Section 102 and 103 grounds,
 
                      that we would otherwise be able to challenge
 
                      them in front of the -- the Patent Trial and
 
                      Appeal Board -­
                               JUSTICE KAGAN: So I understand
 
                      there's a practical difference, but I was
 
                      looking for -- because you say that your view
 
                      is commanded by the statute and particularly, I
 
                      think, by this phrase "challenged by the
 
                      Petitioner."
 
                               But if you were right about the
 
                      statutory language, that would apply to
 
                      canceled claims as well? It was challenged by
 
                      the Petitioner in the original petition.
 
                               MR. CASTANIAS: Yes, and -- but it's
 
                      no longer challenged by the Petitioner at the
 
                      time of the final decision.
 
                               JUSTICE KAGAN: And this one is also 
                      no longer in dispute. 
                               MR. CASTANIAS: And it is -- it is an 
                      ex-claim. It is no longer a claim. There's
 
                      nothing -- there's nothing to adjudicate. And
 
                      that's the -- that's the answer by the -­
                               JUSTICE KAGAN: And I think what the
 
                      Board would say is that the same thing is true
 
                      here, there's nothing to adjudicate because
 
                      they have said that it doesn't pass the
 
                      threshold, so they're not in the business of
 
                      adjudicating it.
 
                               MR. CASTANIAS: But it's -- but it's
 
                      because they've said that, and that's not what
 
                      the statute says. Now, it's -- our position is
 


                               JUSTICE KAGAN: Well, what language in
 
                      the statute distinguishes between the canceled
 
                      claim and the non-instituted claim?
 
                               MR. CASTANIAS: It is challenged by
 
                      the Petitioner -- and, actually, the word
 
                      "claim" would work as well because it's no
 
                      longer a patent claim. It doesn't exist.
 
                               But there is -- the -- the chapter -­
                      the inter partes chapter of the American
 
                      Invents Act, Justice Kagan, tells a really -­
                      it's a very simple, straightforward, and I
 
                      would dare say elegant story. It starts by
 
                      defining the scope of inter partes review in
 
                      section 311. Section 311 is entitled Inter
 
                      Partes Review.
 
                               Section 311(b) is entitled Scope. And
 
                      in that scope provision, it refers to what the
 
                      petitioner in an inter partes review may
 
                      request. You then move on to section 312,
 
                      which defines the requirements of a petition.
 
                      What does it require the petition to identify?
 
                      Among other things, each claim challenged.
 
                               So now, we're still at the beginning
 
                      of the process, and then 314 -­
                               JUSTICE SOTOMAYOR: Why bother -- why
 
                      bother requiring you to set forth all your
 
                      grounds for every claim you choose to
 
                      challenge? Because nothing in this forces you
 
                      to challenge the claims in inter partes review.
 
                               MR. CASTANIAS: No, we might select a
 
                      subset -­
                               JUSTICE SOTOMAYOR: So you could
 
                      choose -- you could have chosen to challenge
 
                      four and still gone back to district court and
 
                      challenged all 16 in district court.
 
                               MR. CASTANIAS: And we -- and we might
 
                      have to do that -­
                               JUSTICE SOTOMAYOR: So this was never
 
                      -- so this was never intended to capture all
 
                      litigation over validity?
 
                               MR. CASTANIAS: Oh, no, of course not.
 
                      And -- and we would never say that.
 
                               JUSTICE SOTOMAYOR: So -- so why
 
                      bother requiring you to set forth all your
 
                      grounds, particularly if you only really have
 
                      to do it with respect to one? You could take
 
                      your strongest case, set forth all the grounds
 
                      there, and on the other, say, we also want to
 
                      challenge all the other 15 because, under your
 
                      theory, you don't have to do anything more than
 
                      that.
 
                               You just have to identify one claim
 
                      that's weak. The Board says, we'll institute
 
                      review, and then you're entitled to challenge
 
                      all the other claims that you didn't set forth
 
                      with particularity.
 
                               MR. CASTANIAS: And -- and the -­
                               JUSTICE SOTOMAYOR: Because the Board
 
                      has to give you a hearing on those claims
 
                      anyway.
 
                               MR. CASTANIAS: And the statute -- but
 
                      -- but, Justice Sotomayor, keep in mind that
 
                      the statute invests the Board with the
 
                      discretion at the outset whether or not, that
 
                      binary choice, whether or not to institute.
 
                               And that's the -- and that's an
 
                      important word in the statute, "whether." It
 
                      doesn't say whether and if so as to which
 
                      claims. It is a binary choice, whether. And
 
                      that's consistent -­
                               JUSTICE KENNEDY: Could the Board
 
                      contact the parties and say, we will not grant
 
                      review as to all of the challenges claimed, but
 
                      if you reduce it to just claims 3 and 4, we
 
                      will hear it? Could the Board do that?
 
                               MR. CASTANIAS: I -- I think the Board
 
                      could do that and then leave the Petitioner
 
                      with the election at that point to say, you
 
                      know what, we think we'd rather go challenge
 
                      all the claims in district court and have -­
                      have to pay for one proceeding, rather than
 
                      two.
 
                               And that's really what this -- this is
 
                      about, Justice Sotomayor, to go back to your
 
                      question about what do you really want. We
 
                      want to have our Section 102 and 103 objections
 
                      to the ComplementSoft patent heard in a single
 
                      forum.
 
                               Is the Patent Trial and Appeal Board
 
                      more favorable for that -­
                               JUSTICE SOTOMAYOR: But you don't -­
                      you want that, but it doesn't mean the other
 
                      side wants that. It doesn't mean that the
 
                      Board needs that.
 
                               MR. CASTANIAS: Well, the statute -­
                      we believe the statute says that that's what
 
                      we're entitled to if -­
                               JUSTICE SOTOMAYOR: You think it's an
 
                      inherent right.
 
                               MR. CASTANIAS: -- if there is a grant
 


                               JUSTICE SOTOMAYOR: Could you show me
 
                      where -- anywhere in this statute the Board is
 
                      prohibited directly from initiating -­
                      initiation -- initiating partial review?
 
                               MR. CASTANIAS: Well, I -­
                               JUSTICE SOTOMAYOR: Of some claims -­
                      of some claims or not? And -­
                               MR. CASTANIAS: To the extent that
 
                      we're talking about the sort of partial
 
                      institution that they're doing right now, where
 
                      those are not decided in the final decision, I
 
                      would start with Section 318(a). It -- it -­
                               JUSTICE SOTOMAYOR: Assume there's not
 
                      -- I find that 314 -­
                               MR. CASTANIAS: Okay.
 
                               JUSTICE SOTOMAYOR: -- permits -- it
 
                      has no direct prohibition of partial
 
                      institution, that the Board is entitled to do
 
                      that, then why would we have to read the
 
                      language "patent claims challenged by the
 
                      Petitioner" any different than the Board is
 
                      reading it?
 
                               The Board is reading it to -- to mean
 
                      any patent claim challenged by the Petitioner
 
                      at the review stage.
 
                               MR. CASTANIAS: Justice Sotomayor, as
 
                      I was -- when I was engaging in colloquy with
 
                      Justice Ginsburg earlier and Justice Kagan, I
 
                      was talking about how the -- the statute tells
 
                      a really elegant story and -- and the way that
 
                      the inter partes review is supposed to work.
 
                      Once -- once a petition is filed, it is that
 
                      petition that is before the Board.
 
                               And Section 314, the one that you're
 
                      -- you're focused on, gives the director the
 
                      discretion to institute. It's whether to
 
                      institute. But it is whether to institute that
 
                      petition. It's not whether to institute with
 
                      regard to any particular claim.
 
                               JUSTICE KAGAN: Well, one of the
 
                      stories that the statute as written seems to
 
                      tell is of great discretion to the Board with
 
                      respect to the institution decision.
 
                               MR. CASTANIAS: Uh-huh.
 
                               JUSTICE KAGAN: It says you never have
 
                      to institute; it's your choice whether to
 
                      institute; you can't get review of the
 
                      institution decision, which is our Cuozzo case;
 
                      you get to write your own rules about the
 
                      institution decision, which is the -- the
 
                      rule-making delegation.
 
                               So it's a little bit odd to say, well,
 
                      here's the one thing you don't have discretion
 
                      over when it comes to institution: you can't
 
                      say these claims but not those claims.
 
                               In a -- in a context in which Congress
 
                      said the institution decision is really for the
 
                      Board, it's a discretionary decision that lies
 
                      in its bailiwick, why should we carve out that
 
                      one thing?
 
                               MR. CASTANIAS: Well, excuse me,
 
                      Justice Kagan, I think I would answer your
 
                      question by saying that the fact that that
 
                      discretion is imposed to grant or deny, whether
 
                      to grant, suggests very strongly as a textual
 
                      matter that there is not a further secret grant
 
                      of selective review at that point.
 
                               But, moreover, why -- why should it be
 
                      our choice? Why -- why should we be the -- the
 
                      entity that picks? Well, obviously, the
 
                      statutory language, we think, supports us. The
 
                      ordinary principle that the petitioner or the
 
                      plaintiff in litigation is the master of its
 
                      complaint, we -- because so many of these cases
 
                      follow litigation, we know best what claims
 
                      we're likely to be facing in litigation.
 
                               And, finally, it serves exactly the
 
                      two purposes that the majority opinion of the
 
                      Court in Cuozzo identified for the inter partes
 
                      review system, which is it screens out bad
 
                      patents while bolstering valid ones.
 
                               And it's -- it's one of the reasons
 
                      why you don't have a lot of amicus briefs on
 
                      either side in this case, is that we're
 
                      actually in the position of saying, yes, we
 
                      would like -- we would like to be -- have
 
                      appellate review and be bound by an adverse
 
                      decision with regard to claims that the Patent
 
                      Office did not think met the standard for
 
                      institution.
 
                               But that's not -- that's not
 
                      unreasonable, particularly in this case,
 
                      because as we pointed out in our reply brief on
 
                      the merits, the Patent Office in this case, the
 
                      Board, decided to institute review with respect
 
                      to claim 4 but not claim 2.
 
                               Now, claim 4 actually is identical to
 
                      claim 2, except it contains an additional
 
                      limitation. Had we been given the opportunity
 
                      to say to the -- to either to the Board in the
 
                      process of the litigation leading up to a final
 
                      decision or to the Federal Circuit on appellate
 
                      review, we could have said: Look, claim 4, if
 
                      it falls, claim 2 is going to fall with it.
 
                      There is no -- there's no earthly reason why we
 
                      should confirm this claim or reject that claim
 
                      but allow the other claim to go into -­
                               JUSTICE BREYER: The Patent Office -­
                      the Patent Office disagrees. So -- so I can't
 
                      make -- I -- I think the language does,
 
                      actually, help you. I have no doubt that the
 
                      language you point to helps you, but where I
 
                      run into trouble is I can't imagine how a
 
                      statute is supposed to work where you,
 
                      objecting, say: I object to 10 claims, all
 
                      right? Now we look at this and say: You're
 
                      going to get that grant; if just one of those
 
                      10 claims is reasonable likelihood, you'll
 
                      prevail. Okay?
 
                               MR. CASTANIAS: I'm not sure I -- I'm
 
                      not sure I follow that.
 
                               JUSTICE BREYER: So you will -- you
 
                      will have inter partes review under the first
 
                      thing, 13, 14, as long as just one, all you
 
                      have to have is one, and you will get inter
 
                      partes review.
 
                               MR. CASTANIAS: I -- it's not "will
 
                      get"; I "may get."
 
                               JUSTICE BREYER: You may get. Okay.
 
                      They say -- now, it's up to the Patent Office.
 
                      And the Patent Office says, yeah, one, okay.
 
                               Now, what you're saying is because
 
                      there was one and nine they're never going to
 
                      review, they think there's nothing to it.
 
                      Okay? And it says that their decision not to
 
                      review will not be appealed, all right?
 
                               Okay. So they find one, and all of a
 
                      sudden, they discover they're in court and have
 
                      to appeal everything on nine claims they
 
                      thought made no sense. But if they find all 10
 
                      are no good, then they're out of court, no way
 
                      to get them in there, dah, dah, dah. Okay?
 
                               Now, that's the part I have trouble
 
                      grasping, why someone would write a statute
 
                      like that.
 
                               MR. CASTANIAS: Well, Justice Breyer,
 
                      I think I'd start by urging you to read the
 
                      statute free of the regulation. Just read the
 
                      statutory language -­
                               JUSTICE BREYER: I have done that. I
 
                      actually have it written down. My law clerk
 
                      has it here. But I -- I grant you I have a
 
                      hard time keeping it all in mind.
 
                               MR. CASTANIAS: And -- and it's hard
 
                      to find in -- in the entire statutory scheme,
 
                      the language of scope, what the "challenged in
 
                      the petition," even the amendment -­
                               JUSTICE BREYER: No, I started by
 
                      saying -­
                               MR. CASTANIAS: -- language didn't
 
                      specify anything about -­
                               JUSTICE BREYER: I started by saying
 


                               MR. CASTANIAS: Excuse me.
 
                               JUSTICE BREYER: -- that I think
 
                      language does favor you but not definitely. I
 
                      mean, there is a lot of opening and ambiguity
 
                      here. And that's why I turned to what I was
 
                      having trouble with, is trying to imagine what
 
                      the purpose would be of writing a statute the
 
                      way you want, though I find it very practical
 
                      to think of the statute as your opponents want
 
                      it.
 
                               Now, that -- that exposing my method
 
                      of thinking, I'm not wedded to that, but I do
 
                      want to know what your answer is.
 
                               MR. CASTANIAS: Well, my -- my answer
 
                      is that I think that it makes -- it's very
 
                      practical to read the statute as we're reading
 
                      it. And I don't think it's ambiguous at all.
 
                      I think it's -- I think the ambiguity is only
 
                      injected by the addition of the regulation that
 
                      the Patent Office has -- has introduced into
 
                      this, because you won't find a hint of partial
 
                      institution anywhere in the statute, and you
 
                      have some strong textual indicators against it.
 
                               That's why we say that even if we were
 
                      in Chevron world and even if Section 318 were
 
                      the subject of a regulation, which it's not, it
 
                      would still not be within the zone of
 
                      reasonableness with regard to the -- the scope
 
                      of the ambiguity.
 
                               But why would you write it this way?
 
                      For exactly the two reasons that you -- you
 
                      wrote for the Court in Cuozzo. IPR screens out
 
                      bad patents while bolstering valid ones.
 
                               Look at what the Board did in this
 
                      case. In their institution decision, which ran
 
                      22 pages, it's not -- it wasn't just a
 
                      determination like the statute anticipates. It
 
                      was a full, written, reasoned decision, made in
 
                      very short order after three months. The Board
 
                      moved all of the work that they could have done
 
                      at the end to this institution phase and said:
 
                      Yeah, we're not going to institute with regard
 
                      to claim 2 and claims 10 through 16.
 
                               But we've still got reasoned decisions
 
                      on that. But those claims haven't been
 
                      bolstered, to use the words of -- of Cuozzo.
 
                      And the -- the decision by the Board to reject
 
                      our arguments ought to then, if we lose either
 
                      before the Board in the final decision written
 
                      or on appeal, it should estop us from
 
                      relitigating those issues in the federal
 
                      courts.
 
                               That was exactly the point of the
 
                      inter partes review statute, is to make
 
                      district court litigation simpler by allowing
 
                      the expert agency to do these types of
 
                      adjudications. I say that with trepidation
 
                      because of the first argument -- but they are
 
                      adjudications of a type that agencies may make,
 
                      and it streamlines the patent litigation that
 
                      follows.
 
                               If there are no further questions,
 
                      I'll reserve the remainder of my time.
 
                               CHIEF JUSTICE ROBERTS: Thank you,
 
                      counsel.
 
                               Mr. Bond.
 
                                 ORAL ARGUMENT OF JONATHAN C. BOND
 
                                   ON BEHALF OF THE RESPONDENTS
 
                               MR. BOND: Mr. Chief Justice, and may
 
                     it please the Court:
 
                               In establishing inter partes review,
 
                     Congress gave the PTO an enhanced tool to
 
                     identify and revisit patent claims that it has
 
                     determined may not be patentable for certain
 
                     reasons, and it entrusted the agency with
 
                     determining when to use that tool and how those
 
                      proceedings should work in practice.
 
                               Petitioner's challenge to the scope of
 
                      the final written decision here, its argument
 
                      that it should have included more claims in the
 
                      final written decision, fails because the PTO
 
                      or the -- the Board here, as under delegated
 
                      authority, validly determined not to institute
 
                      on those claims. They were never part of the
 
                      instituted proceeding, and there's nothing in
 
                      the statute that requires the Board to
 
                      institute or to include in its final decision
 
                      claims that were never part of the proceeding
 
                      in the first place.
 
                               Now, the crux of this dispute is, as I
 
                      think the prior colloquy illustrated, over the
 
                      partial institution decision. The Board's
 
                      partial institution decision here to institute
 
                      review, except as to claims 2 and 11 through
 
                      16, is not reviewable under Section 314(d) and
 
                      this Court's decision in Cuozzo. And, in any
 
                      event, it reflects a permissible exercise of
 
                      the broad discretion conferred on the Board by
 
                      the statute.
 
                               JUSTICE GORSUCH: Well, what is the -­
                               CHIEF JUSTICE ROBERTS: But what do
 
                      you do with the problem your friend raised with
 
                      respect to claim 4 and claim 2? It does seem
 
                      to put them in a difficult position.
 
                               MR. BOND: So it's actually not clear
 
                      that claim 4 is narrower than claim 2. As we
 
                      explained in the briefing in the court of
 
                      appeals, it's possible that claim 4 is actually
 
                      broader in some respects. That's a close
 
                      dispute that the Board, in its discretion,
 
                      determined claim 4 presents a -- a close
 
                      question. Claim 2 does not, as presented to
 
                      us, present a close question.
 
                               CHIEF JUSTICE ROBERTS: Well, that
 
                      doesn't seem to me -- I mean, I know we don't
 
                      have review of the decision which claims to
 
                      review, it doesn't seem to me like very
 
                      helpful, in terms of what the whole process was
 
                      supposed to accomplish.
 
                               MR. BOND: So we think Congress vested
 
                      the Board with discretion of deciding in what
 
                      circumstances claims are closely-enough related
 
                      that granting a review on one may -- implies
 
                      that it makes sense to grant a claim on a
 
                      related claim -- or grant review on a related
 
                      claim because they're so closely related.
 
                               Here, the Board determined that the
 
                      request for review on claim 2 failed because
 
                      the petition failed at the threshold. It
 
                      didn't identify specific references in the
 
                      prior art that rendered claim 2 obvious over
 
                      the prior art.
 
                               With respect to claim 4, the petition
 
                      had made a closer showing. Now, that's a
 
                      function of the petition.
 
                               JUSTICE KENNEDY: Well, why couldn't
 
                      the Board just -- just say we -- we decline to
 
                      grant it unless you reduce the -- unless you
 
                      eliminate this claim?
 
                               MR. BOND: So, we think the Board
 
                      could do that, and we think that the Board has
 
                      that authority to say we're denying review
 
                      across the board, but we -- and on Petitioner's
 
                      view, I think that he conceded that that -­
                               JUSTICE KENNEDY: But then we can rule
 
                      against you, and there's no real problem.
 
                               MR. BOND: We -- we could deny review
 
                      across the board, but if you tailor your
 
                      petition, we could grant review in that
 
                      circumstance.
 
                               But that, we think, illustrates the
 
                      artificiality of the Petitioner's position that
 
                      the Board could get to the same result, just
 
                      through a more cumbersome, multistage process
 
                      of saying, we're not going to grant it this
 
                      way, but if you revise and resubmit, we will
 
                      then entertain your challenge.
 
                               Here, we understand that Congress
 
                      designed -­
                               JUSTICE KENNEDY: Well, it doesn't
 
                      because the challengers might say, in that -­
                      in that event, we'll just go to the district
 
                      court. We don't want -- we don't want it.
 
                               MR. BOND: Sure, and they could do
 
                      that in this instance. A challenger here who's
 
                      dissatisfied with the Board's decision about
 
                      the scope of review can say, you know what,
 
                      it's not worth our time, we can settle with the
 
                      -- the Patent Owner our -- our IPR dispute, we
 
                      can agree not to pursue it and can proceed in
 
                      litigation.
 
                               And if, as in this case, the alleged
 
                      infringer was sued in a -- in a district court
 
                      infringement case and then brings an I -- IPR
 
                      proceeding, there's no stay of the district
 
                      court proceeding, at least mandated by the
 
                      statute, so they can proceed in the district
 
                      court to litigate as they had -- already had
 
                      been doing.
 
                               CHIEF JUSTICE ROBERTS: I -- I thought
 
                      roughly half of the proceedings were stayed?
 
                               MR. BOND: As matter of the district
 
                      court's discretion, I think a little over
 
                      50 percent of contested stay motions are
 
                      granted, but, of course, if it's the alleged
 
                      infringer who went to the IPR or went to the
 
                      PTO to ask for an IPR and then says, look, I'm
 
                      done with IPR, they wouldn't grant review on
 
                      the claims that I would like, they can go back
 
                      to the district court and say, I no longer need
 
                      a stay if one was granted in the first place,
 
                      let's proceed to litigate this here in this
 
                      infringement suit.
 
                               And so we think that the statute is
 
                      perfectly consistent with inter partes review
 
                      being conducted on a partial institution basis,
 
                      and at a minimum, as I think was discussed
 
                      earlier, no provision of the statute clearly
 
                      prohibits what the -- what the PTO is doing
 
                      here.
 
                               JUSTICE ALITO: Well, what about
 
                      318(a)? If we look at that by itself, where is
 
                      there any ambiguity? If an inter partes review
 
                      is instituted and not dismissed under this
 
                      chapter, the Patent Trial and Appeal Board
 
                      shall issue a final decision with respect to
 
                      the patentability of any patent claim
 
                      challenged by the Petitioner.
 
                               What is ambiguous about that?
 
                               MR. BOND: So a couple of things.
 
                      First, we'd say, as Petitioner invited the
 
                      Court to do, read through the statute
 
                      sequentially. We set it forth starting at page
 
                      11A of our brief in the appendix. Read through
 
                      and see what -­
                               JUSTICE ALITO: Well, that really
 
                      wasn't my question. If we look at that
 
                      language by itself, where is there ambiguity?
 
                               MR. BOND: Sure. If -- if you look at
 
                      the four words, "challenged by the Petitioner,"
 
                      in isolation, they don't answer any of the
 
                      questions about the scope of what we mean by
 
                      challenged by the Petitioner.
 
                               So, if you look at those four words in
 
                      isolation, they don't tell you standing alone
 
                      challenged in an IPR proceeding or this IPR
 
                      proceeding as distinct from in an infringement
 
                      suit where you also challenged them. It also
 
                      doesn't tell you challenged on a ground
 
                      permitted within IPR.
 
                               JUSTICE ALITO: You think that's -­
                      you think that is a serious interpretation of
 
                      this challenge -- they challenged it in a
 
                      discussion in their office. They challenged it
 
                      in a discussion in a bar. It means challenged
 
                      it in this proceeding. What else could it
 
                      mean?
 
                               MR. BOND: Well, you know that because
 
                      of context. It also means challenged on a
 
                      ground within IPR, challenged timely and
 
                      challenged by a petitioner who's not estopped
 
                      from doing so.
 
                               And the reason that question isn't
 
                      hard is because of the context of the statute,
 
                      including the opening clause that takes as its
 
                      starting premise -­
                               JUSTICE ALITO: You think it's not
 
                      hard?
 
                               MR. BOND: We think -­
                               JUSTICE ALITO: You think that's not a
 
                      hard question at least?
 
                               MR. BOND: No, we think what's not
 
                      difficult is the question you posed -- or the
 
                      question that I suggested of we know that they
 
                      mean challenged in an IPR proceeding and in
 
                      this IPR proceeding. That question we don't
 
                      think is difficult because of the context,
 
                      because of the opening clause referring to "if
 
                      an IPR proceeding is instituted," we're
 
                      referring to that IPR proceeding.
 
                               And it is -­
                               JUSTICE BREYER: Is this how you would
 
                      read it -- and don't just agree with me because
 
                      it sounds as if I agree with you, I just want
 
                      to know what you -- don't get me off on a
 
                      mistake if it is -- if an inter partes review
 
                      is instituted, any patent claim that is the
 
                      subject of that inter partes review challenged
 
                      by -- in other words, it is understood that the
 
                      word "patent claim" refers to a claim that
 
                      inter partes review has been granted in respect
 
                      to. 
                               MR. BOND: We -­
                               JUSTICE BREYER: Is that right or 
                     wrong? 
                               MR. BOND: We think that's essentially 
                      right. I -- I would say that another way of
 
                      framing it is challenged by the Petitioner
 
                      implicitly within the instituted proceeding,
 
                      referred to in the opening clause. So I think
 
                      we're -- we're saying -­
                               CHIEF JUSTICE ROBERTS: That's more of
 
                      a stretch from the -- it's a fairly complicated
 
                      and refined stretch of any claim challenged by
 
                      the Petitioner.
 
                               MR. BOND: So we think it's actually
 
                      consistent with ordinary usage to say, at the
 
                      merits phase of a discretionary review
 
                      proceeding, that when you say challenged by the
 
                      Petitioner, you mean within the merits phase
 
                      that the opening clause presupposes has taken
 
                      place.
 
                               When this Court grants certiorari -­
                               JUSTICE BREYER: I put it -- I put it
 
                      my way because the word "any" is like Exhibit
 
                      Number 1 for a word, the scope of which is very
 
                      often ambiguous in a statute.
 
                               If you can eat any fish, you can eat
 
                      any fish. Think about that one.
 
                               MR. BOND: So -­
                               (Laughter.)
 
                               JUSTICE BREYER: All right. Now -­
                      now my -- my point is we have loads of statutes
 
                      where the word "any" has a scope and the scope
 
                      is determined by the context of the statute.
 
                      And so what I'm thinking in the back of my mind
 
                      is this is one of those, but as I say, don't
 
                      let me get off on a wrong foot.
 
                               MR. BOND: So we do agree that any
 
                      encompasses anything within the scope that the
 
                      context of 318(a) and its broader context of
 
                      the scheme encompasses. So it's any claim
 
                      within the instituted proceeding.
 
                               But just focusing on that word "any,"
 
                      I think it's helpful to look past the language
 
                      the Petitioner quotes to the -- the end of
 
                      318(a). It says "any patent claim challenged
 
                      by the Petitioner and any new claim added under
 
                      section 316(d)."
 
                               What "any" is doing here is not saying
 
                      this is an all-encompassing review provision
 
                      that requires this final written decision to
 
                      encompass anything in the universe. It's doing
 
                      something much more limited.
 
                               The tail end of this sentence in
 
                      section 318(a) is simply clarifying that, when
 
                      you get to the final decision, there are two
 
                      kinds of things the Board needs to address. It
 
                      needs to address those claims that were
 
                      actually challenged within the instituted IPR,
 
                      if there are any left, and it needs to address
 
                      any substitute claims added by amendment or
 
                      proposed to be added by amendment under 316(d),
 
                      if there are any.
 
                               JUSTICE ALITO: If Congress wanted to
 
                      say what you think this means, why in the world
 
                      would they phrase it the way it is phrased in
 
                      318(a)? Why wouldn't they say with respect to
 
                      the patentability of any claim found by the
 
                      director to have at least some likelihood of
 
                      success? Or any claim on which review was
 
                      granted? Why in the world would they say any
 
                      patent claim challenged by the Petitioner?
 
                               MR. BOND: Well, two points, Your
 
                      Honor. There are several things that can cause
 
                      a claim not to be in the case by the end. The
 
                      fact that the PTO or the PTAB on delegated
 
                      authority didn't institute is one, but also
 
                      canceled claims and also settled claims.
 
                      Parties can settle not just the entire dispute
 
                      but also their dispute over individual claims.
 
                               Any of those things would mean that
 
                      the claim is no longer challenged by the
 
                      Petitioner at the time of the final decision.
 
                               JUSTICE BREYER: It doesn't actually
 
                      have to mean that. I just thought there's
 
                      another tack here, that if you're voting in
 
                      Congress on this, you actually don't know what
 
                      you think of in respect to the answer to this
 
                      question we are now litigating.
 
                               And since you don't know, the best
 
                      answer, from the point of view of the agency,
 
                      you use a word like "any" and "any claim," as I
 
                      say, filled with ambiguity, so that the agency
 
                      can decide which way it wants to go. Is there
 
                      any indication of that?
 
                               MR. BOND: So we -- we do think that
 
                      Congress, indeed, left these matters to the
 
                      agency in 316(a). It's just like the question
 
                      that was presented in Cuozzo. No statutory
 
                      provision in Cuozzo specifically addressed the
 
                      claim construction standard.
 
                               CHIEF JUSTICE ROBERTS: Well, but
 
                      that's -- so you're saying, if I understand
 
                      your answer to Justice Breyer, that Congress
 
                      deliberately adopted an ambiguous term in the
 
                      statute so that the agency would determine what
 
                      it meant.
 
                               It's one thing to say, you know, the
 
                      agency should determine which patent claims
 
                      challenge it will decide in -­
                               MR. BOND: You -­
                               CHIEF JUSTICE ROBERTS: Or which ones
 
                      that aren't decided will be considered? It's
 
                      another thing to decide let's pick a word
 
                      that's so vague that nobody will be able to
 
                      figure it out, and we'll leave it to the
 
                      Commission.
 
                               MR. BOND: No, and let -- let me be
 
                      clear. Our point is not that Congress enacted
 
                      on purpose a deliberately ambiguous statute.
 
                      Our point is that the statute Congress enacted
 
                      is consistent with partial institution. But to
 
                      the extent there's a question about that,
 
                      Congress left those questions to the agency.
 
                               JUSTICE SOTOMAYOR: Well, there is one
 
                      very telling sign that the "any patent claim
 
                      challenged by the Petitioner" has a different
 
                      meaning, and that's in 314 itself, which says
 
                      "claims challenged in the petition."
 
                               If Congress intended claims challenged
 
                      in the petition to be a part of 318, it could
 
                      have used exactly the same words.
 
                               MR. BOND: That's exactly right. And
 
                      that, I think, is the second answer to Justice
 
                      Alito's question, the reason to think that
 
                      Congress intended this result is that Congress
 
                      used this very phrase that would encompass
 
                      Petitioner's position in a different phrase of
 
                      the statute.
 
                               JUSTICE ALITO: But you think
 
                      "challenged by the Petitioner" is narrower than
 
                      -- I'm sorry, any change -- "any patent claim
 
                      challenged by the Petitioner" is narrower than
 
                      the words that are used in 314?
 
                               MR. BOND: So we think it is narrower
 
                      in the circumstance for the same reason the
 
                      Petitioner does, that it includes the
 
                      possibility that claims will drop out along the
 
                      way.
 
                               And, again, "challenged by the
 
                      Petitioner" standing alone is capaciously broad
 
                      and could encompass any number of things. It's
 
                      context that tells you that it's narrower.
 
                               JUSTICE GORSUCH: But doesn't that
 
                      exactly work the other way around? Of course,
 
                      by the end, you're only going to resolve the
 
                      challenges that remain pending. When you're
 
                      doing the Institution decision of inter partes
 
                      review, you're going to look at the petition.
 
                      Couldn't it be just that simple?
 
                               And doesn't 314 kind of cut against
 
                      the government in some ways too by suggesting
 
                      that all the PTO needs to do is decide whether
 
                      there is one claim that isn't frivolous, that's
 
                      -- that's the sum total of its job under the
 
                      plain terms.
 
                               MR. BOND: So -­
                               JUSTICE GORSUCH: And that -- and that
 
                      beyond that, it need not go further.
 
                               MR. BOND: So two points. First, we
 
                      agree that 314 is focused on the Institution
 
                      phase and, therefore, the focus is on the
 
                      petition -­
                               JUSTICE GORSUCH: Right.
 
                               MR. BOND: -- whereas in 318 -­
                               JUSTICE GORSUCH: It's what -- what's
 
                      left.
 
                               MR. BOND: Right, it's what's left of
 
                      the proceeding.
 
                               JUSTICE GORSUCH: So that's why
 
                      there's a difference in language there, you
 
                      agree.
 
                               MR. BOND: Right, exactly. And we
 
                      think that that underscores that what's left
 
                      can include the fact -­
                               JUSTICE GORSUCH: But how then do we
 
                      deal with the fact that in 314, we have all the
 
                      -- all the PTO has to do is decide whether
 
                      there is one non-frivolous claim. It's a
 
                      thumbs-up or a thumbs-down decision -­
                               MR. BOND: Because -­
                               JUSTICE GORSUCH: -- that's
 
                      anticipated there, not a -- not a
 
                      claim-by-claim examination.
 
                               MR. BOND: Well, two points, Your
 
                      Honor. First, what Congress included there is
 
                      simply a floor. It's phrased as a prohibition
 
                      that the PTO and, on delegated authority the
 
                      Board, may not institute, unless it finds that
 
                      at least one of the claims has a reasonable
 
                      likelihood of being found invalid.
 
                               It doesn't say that the Board must
 
                      therefore institute or must do an up-or-down
 
                      determination.
 
                               JUSTICE GORSUCH: No.
 
                               MR. BOND: We think that that leaves
 
                      room for the Board to say we can't institute if
 
                      we don't find at least one, but you know what?
 
                      We're going to conserve our resources, as
 
                      316(b) tells us in the adopting regulations and
 
                      focus then on the claims -­
                               JUSTICE GORSUCH: Well, help me -­
                      help me out with 316 then if that's where you
 
                      are going to go to. Where do you -- where do
 
                      you see the authority for the regulations that
 
                      the director is proscribed here?
 
                               MR. BOND: Sure. They're in two
 
                      provisions, principally 316(a)(4), which was
 
                      the same provision at issue in Cuozzo.
 
                               JUSTICE GORSUCH: Now, (a)(4), that -­
                      my problem with that, where I get stuck is that
 
                      (a)(4) concerns establishing a governing inter
 
                      partes review. And we're not at that stage
 
                      yet. We're at the decision whether to
 
                      institute inter partes review.
 
                               MR. BOND: Sure.
 
                               JUSTICE GORSUCH: I would have thought
 
                      you'd have to look to (a)(2) rather than
 
                      (a)(4).
 
                               MR. BOND: Right, so (a)(2) is the
 
                      second provision, but we do think that (a)(4)
 
                      encompasses this because it's establishing and
 
                      governing inter partes review. And the Board's
 
                      determination whether to institute on a
 
                      particular claim is part of that universe of
 
                      things that was granted to the Board.
 
                               But certainly also (a)(2) because that
 
                      establishes or gives the Board authority to
 
                      establish rules that govern the showing of
 
                      sufficiency that needs to be made. This is on
 
                      17(a) of the -- defense.
 
                               JUSTICE GORSUCH: I'd agree with you
 
                      that you've given great discussion on the
 
                      standards for showing sufficient grounds to
 
                      institute a review. I'm not sure, I guess you
 
                      can help me on how that also includes the
 
                      authority whether to grant review of this or
 
                      that claim, the weeding out process.
 
                               MR. BOND: Sure.
 
                               JUSTICE GORSUCH: I can see how it
 
                      might affect the reasonable likelihood inquiry
 
                      and how the director is going to go about doing
 
                      that, but I -- I guess it's a little less clear
 
                      to me how it also grants him authority or her
 
                      authority to decide which claims to proceed
 
                      with.
 
                               MR. BOND: Sure. Because -- well,
 
                      what it says is the standards for showing of
 
                      sufficient grounds. And those standards for
 
                      showing sufficient grounds, that's in (a)(2).
 
                               JUSTICE GORSUCH: Yeah.
 
                               MR. BOND: And what the Board's
 
                      regulation is doing is preserving the Board's
 
                      ability to assess sufficiency on a
 
                      claim-by-claim basis. We think that's
 
                      encompassed within (a)(2).
 
                               JUSTICE GORSUCH: Well, but -- but
 
                      314(a) seems to proscribe that -- that
 
                      question, at least with respect to one claim.
 
                      It speaks to that very issue.
 
                               MR. BOND: Well, it sets a floor, just
 
                      like the outer time limits that Congress
 
                      required in 316(a)(11), set an outer time
 
                      limit, but don't preclude the Board from
 
                      setting a lower time limit on the completion of
 
                      the final written decision.
 
                               The same we think is true of 316 -- or
 
                      314(a). It said you may not institute unless
 
                      at least one of these claims, you conclude, is
 
                      worthwhile because it clears that reasonable
 
                      likelihood threshold.
 
                               But especially in the context of the
 
                      scheme that gives the Board complete discretion
 
                      to deny review entirely, we think it's
 
                      improbable that Congress would have tied the
 
                      Board's hands in this one respect.
 
                               Moreover, not just to say you don't
 
                      have -­
                               JUSTICE GORSUCH: Is there some
 
                      inconsistency with 304 where you're allowed -­
                      the director gets to decide which question
 
                      specifically the director wants to take up?
 
                      There seems to be an express grant to the
 
                      director there to do exactly what you want to
 
                      do here. And is its absence here suggestive?
 
                               MR. BOND: We don't think so, Your
 
                      Honor. I think the scheme of ex parte
 
                      reexamination is fundamentally different in
 
                      that its parties are suggesting to the Board or
 
                      the Board on its own initiative saying we're
 
                      going to look at a particular substantial new
 
                      question of patentability that has been raised,
 
                      and we'll look at which particular claims we
 
                      think are implicated by that.
 
                               JUSTICE GORSUCH: It's not just claims
 
                      in 304, it is questions. And so the director
 
                      can pick and choose which questions. And it is
 
                      granted that express authority.
 
                               And normally we -- we think that when
 
                      it's granted in one place but not clearly
 
                      granted in the other that that -- that that
 
                      intends a difference.
 
                               MR. BOND: So, at a minimum, that
 
                      difference doesn't clearly preclude the Board
 
                      here under 314(d) and its regulatory authority
 
                      from saying we're going to treat this as a
 
                      floor, that we are told by Congress we can't do
 
                      it unless we clear this floor, but we're going
 
                      to hold patents or IPR petitions to a higher
 
                      standard and evaluate them claim by claim
 
                      because that's consistent with the purpose as
 
                      Congress told us in 316(b) to consider in
 
                      adopting our regulations.
 
                               And those purposes boil down to, as
 
                      the Court underscored in Cuozzo, making sure
 
                      we're actually improving patent quality and
 
                      doing so efficiently.
 
                               Now, the Board's partial institution
 
                      approach is perfectly consistent with both of
 
                      those aims. It focuses its energies on those
 
                      patent claims it determines actually have a
 
                      reasonable likelihood of being invalidated
 
                      without wasting time on other claims.
 
                               The Petitioner's all-or-nothing
 
                      approach puts the Board to an untenable choice;
 
                      either it wastes time on claims it's already
 
                      determined don't have a reasonable likelihood
 
                      of being invalidated at least based on the
 
                      arguments presented in the petition, or it
 
                      doesn't use this new tool at all and all of the
 
                      work of creating inter partes review was for
 
                      nothing.
 
                               And so, in either event, we're not
 
                      getting the benefit or achieving either of the
 
                      goals that Congress had in mind.
 
                               And there -­
                               JUSTICE ALITO: Is there anything in
 
                      the statute that would prevent the Board, if it
 
                      is required to render a final decision on all
 
                      claims initially challenged by the Petitioner
 
                      from instituting a streamlined procedure for
 
                      dealing with the claims that were found at the
 
                      outset to have no likelihood of success?
 
                               Why does it need to go through a full
 
                      proceeding with respect to those claims? Can
 
                      -- can it not just say in a summary form we
 
                      found that these have no likelihood of success?
 
                               And then that could be appealed to the
 
                      Federal Circuit and the Federal Circuit could
 
                      decide whether that -- that determination was
 
                      permissible.
 
                               MR. BOND: So a couple of points, Your
 
                      Honor. First, at the institution phase, the
 
                      Board is not deciding the merits, it is
 
                      deciding not to decide the merits. It is
 
                      saying you haven't for some reason made a
 
                      sufficient showing to make us convinced that it
 
                      is worth our time to investigate the merits of
 
                      your claim.
 
                               They can also deny, however, for
 
                      additional reasons, irrespective of the merits.
 
                      They might say, just as all agree they can deny
 
                      the petition entirely apart from the merits,
 
                      they might say this patent claim is going to be
 
                      very time-consuming and is not going to advance
 
                      the goals of the statute, so we're going to
 
                      deny review on that ground.
 
                               So there is not necessarily a ruling
 
                      on the merits at all, and it's fundamentally
 
                      different than a district court, say, folding
 
                      in a 12(b)(6) or summary judgment ruling
 
                      because it's based on the agency's discretion,
 
                      not just the merits.
 
                               JUSTICE KAGAN: Or couldn't the agency
 
                      at that point say, you know, the ground on
 
                      which you charge this patent is invalid is not
 
                      a ground we can review at this time?
 
                               MR. BOND: Right. Exactly right.
 
                      They could as well say that you have challenged
 
                      this on 112 under indefiniteness or under
 
                      Section 101, and it's a law of nature
 
                      challenge, and that's not properly presented to
 
                      us. They could say on those grounds or you are
 
                      estopped and we're not going to consider
 
                      those -- those -­
                               JUSTICE KAGAN: And then it would
 
                      seem, I mean, that would be a strange kind of
 
                      thing to say, well, you can't challenge on that
 
                      ground, but we're going to issue a decision as
 
                      to patentability.
 
                               MR. BOND: Exactly right. So you're
 
                      forced with either the PTO -- the PTAB either
 
                      deciding we're not going to review this ground
 
                      and then that gets baked into the final
 
                      decision and treated as a merits ruling, which
 
                      can then be appealed to the Federal Circuit and
 
                      creates circumvention of Cuozzo, or you're
 
                      forcing the Board to decide the merits,
 
                      notwithstanding the fact that it didn't
 
                      institute review, didn't get submissions from
 
                      the parties at the merits stage, and didn't
 
                      apply the different standards that apply at the
 
                      merits stage of IPR proceedings.
 
                               CHIEF JUSTICE ROBERTS: It -- it
 
                      didn't institute review, but it issued a quite
 
                      lengthy decision addressing the issues, right?
 
                               MR. BOND: It issued a lengthy
 
                      decision, about half as long as the final
 
                      decision, but they're different in kind. And
 
                      I'd like to emphasize a few ways that they
 
                      differ.
 
                               So, importantly, when the Board denies
 
                      review, it often is denying review for some
 
                      threshold reason based on a failing in the
 
                      petition presented to it, not deciding
 
                      patentability at the end.
 
                               So a good example here is at Petition
 
                      Appendix page 115a to 116a where the Board
 
                      denies institution of claims 11 through 16.
 
                      Those claims are what are known as
 
                      means-plus-function claims, where under Section
 
                      1112(f) -- or 112(f) their meaning is
 
                      determined by a particular structure set forth
 
                      in the specification, not in the claim itself.
 
                               Accordingly, the Board's regulations
 
                      -- and this is 42.104 -- require a petition for
 
                      inter partes review to identify what structure
 
                      do you think determines the construction of
 
                      this claim so that we, the Board, can determine
 
                      if it's unpatentable?
 
                               The Board said at 115, the petition
 
                      didn't identify what structure it was that the
 
                      petitioner thought informed the construction or
 
                      the interpretation of these claims.
 
                               So a fortiori, we can't determine
 
                      patentability based on your submission.
 
                               CHIEF JUSTICE ROBERTS: How often -­
                      how often does it issue decisions -- written
 
                      decisions at this stage in determining whether
 
                      to institute inter partes review?
 
                               MR. BOND: So I -- I don't have
 
                      statistics on how frequently it issues
 
                      decisions of this kind. We think it is the
 
                      Board's ordinary practice, and we think for two
 
                      reasons that is actually a good practice that
 
                      the Board, in its discretion, has -- has
 
                      adopted.
 
                               It's helpful for the Board itself
 
                      because, if the Board institutes review, it
 
                      then -- the judges of the panel or whatever
 
                      panel is assigned to it, then have a very short
 
                      window set by statute to determine the merits
 
                      of this proceeding after the administrative
 
                      trial is complete.
 
                               And, second, it's beneficial for the
 
                      parties to this case and other cases to know
 
                      what it is the Board is looking for in this
 
                      relatively new statutory scheme when it
 
                      institutes review and exercises its discretion.
 
                               That discussion at page 115A of the
 
                      petition appendix is illustrative. It shows
 
                      other parties in the future. If you actually
 
                      don't follow our rule and include the kind of
 
                      structure that we say you must, because 112F
 
                      requires us to look at that in construing the
 
                      claim, we are unlikely to grant review on your
 
                      petition.
 
                               That's instructive to the bar and the
 
                      patent bar and to the patent community -­
                               JUSTICE SOTOMAYOR: I thought -­
                               MR. BOND: -- to know how -­
                               JUSTICE SOTOMAYOR: -- that that was
 
                      the very reason given by the Board in
 
                      encouraging these kinds of opinions to be
 
                      written.
 
                               MR. BOND: That's precisely right,
 
                      that it's useful to the patent -- it's useful
 
                      to the patent bar and useful to the community
 
                      to know -­
                               JUSTICE SOTOMAYOR: So the patent
 
                      Board basically told the public, we're issuing
 
                      these decisions for educational purposes?
 
                               MR. BOND: That's right, it -- to
 
                      educate the -- the -- the public and the patent
 
                      bar and also itself and its panels on what the
 
                      nature of this suit is or what -- what this
 
                      dispute is and what it looks for in the future.
 
                               But, in any event, even if the patent
 
                      -- even if the Board could adopt a more
 
                      efficient method of partial institution, we
 
                      think that's beside the point of the question
 
                      presented to you today.
 
                               Whether the Board could achieve more
 
                      efficient partial institution with a thumbs up
 
                      or thumbs down is not a reason for the Board to
 
                      jettison that system entirely and adopt this
 
                      much more inefficient approach where it lacks
 
                      discretion over the one thing that is common to
 
                      patent law. The default rule in patent law is
 
                      that claims are evaluated independently. In
 
                      litigation, each claim is independently
 
                      presumed valid under Section 282.
 
                               It would be highly incongruous for
 
                      Congress to say, when the expert agency is
 
                      reviewing patents it has issued, it lacks
 
                      discretion to constrain the scope of its review
 
                      and lacks discretion to do what is ordinarily
 
                      the rule in patent law. And indeed, the rule
 
                      in discretionary review generally, we're not
 
                      aware of any context in which a tribunal vested
 
                      with discretionary review authority is put to
 
                      this choice of reviewing all -­
                               JUSTICE GORSUCH: What do you say
 
                      about our -- our last argument, where a lot of
 
                      our attention focused on Congress's putative
 
                      intention to -- to want to move things to an
 
                      expert agency and -- and speed things along,
 
                      make it more efficient?
 
                               Could -- could that be a reason here
 
                      why Congress might have wanted the Patent
 
                      Office to review any -- and -- and issue a
 
                      final decision on any and all claims brought to
 
                      it?
 
                               MR. BOND: So, two points. We don't
 
                      think that it would be more efficient in a
 
                      sense of making things go faster. If the Board
 


                               JUSTICE GORSUCH: No, I -- no, surely,
 
                      not necessarily efficient from the -- the PTO's
 
                      perspective, but efficient from the economy's
 
                      perspective.
 
                               MR. BOND: So -- so then two points on
 
                      the -- on the economy benefit point. It is not
 
                      going to benefit the economy first if the PTO
 
                      is put to a choice between not instituting
 
                      review at all, that is no benefit to the
 
                      economy, or spinning its wheels on claims in a
 
                      patent on -­
                               JUSTICE GORSUCH: But it could do what
 
                      Justice Kennedy said. That -- that would -­
                      everybody agrees would remain an available
 
                      choice.
 
                               MR. BOND: It could indeed do that,
 
                      and that, we think, highlights that this is
 
                      consistent with Congress's goals. If it could
 
                      achieve -- achieve the same result in two more
 
                      cumbersome steps -- two more cumbersome steps,
 
                      it makes sense that Congress did not intend to
 
                      preclude it from doing so through this natural
 


                               JUSTICE GORSUCH: Well, it would
 
                      require consent by the -- by the litigant in
 
                      that case, where as here, this litigant took
 
                      the view that I really want an adjudication on
 
                      everything that -- would it be crazy to suppose
 
                      that Congress might have wanted that as a way
 
                      to achieve maximum efficiency through this
 
                      administrative process?
 
                               MR. BOND: So -­
                               JUSTICE GORSUCH: From the -- from the
 
                      economy's perspective?
 
                               MR. BOND: We don't think the consent
 
                      issue is fundamentally different, because if a
 
                      petitioner, again, comes in and says, I want
 
                      IPR on claims 1 through 10, and the Board says,
 
                      we will give you IPR on one through five, the
 
                      petitioner can, in effect, walk away if they
 
                      can just simply agree with the patent owner to
 
                      say, look, we drop our IPR challenge, I'll go
 
                      back to the infringement suit where you sued me
 
                      and presumably want to litigate, and we will
 
                      litigate that there. That's permitted under
 
                      Section 317.
 
                               Now, to be sure, the Board at that
 
                      point can proceed to adjudicate in its own -­
                      within its own proceeding the underlying
 
                      claims, but that has nothing to do with the
 
                      rights or a consent of the parties inter se.
 
                               And I think to the -- the underlying
 
                      question here is isn't this meant as a
 
                      substitute for litigation? We think the
 
                      statute itself makes clear that that's not the
 
                      design of inter partes review.
 
                               The limited scope -- so it's limited
 
                      to 102 and 103, it's limited to particular
 
                      prior art, and it's limited only to particular
 
                      claims that this petitioner brings to the PTO.
 
                      It can't be viewed as a substitute for
 
                      litigation such that someone could reasonably
 
                      look at the scheme and say Congress wanted all
 
                      of these claims decided either in one forum or
 
                      the other. It's baked into the scheme that
 
                      there will be this potential for some claims to
 
                      be reviewed by the PTO and others in court.
 
                               And partial institution actually
 
                      enhances the efficiency and harmonious working
 
                      of these two things because the -- the Board
 
                      can say, look, you've got a solid challenge on
 
                      claim number 1, we will review that. The rest
 
                      of them, we don't think have met our standard,
 
                      or we exercise our discretion not to review
 
                      them. We're releasing those to the district
 
                      court, so the district court litigation can
 
                      proceed, and we will deal with this one, and
 
                      the district court can decide what to do.
 
                               Petitioner's position, by contrast,
 
                      creates, I think, an incentive at least for
 
                      parties to seek to tie up district court
 
                      litigation by seeking an IPR.
 
                               And the example we gave in, I think,
 
                      page 39 and 40 of our brief is where an -- an
 
                      entity sued for infringement, and then, on a
 
                      strong patent claim, can take that claim to
 
                      IPR, add on some weak and vulnerable claims and
 
                      ask the PTO to grant review.
 
                               If the Board's only choice is to grant
 
                      all or nothing and it grants all, then the
 
                      district court is very likely we think -- at -­
                      at least there's a possibility, that it will
 
                      stay the district court litigation, and the
 
                      alleged infringer has effectively slowed down
 
                      the district court litigation over claims that
 
                      had nothing to do with that suit.
 
                               That possibility, we think, is
 
                      inherent in petitioner's approach that puts the
 
                      agency though that kind of choice, whereas -­
                               JUSTICE GINSBURG: Are you relying at
 
                      all on the notion that this entire inter partes
 
                      scheme is to give the agency a chance to take a
 
                      second look to correct its error, therefore, it
 
                      should not be the petitioner who controls what
 
                      the agency will consider?
 
                               MR. BOND: Yes, Your Honor. And I
 
                      think that's an important feature of inter
 
                      partes review, that this notion of master of
 
                      the complaint just doesn't translate here, one,
 
                      because Section 311(b) doesn't say you may get
 
                      review of anything you want, but you may get
 
                      review only of these kinds of things, but more
 
                      fundamentally because the point of this scheme
 
                      is to give the agency an opportunity to
 
                      reconsider decisions in the form of patent
 
                      claims it has previously issued.
 
                               It doesn't make any sense to give the
 
                      Board complete -­
                               JUSTICE GORSUCH: It can -­
                               MR. BOND: -- discretion -­
                               JUSTICE GORSUCH: -- it can still do
 
                      that through ex parte proceedings reviewability
 
                      on its own any time, right?
 
                               MR. BOND: Well, ex parte -­
                               JUSTICE GORSUCH: Those -- those still
 
                      exist? They -­
                               MR. BOND: They do still exist. They
 
                      have a different standard, and Congress thought
 
                      that wasn't sufficient and adopted this
 
                      additional mechanism.
 
                               JUSTICE GORSUCH: Right.
 
                               MR. BOND: And so Congress, in giving
 
                      the agency authority and discretion to deny
 
                      review entirely and so much discretion over the
 
                      way these proceedings work, we think it's
 
                      simply improbable that Congress would have
 
                      given the agency all the discretion, except
 
                      over the scope of which claims it will
 
                      institute and particularly given that the
 
                      background rule of patent law is that it will
 
                      -- it will examine claims one by one.
 
                               If there are no further questions.
 
                               Thank you.
 
                               CHIEF JUSTICE ROBERTS: Thank you,
 
                      counsel.
 
                               Mr. Castanias, four minutes.
 
                         REBUTTAL ARGUMENT BY GREGORY A. CASTANIAS
 
                                 ON BEHALF OF THE PETITIONER
 
                               MR. CASTANIAS: Thank you, Mr. Chief
 
                      Justice.
 
                               I have three specific responses to
 
                      points made by my friend and then four broader
 
                      points that I hope I will be able to get in, in
 
                      my limited time.
 
                               Justice Kagan, your colloquy with my
 
                      friend here was about 101 and 112. That's
 
                      answered by the scope provision of Section
 
                      311(b). That limits inter partes reviews to
 
                      102 and 103 challenges in the first instance.
 
                               Mr. Chief Justice, you had a colloquy
 
                      with my friend about the lengthy decision that
 
                      was entered at the institution phase here. And
 
                      my friend responded to you that this was a
 
                      failure to follow the rules of the tribunal.
 
                               This was a merits decision that was
 
                      made. It said that we had failed to show the
 
                      corresponding structure, which is a requirement
 
                      of the law under Section 112-6. And if we had
 
                      had a challenge to that that we wanted to
 
                      appeal, we should have been able to have that
 
                      finalized, it -- via estopping, and also
 
                      appealable for us.
 
                               Justice Sotomayor, you asked the
 
                      question about what the education purposes of
 
                      the institution decision. Our point is that
 
                      education can come from an appealable and
 
                      estopping decision.
 
                               Now, the broader points, Justice
 
                      Breyer, you, in your colloquy with my friend,
 
                      rewrote the statute for him to get to the place
 
                      he wanted to go. You said the statute should
 
                      be read as "any patent claim that is the
 
                      subject of inter partes review and" -- that's
 
                      not what the statute says.
 
                               JUSTICE BREYER: No, I just mentioned
 
                      that the word "any" is ambiguous.
 
                               MR. CASTANIAS: Well, it is only
 
                      ambiguous absent context. And as we showed,
 
                      the Rosenwasser case, when you have "shall" and
 
                      "any" in the same way that that minimum wage
 
                      statute was -- was worded, the "any" here
 
                      doesn't mean you may have any vegetable on the
 
                      menu. It doesn't -- that obviously doesn't
 
                      mean you can -- you -- you must have
 
                      everything -­
                               JUSTICE BREYER: Just ambiguous in
 
                      between whether they are referring to a claim
 
                      in which it has been granted or whether they
 
                      are referring to any claim in the petition.
 
                               MR. CASTANIAS: Well -­
                               JUSTICE BREYER: Ambiguous as to
 
                      between those two things, it seemed ambiguous.
 
                               MR. CASTANIAS: And that is where,
 
                      Justice Breyer, this Court's decision in
 
                      Utility Air, that made clear that a statutory
 
                      provision that may seem ambiguous in isolation
 
                      is often clarified by the remainder of the
 
                      statutory scheme because only one of the
 
                      permissible -­
                               JUSTICE SOTOMAYOR: Let me ask you -­
                               MR. CASTANIAS: -- meanings produces
 
                      the substantive effect.
 
                               JUSTICE SOTOMAYOR: You talked about
 
                      canceled claims. How about settled claims?
 
                      Say, in the middle of the proceedings, you
 
                      settle a claim.
 
                               Under your theory, the Board would
 
                      still have to address that?
 
                               MR. CASTANIAS: I -- I think that if
 
                      we are saying we are no longer challenging
 
                      that, we -- it's no longer a claim challenged
 
                      by the petitioner. The settlement presumably
 


                               JUSTICE SOTOMAYOR: It's in the
 
                      petition.
 
                               MR. CASTANIAS: The settlement
 
                      would -­
                               JUSTICE SOTOMAYOR: What gives you a
 
                      right to drop it then?
 
                               MR. CASTANIAS: Because the language
 
                      of 318(a) is "by the petitioner." And that's
 
                      what the context tells us about that.
 
                               JUSTICE KAGAN: Mr. Castanias, while
 
                      we're on the statute, I understand that this is
 
                      your argument for why there has to be a final
 
                      decision with respect to every claim
 
                      challenged, but, you know, however you -- but
 
                      you're still saying that -- that you're not
 
                      challenging the -- the partial institution. Is
 
                      that right? 
                               MR. CASTANIAS: But we're -- we're not 
                      challenging -­
                               JUSTICE KAGAN: And I guess here's my 
                      question: What language says that partial
 
                      institution is not permissible?
 
                               MR. CASTANIAS: The fact that the
 
                      Board has already given the discretion whether
 
                      to institute. The discretion whether to
 
                      institute does not hide inside it a secret
 
                      second level of discretion to decide to
 
                      institute anything other than the petition.
 
                               JUSTICE KAGAN: I think I'm not
 
                      understanding. Could you just point me to the
 
                      -- the language that you're saying. That's the
 


                               MR. CASTANIAS: It's in Section -­
                               JUSTICE KAGAN: -- thing that you can't
 


                               MR. CASTANIAS: It's in Section -­
                      it's in Section 314(b), Timing. And it says,
 
                      "The director shall determine whether to
 
                      institute an inter partes review."
 
                               And we say that's a binary choice, and
 
                      we say that's consistent with the if/then
 
                      language of Section 318.
 
                               To -- to Justice Gorsuch's colloquy
 
                      with my friend, there is no interpretation
 
                      here. No evaluation at all, even in the
 
                      institution regulation of Section 318(a). So I
 
                      don't know what we're possibly deferring to
 
                      here with regard to the language of Section
 
                      318(a).
 
                               The Section 314(a) did -- didn't
 
                      address it. The Section 314(a) regulation
 
                      didn't address it in the Federal Register. And
 
                      as you pointed out, Justice Gorsuch, the -­
                      (a)(2) talks about grounds to institute. It's
 
                      not a weeding-out function and it's not a final
 
                      written decision regulation.
 
                               On reviewability, our yellow brief I
 
                      think tells the tale. This is not the same
 
                      section. And it is -- it certainly would be,
 
                      in the words of Justice Alito, shenanigans, if
 
                      the Board is allowed to fail to follow the
 
                      regulation here.
 
                               CHIEF JUSTICE ROBERTS: I thought you
 
                      were being overly ambitious when you said you'd
 
                      get to four points in rebuttal, but thank you,
 
                      counsel.
 
                               (Laughter.)
 
                               MR. CASTANIAS: My last point was
 
                      efficiency, Your Honor.
 
                               (Laughter.)
 
                               MR. CASTANIAS: Thank you.
 
                               CHIEF JUSTICE ROBERTS: The case is
 
                      submitted.
 
                               (Whereupon, at 12:09 p.m., the case
 
                      was submitted.)
 
                                                                        73
                               Official - Subject to Final Review
�
             1          4  [12]  5:19 13:21 14:3 20:9 25:7,8,  agrees  [1]  60:21           18 47:10 48:8,17,24,25 51:3,10 
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     11A  [1]  36:13            a)(2                        [11]  28:16 36:8 39:21  [6]  47:23,25 48:7 49:5,11 71:9             68:3,8,9,13  20 49:10 
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     13  [1]  26:10             ability  [1]  49:9            American             behalf  [8] [1]  17:19              1:20,23 2:4,7,10 3:8 30: 
     14  [1]  26:10             able  [4]  16:4 43:10 66:10 67:2    amicus  [1]  24:19           17 66:5 
     15  [1]  19:9              above-entitled  [1]  1:15       Among              believe  [2] [1]  18:7                 5:3 21:6 
     16  [11]  9:23 12:20,23 13:6,8,22 14:  absence  [1]  50:15         amount              beneficial  [1] [1]  14:21                 57:10 
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             3          57:17 62:25            appealable             18,23 20:6,10,11,24 21:4,13 22:4,  add                       [2]  67:4,8  [1]  63:19  3                                                        7,9,19 23:3,19 25:6,11 29:8,13,21,  [3]  2:4 13:21 20:9                            appealed added                     [3]  26:22 53:3 55:1  [3]  40:17 41:6,7  30                                                       23 31:6,10,22 32:9,20 33:1,11,14,  [1]  2:7                                 appeals addition                   [1]  32:7  [1]  28:18  304  [2]  50:10 51:1                            APPEARANCES additional                       [1]  1:19      15,17,22 34:2 36:4 41:2 46:19,22 
                              [3]  25:9 53:16 65:12  311  [2]  17:24,24                             appellate address                    [5]  9:1 10:9,13 24:23 25: 47:2 48:6,8 49:19 50:3,19,20 51:9 
                             [6]  41:2,3,5 68:25 71:6,7  311(b  [3]  18:1 64:17 66:15     addressed             13                  52:5,18 53:9 55:3,17,23 56:9,11 
                              [2]  8:10 42:20  312  [1]  18:4                                Appendix addressing                  [4]  10:2 36:13 55:23 57:  57:1,3,4,12 58:3,11,19,23,25 60:6 
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                        adjudication                 [4]  51:24 52:5 59:2 64:5        4:16 31:16 34:15 48: 
                               [2]  5:2 61:9  314(b  [1]  70:17                              aren't adjudications              [1]  43:8            3 49:7,8 50:6 51:23 56:5,24 63:21 
                                [3]  4:17 30:6,8  314(d  [2]  31:19 51:10                           argue               boil  [1] 
                        administrative              [2]  11:12,12             51:19 
                                 [2]  57:8 61:13  316  [2]  47:8 49:22                            argument             bolstered  [1] 
                        adopt                     [14]  1:16 2:2,5,8 3:4,7         29:20 
                           [2]  58:19 59:1  316(a  [1]  42:18           adopted              11:16 15:4 30:7,16 31:3 59:19 66:  bolstering  [2]  24:17 29:7 
                             [3]  42:25 57:2 65:11  316(a)(11  [1]  49:18         adopting              4 69:17               BOND  [62]  1:22 2:6 30:15,16,18 
                             [2]  47:5 51:18  316(a)(4  [1]  47:13                            arguments advance                     [2]  29:22 52:9      32:4,19 33:14,21 34:13 35:6 36:9, 
                             [1]  53:20  316(b  [2]  47:5 51:17                           around advantage                 [3]  5:24 7:17 44:25      18 37:12,23 38:1,22,25 39:10,24 
                              [3]  11:7,10,11  316(d  [2]  40:18 41:7                           art adverse                [3]  33:5,6 62:16          40:8 41:18 42:16 43:6,13 44:3,15 
                             [1]  24:23  317  [1]  62:3                                artificiality affect                      [1]  34:1         45:12,15,20,23 46:3,11,15 47:1,12, 
                           [1]  48:21  318  [6]  12:23 13:9 28:24 44:1 45:                     asserted agencies                   [1]  14:2          21,25 48:19 49:2,7,16 50:16 51:8 
                             [1]  30:8 20 70:22                                 assess  agency                   [1]  49:9           53:7 54:8,21 55:12 56:21 58:1,6, 
                            [17]  30:5,24 42:11,13,18  318(a  [13]  5:4 8:10 12:10,12 21:23                    assigned  [1]  57:6          13 60:4,12,23 61:14,17 64:13 65: 
                        43:1,4,19 54:4 59:9,22 64:6,9,12, 36:1 40:10,16,25 41:12 69:13 71:                    Assistant  [1]  1:22          2,6,9,14 
                        21 65:15,19 1,4                                    Assume              both  [3] 
                        agency's                   [1]  21:24              15:14,15 51:24 
                             [1]  54:2  39  [1]  63:16                                assuming             bother  [3] [1]  6:24               18:10,11 19:4  agree  [10]  6:15 34:19 38:12,13 40:  4                            attention              bound  [1] [1]  59:20               24:23 
                        8 45:16 46:2 48:12 53:17 61:23   authority  [13]  31:7 33:16 41:22 46:  BREYER  [19]  25:19 26:8,15 27:7, 
                               Heritage Reporting Corporation 
    Sheet 1                                                                1 - BREYER 
                                                                        74
                               Official - Subject to Final Review
�
     11,19,23 28:1 38:11,23 39:18 40:  choice  [12]  12:16 19:25 20:4 23:7  conclude  [2]  8:18 49:24       11 53:5,10 55:3 63:10 70:7 
     1 42:4,24 67:11,17 68:3,8,11    24:5 52:5 59:17 60:15,22 63:21   conditional  [2]  4:6,6        decided  [5]  10:15 21:22 25:6 43:8 
     Breyer's  [1]  7:24           64:6 70:20             conducted  [1]  35:20         62:21 
     brief  [4]  25:4 36:13 63:16 71:12   choose  [3]  18:12,18 51:2      conferred  [1]  31:22         deciding  [5]  32:20 53:9,10 54:23 
     briefing  [1]  32:6          chosen  [1]  18:18          confirm  [1]  25:17          55:20 
     briefs  [1]  24:19           Circuit  [5]  14:15 25:13 53:4,4 55:1  Congress  [29]  12:13 23:17 30:21  decision  [59]  3:18 4:19 5:18,22 7: 
     brings  [2]  34:23 62:17       circumstance  [2]  33:24 44:16    32:19 34:7 41:9 42:7,17,24 43:14,  2,10,22 8:12 11:20,23 13:2,5,7 15: 
     broad  [2]  31:22 44:21        circumstances  [1]  32:21      16,19,25 44:6,6 46:16 49:17 50:5  9,20 16:19 21:22 23:4,9,11,18,19 
     broader  [4]  32:8 40:10 66:9 67:10  circumvention  [1]  55:2       51:12,17 52:15 59:9,25 61:3,11   24:24 25:13 26:21 29:9,12,21,23 
     brought  [1]  60:2          claim  [84]  3:19 5:19 8:20 11:1 14:2, 62:20 65:10,14,18          31:3,5,11,16,17,20 32:15 34:15 
     burden  [1]  13:14           3 15:13,14,24 16:1,2,23 17:13,13,  Congress's  [2]  59:20 60:25     36:5 40:21 41:1 42:3 45:3 46:10 
     business  [1]  17:5          16,17 18:7,12 19:12 22:10,25 25:  consent  [3]  61:7,17 62:8       47:19 49:21 52:19 54:19,25 55:11, 
             C          7,7,8,9,14,15,17,17,18 29:17 32:2,  conserve  [1]  47:4          13,14 60:2 66:18,22 67:7,9 68:11 
                        2,5,5,7,10,11,23,24,25 33:2,5,7,13  consider  [3]  51:17 54:14 64:12   69:18 71:11  calls  [1]  7:9             36:6 38:16,19,19 39:8 40:11,16,  considered  [3]  12:5,11 43:8    decisions  [7]  3:13 29:18 56:18,19,  came  [1]  1:15            17 41:13,15,17,20 42:2,12,21 43:  consistent  [9]  15:18 20:5 35:19   23 58:12 64:22  canceled  [9]  15:5,8,13,24 16:1,15  21 44:12 45:9 46:9 48:5,18 49:14  39:11 43:17 51:16,24 60:25 70:21  declaration  [1]  9:24 17:12 41:23 68:21          51:15,15 53:14,19 56:4,9 57:21   constrain  [1]  59:11         decline  [1]  33:11  capaciously  [1]  44:21        59:6 63:4,18,18 67:14 68:4,6,23  construction  [3]  42:21 56:8,13   default  [1]  59:4  capture  [1]  18:24          69:3,18               construing  [1]  57:20        defense  [1]  48:11  carve  [1]  23:20           claim-by-claim  [2]  46:14 49:10   contact  [1]  20:7           deferring  [1]  71:2  Case  [25]  3:4 4:7,8 5:21 8:2 9:20  claimed  [1]  20:8          contains  [1]  25:9          defines  [1]  18:5 10:2,14 12:1 14:1,21 19:7 23:9 24:  claims  [91]  3:14 4:11,19 5:1,6,8,14  contentions  [1]  14:1        defining  [1]  17:23 20 25:3,5 29:9 34:21,23 41:20 57:  6:13 8:8 9:12,14,24 10:6 11:14 12:  contested  [1]  35:8         definitely  [1]  28:2 11 61:8 67:21 72:2,4        7,21 13:3,21,22,25 14:8 15:5,8,10  contesting  [2]  11:19,22       delegated  [3]  31:6 41:21 46:18  cases  [2]  24:10 57:11        16:15 18:14 19:15,19 20:4,9,15   context  [13]  3:21 23:17 37:13,18  delegation  [1]  23:12  CASTANIAS  [84]  1:20 2:3,9 3:6,7,  21:17,18 22:6 23:16,16 24:11,24  38:6 40:4,10,10 44:23 50:2 59:15  deliberately  [2]  42:25 43:15 9 4:4,13,21 5:3,10,16,25 6:3,6,16,  26:1,4,25 29:17,19 30:22 31:4,8,  67:20 69:14            denial  [1]  16:1 20 7:4,18,24 8:21 9:4,7,10,15 10:  12,18 32:15,21 35:13 41:3,6,23,23,  contrast  [1]  63:11          denies  [2]  55:17,24 12,17,20 11:15,21 12:20,25 13:7,  25 43:4,24,25 44:18 46:20 47:6   contravention  [1]  10:8       deny  [7]  23:25 33:21 50:4 53:15,17, 12 14:13,20,24 15:2,3,6,11,22 16:  48:25 49:24 50:23,25 52:1,3,6,20,  controls  [1]  64:11          22 65:15 17,22 17:7,14 18:15,21 19:1,17,21  22,25 55:24,25 56:1,14 59:5 60:2,  convinced  [1]  53:12        denying  [2]  33:16 55:18 20:11 21:5,10,16,19 22:1,12 23:5,  17 61:20 62:7,17,21,23 63:19 64:  correct  [1]  64:10          Department  [1]  1:23 22 26:6,13 27:7,15,21,25 28:13   2,23 65:20,23 68:21,21       corresponding  [1]  66:24      design  [1]  62:13 66:3,4,6 67:19 68:7,10,18 69:1,8,  clarified  [1]  68:14          couldn't  [3]  33:10 45:5 54:4     designed  [1]  34:8 12,15,23 70:3,13,16 71:23 72:1   clarifying  [1]  40:25         counsel  [3]  30:14 66:2 71:21    determination  [9]  7:9,10 8:1 9:2  cause  [1]  41:19           clause  [4]  37:19 38:7 39:4,15    couple  [2]  36:9 53:7         13:13 29:11 46:24 48:4 53:5  certain  [3]  4:11 13:24 30:23     clear  [8]  4:15 7:25 32:4 43:14 48:  course  [3]  19:1 35:9 44:25     determine  [6]  43:1,4 56:9,15 57:7  certainly  [4]  6:16,20 48:7 71:14   23 51:13 62:12 68:12        COURT  [37]  1:1,16 3:10 7:25 9:1,  70:18  certiorari  [1]  39:17         clearly  [3]  35:22 51:5,9       18 10:9,13 14:16 15:25 18:19,20  determined  [7]  30:23 31:7 32:10  challenge  [20]  8:2,19 10:25 11:5  clears  [1]  49:25           20:15 24:15 26:24 27:2 29:6 30:4,  33:1 40:4 52:7 56:3 16:4 18:13,14,18 19:9,14 20:14   clerk  [1]  27:12            19 32:6 34:12,22,25 35:2,14 36:  determines  [3]  10:24 52:1 56:8 31:2 34:6 37:7 43:5 54:12,18 61:  close  [3]  32:8,10,12         11 39:17 51:20 53:25 62:24 63:8,  determining  [2]  30:25 56:19 24 63:3 67:1            closely  [1]  32:25           8,10,13,23,25 64:2         differ  [1]  55:16  challenged  [44]  3:14,19 12:7 13:3  closely-enough  [1]  32:21     Court's  [3]  31:20 35:7 68:11    difference  [7]  7:23 15:13,23 16:8 16:11,15,18 17:14 18:7,20 22:6,  closer  [1]  33:8           courts  [1]  30:1            46:1 51:7,9 10 27:17 36:7,19,22,25 37:2,3,7,8,  colloquy  [6]  22:13 31:15 66:12,17  crazy  [1]  61:10           different  [9]  22:7 43:22 44:8 50:18 9,13,14,15 38:4,17 39:2,8,13 40:   67:11 70:23            creates  [2]  55:2 63:12        53:25 55:7,14 61:18 65:10 16 41:4,17 42:2 43:22,24,25 44:  come  [2]  6:11 67:8         creating  [1]  52:11          difficult  [3]  32:3 38:2,6 11,13,20 52:20 54:9 69:3,19    comes  [2]  23:15 61:19       crux  [1]  31:14            direct  [1]  22:3  challenger  [1]  34:14        command  [1]  3:23         cumbersome  [3]  34:3 61:2,2    directly  [1]  21:14  challengers  [1]  34:10       commanded  [1]  16:10       Cuozzo  [16]  5:24 6:14,15 7:17,25  Director  [10]  1:6 22:21 41:14 47:  challenges  [4]  9:23 20:8 45:2 66:  Commission  [1]  43:12       8:10 23:9 24:15 29:6,20 31:20 42:  11 48:22 50:11,12,14 51:1 70:18 16                 common  [1]  59:3          19,20 47:14 51:20 55:2       disagrees  [1]  25:20  challenging  [9]  4:15,16,17,22 7:  community  [2]  57:24 58:8     cut  [2]  9:10 45:6           discover  [1]  26:24 22 8:4 69:2,21,24          complaint  [6]  9:18 13:18,19,20 24:  chance                                         D         discretion  [24]  19:24 22:22 23:3,  [1]  64:9           10 64:16                                 14,25 31:22 32:9,20 35:7 50:3 54:  change  [1]  44:12          COMPLEMENTSOFT       D.C  [3] [6]  1:8 5:      1:12,20,23          2 57:1,14 59:3,11,12 63:6 65:2,15,  chapter  [3]  17:18,19 36:4      20 9:23 13:19 14:2 20:22      dah  [3]  27:3,3,3           16,19 70:4,5,7  charge  [1]  54:6           complete             dare  [1] [4]  9:21 50:3 57:9 64:25     17:22            discretionary  [4]  23:19 39:12 59:  Chevron  [1]  28:24         completion  [1]  49:20        deal  [2]  46:7 63:9          14,16  CHIEF  [17]  3:3,9 30:13,18 31:25   complicated            dealing  [1] [1]  39:7              52:22          discussed  [1]  35:21 32:13 35:4 39:6 42:22 43:7 55:9  conceded             decide  [17] [1]  33:18               5:13 10:10,13,14 11:2  discussion  [4]  37:8,9 48:13 57:15 56:17 66:1,6,17 71:18 72:2     concerns  [1]  47:17         42:14 43:5,9 45:8 46:8 48:25 50:  dismiss  [1]  8:15 
                               Heritage Reporting Corporation 
    Sheet 2                                                            BREYER - dismiss 
                                                                        75
                               Official - Subject to Final Review
�
     dismissed  [1]  36:3         establish  [1]  48:9          filed  [3]  9:21 14:14 22:18       24 
     dispute  [8]  15:16 16:21 31:14 32:  establishes  [1]  48:8        filled  [1]  42:13            given  [8]  5:13 15:4 25:10 48:13 58: 
     9 34:18 41:24,25 58:17       establishing  [3]  30:20 47:17 48:2  final  [23]  3:13,18 4:19 5:18 8:11 16: 3 65:19,21 70:4 
     dissatisfied  [1]  34:15        estop  [1]  29:24            19 21:22 25:12 29:23 31:3,5,11   gives  [4]  22:21 48:8 50:3 69:10 
     distinct  [1]  37:1           estopped  [2]  37:15 54:14      36:5 40:21 41:1 42:3 49:21 52:19  giving  [1]  65:14 
     distinguishes  [1]  17:12      estopping  [3]  7:14 67:3,9      54:24 55:13 60:2 69:17 71:10    goals  [3]  52:15 53:21 60:25 
     district  [19]  15:25 18:19,20 20:15  evaluate  [1]  51:15         finalized  [1]  67:3          GORSUCH  [28]  31:24 44:24 45:13, 
     30:4 34:11,22,24 35:1,6,14 53:25  evaluated  [1]  59:5         finally  [1]  24:13           19,21,25 46:6,12,25 47:7,15,22 48: 
     63:7,8,10,13,23,25 64:2       evaluation  [1]  70:25        find  [7]  21:25 26:23 27:1,16 28:7,  12,20 49:6,12 50:9,25 59:18 60:8, 
     document  [1]  9:21         Even  [7]  13:10 27:18 28:23,24 58:  20 47:3               19 61:6,15 65:1,3,7,13 71:8 
     doing  [12]  11:7 21:21 35:3,23 37:  18,19 70:25            finding  [2]  5:19,21         Gorsuch's  [1]  70:23 
     16 40:19,22 45:3 48:22 49:8 51:  event  [4]  31:21 34:11 52:13 58:18  finds  [2]  10:23 46:19        got  [2]  29:18 63:3 
     22 61:4               everybody  [1]  60:21        fine  [1]  10:4             govern  [1]  48:9 
     done  [3]  27:11 29:14 35:12     everything  [4]  11:1 26:25 61:10  first  [14]  3:16 7:4 10:1,19 26:9 30:  governing  [2]  47:17 48:3 
     doubt  [1]  25:22           68:2                 7 31:13 35:15 36:10 45:15 46:16  government  [5]  6:4,7 12:1,5 45:7 
     down  [4]  27:12 51:19 58:25 64:1  evidence  [2]  10:7,25         53:8 60:14 66:16          grant  [21]  5:1,6,9 20:7 21:10 23:25 
     drop  [3]  44:18 61:24 69:11     ex  [3]  50:17 65:4,6          fish  [2]  39:22,23           24:1,2 26:3 27:13 32:23,24 33:12, 
     due  [1]  11:3             ex-claim  [1]  16:23         five  [1]  61:21             23 34:4 35:12 48:17 50:13 57:21 
             E         exactly  [16]  4:4,25 5:14 6:2 11:15,  floor  [4]  46:17 49:16 51:12,13    63:20,21 
                        16 24:13 29:5 30:2 44:2,3,25 46:3  focus  [2]  45:17 47:6         granted  [9]  35:9,15 38:20 41:16  each  [2]  18:7 59:6          50:14 54:8,21           focused  [4]  4:23 22:21 45:16 59:  48:6 51:3,5,6 68:5  earlier  [2]  22:14 35:22        examination  [1]  46:14        20                 granting  [1]  32:22  earthly  [1]  25:16          examine  [1]  65:23         focuses  [1]  51:25          grants  [3]  39:17 48:24 63:22  eat  [2]  39:22,22           examining  [1]  13:11        focusing  [1]  40:13         grasping  [1]  27:5  economy  [3]  60:13,14,17      example  [3]  5:19 55:22 63:15    folding  [1]  53:25          great  [2]  23:3 48:13  economy's  [2]  60:10 61:16     except  [3]  25:9 31:18 65:19     follow  [5]  24:11 26:7 57:18 66:21  GREGORY  [5]  1:20 2:3,9 3:7 66:4  educate  [1]  58:14          excuse  [2]  23:22 27:25       71:16                ground  [7]  37:3,14 53:22 54:5,7,  education  [2]  67:6,8        exercise  [2]  31:21 63:6       following  [1]  13:17         19,23  educational  [1]  58:12       exercises  [1]  57:14         follows  [1]  30:10          grounds  [10]  9:22 16:3 18:12 19:5,  effect  [2]  61:22 68:19        Exhibit  [1]  39:19          foot  [1]  40:7             7 48:14 49:4,5 54:13 71:9  effectively  [2]  7:8 64:1       exist  [3]  17:17 65:8,9        forced  [1]  54:22           guess  [4]  15:12 48:15,23 69:25  efficiency  [3]  61:12 63:1 71:24   existed  [1]  8:19           forces  [1]  18:13  efficient                                                           H  [6]  58:20,24 59:23 60:5,9,  exists  [1]  15:24           forcing  [1]  55:3 10                 expert  [5]  9:25 10:8 30:5 59:9,22  form                half  [5] [2]  53:1 64:22             14:12,17,22 35:5 55:13 
     efficiently  [1]  51:22         explained  [1]  32:6         forth                hands  [1] [6]  18:11 19:4,7,15 36:12 56:       50:6 
     either  [10]  10:12 24:20 25:11 29:  exposing  [1]  28:10         3                  hard  [5]  27:14,15 37:18,22,25 
     22 52:6,13,14 54:22,22 62:21    express  [2]  50:13 51:3       fortiori               harmonious  [1] [1]  56:15                   63:1 
     election  [1]  20:13          extend  [1]  14:25          forum               hear  [2] [2]  20:23 62:21            3:3 20:10 
     elegant  [2]  17:22 22:16       extent  [2]  21:19 43:18        found               heard  [1] [4]  41:13 46:21 52:22 53:2       20:22 
     eliminate  [1]  33:13                            four                hearing  [2] [6]  18:19 36:19,23 66:3,9 71:        11:1 19:19 
     emphasize                     F  [1]  55:15                           20                 help  [4]  25:22 47:7,8 48:16 
     enacted  [2]  43:14,16        face  [1]  8:15             framing              helpful  [3] [1]  39:2                32:17 40:14 57:3 
     encompass  [3]  40:22 44:7,22   facing  [1]  24:12           free                 helps  [1] [1]  27:9                  25:23 
     encompassed  [1]  49:11      fact  [10]  4:8,18 7:12 8:9 23:24 41:  frequently             hide  [1] [1]  56:22             70:6 
     encompasses  [3]  40:9,11 48:2   21 46:5,7 55:4 70:3         friend               higher  [1] [7]  32:1 66:9,13,18,20 67:11       51:14 
     encouraging  [1]  58:4        fail  [1]  71:16             70:24                highlights  [1]  60:24 
     end  [7]  13:15 29:15 40:15,24 41:20  failed  [3]  33:2,3 66:23        frivolous              highly  [1]  [1]  45:9               59:8 
     45:1 55:21             failing  [1]  55:19           front                hint  [1] [1]  16:5                28:20 
     energies  [1]  51:25         fails  [1]  31:5             full                 hold  [2] [2]  29:12 52:24              11:1 51:14 
     engaging  [1]  22:13         failure  [1]  66:21           function              Honor  [6] [2]  33:9 71:10            41:19 46:16 50:17 53:8 
     enhanced  [1]  30:21         fair  [1]  11:3             fundamentally  [4]  50:18 53:24 61: 64:13 71:24 
     enhances  [1]  63:1         fairly  [1]  39:7             18 64:20              hope  [1]  66:10 
     enough  [1]  10:25          fall  [1]  25:15             further               however  [2] [4]  24:2 30:11 45:14 65:24        53:15 69:19 
     entered  [1]  66:19          falls  [1]  25:15            future  [2]  57:17 58:17                I  entertain  [1]  34:6          faster  [1]  60:6 
     entire                                          G         identical  [1] [3]  27:16 41:24 64:8     favor  [1]  28:2                                     25:8 
     entirely  [4]  50:4 53:18 59:1 65:16  favorable  [1]  20:25         gave                identified  [1] [2]  30:21 63:15                24:15 
     entitled  [6]  13:2 17:24 18:1 19:14  feature  [1]  64:14          General              identify  [6] [1]  1:22                18:6 19:12 30:22 33:4 
     21:7 22:4              Federal  [10]  12:3,4,8 14:15 25:13  generally  [1]  59:14         56:7,12 
     entity  [2]  24:6 63:17         29:25 53:4,4 55:1 71:7       gets                if/then  [3] [2]  50:11 54:24              12:25 13:1 70:21 
     entrusted  [1]  30:24         few  [2]  10:1 55:15          getting               illustrated  [1] [1]  52:14                  31:15 
     error  [1]  64:10            fewer  [1]  3:13            GINSBURG            illustrates  [1] [10]  3:24 4:5 11:18,23         33:25 
     especially  [1]  50:2         fighting  [1]  14:6           12:17,22 13:4,10 22:14 64:7    illustrative  [1]  57:16 
     essentially  [1]  38:25        figure  [1]  43:11           give                imagine  [2] [6]  11:7 19:19 61:21 64:9,21,        25:24 28:5 

                               Heritage Reporting Corporation 
    Sheet 3                                                           dismissed - imagine 
                                                                        76
                               Official - Subject to Final Review
�
     implicated  [1]  50:24         14:6 17:19,23,24 18:3,14 22:17   keep  [3]  9:15 12:15 19:22      made  [10]  7:2 10:14 27:1 29:12 33: 
     implicitly  [1]  39:3          24:15 26:9,11 30:3,20 35:19 36:2  keeping  [1]  27:14          8 48:10 53:11 66:9,23 68:12 
     implies  [1]  32:22           38:15,17,20 45:3 47:17,20 48:3   KENNEDY  [5]  20:6 33:10,19 34:9  majority  [1]  24:14 
     important  [2]  20:2 64:14       52:11 56:7,20 62:8,13 64:8,14 66:  60:20                mandated  [1]  34:25 
     importantly  [1]  55:17        15 67:15 70:19           kind  [6]  45:6 54:17 55:14 56:23 57:  many  [1]  24:10 
     imposed  [1]  23:25         Interim  [1]  1:6            18 64:6               master  [2]  24:9 64:15 
     improbable  [2]  50:5 65:18     interpretation  [3]  37:6 56:14 70:  kinds  [3]  41:2 58:4 64:19      MATAL  [2]  1:6 3:5 
     improving  [1]  51:21         24                 known  [1]  55:25          matter  [3]  1:15 24:2 35:6 
     INC  [1]  1:3              introduced  [1]  28:19                L         matters  [1]  42:17 
     incentive  [1]  63:12         invalid  [2]  46:21 54:6                           maximum  [2]  14:21 61:12 
     include                                 lacks  [3] [3]  31:11 46:5 57:18    invalidated  [2]  52:2,8            59:2,10,12         mean  [16]  6:19 9:8 21:2,3 22:9 28: 
     included                                laid  [1] [3]  9:24 31:4 46:16    Invents  [1]  17:20              9:22             3 32:14 36:21 37:11 38:4 39:14 
     includes                                language  [22] [2]  44:17 48:16      investigate  [1]  53:13               3:16 4:23 13:23 15:  42:1,5 54:17 67:24 68:1 
     including  [1]  37:19         invests  [1]  19:23           19 16:14 17:11 22:6 24:7 25:21,  meaning  [2]  43:23 56:2 
     inclusive  [1]  3:22          invited  [1]  36:10           23 27:10,17,21 28:2 36:17 40:14  meanings  [1]  68:18 
     incomplete  [2]  9:13 10:11     IPR  [22]  29:6 34:18,23 35:10,11,12  46:1 69:12 70:1,11,22 71:3     means  [6]  8:6,7 16:2 37:9,13 41: 
     incongruous                              last  [2] [1]  59:8        36:25,25 37:4,14 38:4,5,8,9 41:4      59:19 71:23          10 
     inconsistency                             latter  [1] [1]  50:10       51:14 55:8 61:20,21,24 63:14,19       4:22            means-plus-function  [1]  56:1 
     indeed                                 Laughter  [4] [3]  42:17 59:13 60:23    irrespective  [1]  53:16              6:22 39:25 71:22,25  meant  [2]  43:2 62:10 
     indefiniteness                             law  [7] [1]  54:10      isn't  [4]  14:12 37:17 45:9 62:10       27:12 54:11 59:4,4,13 65:  mechanism  [1]  65:12 
     independently  [2]  59:5,6      isolation  [3]  36:20,24 68:13     22 66:25              mentioned  [1]  67:17 
     indication                                leading  [1] [1]  42:15         issue  [12]  3:12,17 6:25 9:3 10:19        25:12          menu  [1]  67:25 
     indicators                               least  [13] [1]  28:22         36:5 47:14 49:15 54:19 56:18 60:      10:14 13:21,23 34:25 37:  merits  [16]  25:5 39:12,14 53:9,10, 
     individual  [1]  41:25         1 61:18               25 41:14 46:20 47:3 49:14,24 52:  13,16,18,24 54:3,25 55:3,6,8 57:7 
     inefficient  [1]  59:2         issued  [5]  11:25 55:10,12 59:10   8 63:12,24             66:22 
     informed                                leave  [2] [1]  56:13         64:23                    20:12 43:11        met  [4]  4:7 13:14 24:25 63:5 
     infringement                              leaves  [1] [7]  13:20 14:1 34:  issues  [3]  29:25 55:11 56:22          47:1           method  [2]  28:10 58:20 
     23 35:17 37:1 61:25 63:17     issuing              left  [7] [1]  58:11             14:4 41:5 42:17 43:19 45:  middle  [1]  68:22 
     infringer  [3]  34:22 35:10 64:1    itself  [7]  36:1,17 43:23 56:4 57:3   22,23 46:4             might  [8]  18:15,21 34:10 48:21 53: 
     inherent                                 lengthy  [3] [2]  21:9 64:5        58:15 62:12                  55:11,12 66:18      17,19 59:25 61:11 
     initial                                  less  [1] [1]  7:9                     J             48:23            mind  [6]  9:15 12:15 19:22 27:14 
     initially                                 level  [1] [1]  52:20                                 70:7             40:5 52:15 
     initiate               jettison  [1]             lies  [1] [1]  4:16                 59:1              23:19            minimum  [3]  35:21 51:8 67:22 
     initiating              job  [1]                likelihood  [9] [2]  21:14,15           45:10                    26:4 41:14 46:21 48:  minutes  [1]  66:3 
     initiation              Joint  [1] [1]  21:15              10:2            21 50:1 52:2,7,23 53:2       mistake  [1]  38:15 
     initiative              JONATHAN  [3]           likely  [2] [1]  50:20                  1:22 2:6 30:16        24:12 63:23        Monday  [1]  1:13 
     injected              JOSEPH  [1]             limit  [2] [1]  28:18                1:6               49:19,20          months  [2]  14:17 29:13 
     inquiry               judges  [1]              limitation  [1] [1]  48:21                57:5                  25:10         moreover  [2]  24:4 50:7 
     inside               judgment  [1]            limited  [7] [1]  70:6                   54:1               11:5 40:23 62:14,14,15,  most  [2]  14:12,17 
     instance              Justice  [164] [2]  34:14 66:16             1:23 3:3,9,24 4:5,10,  16 66:11              motion  [2]  8:14,15 
     INSTITUTE                               limits  [2] [38]  1:3 3:4 7:2,7,22 9:  14,24 5:5,12,16,23 6:1,5,9,18,23 7:      49:17 66:15        motions  [1]  35:8 
     12 10:5,22 19:13,25 22:22,23,23,  5,16,19,24 8:13,25 9:4,6,9,11 10:4,  litigant  [2]  61:7,8          move  [3]  11:24 18:4 59:21 
     24 23:7,8 25:6 29:16 31:7,11,17   16,18,21 11:18,23 12:17,22 13:4,  litigate  [6]  11:13,17 35:2,16 62:1,2  moved  [1]  29:14 
     41:22 46:19,23 47:2,20 48:4,15   10 14:10,18,22 15:1,3,7,12,22 16:  litigating  [1]  42:9          much  [5]  9:17,18 40:23 59:2 65:16 
     49:23 55:5,10 56:20 65:21 70:5,6,  7,20 17:1,11,20 18:10,17,23 19:3,  litigation  [16]  9:18 18:25 24:9,11,  multistage  [1]  34:3 
     8,19 71:9              18,22 20:6,19 21:1,8,12,17,24 22:  12 25:12 30:4,9 34:20 59:6 62:11,  must  [4]  46:22,23 57:19 68:1 
     instituted  [17]  4:2,3,8,11 12:15,18,  2,12,14,14 23:1,6,23 25:19 26:8,   19 63:8,14,25 64:2 
     18,24 13:2,5 31:9 36:3 38:8,16 39: 15 27:7,11,19,23 28:1 30:13,18   little                        N  [3]  23:13 35:7 48:23 
     3 40:12 41:4             31:24,25 32:13 33:10,19 34:9 35:  LLC  [1]  1:8             narrower  [5]  32:5 44:11,13,15,23 
     institutes                                loads  [1] [2]  57:4,14        4,25 36:15 37:5,21,24 38:11,23        40:2            natural  [1]  61:4 
     instituting                               long  [3] [4]  6:12 8:8 52:21 60:  39:6,18 40:1 41:9 42:4,22,24 43:7,     14:19 26:10 55:13     nature  [2]  54:11 58:16 
     15                  20 44:4,10,24 45:13,19,21,25 46:6,  longer  [10]  15:16,24 16:18,21,23  necessarily  [2]  53:23 60:9 
     institution  [35]  8:3,5,6,7 11:19,23  12,25 47:7,15,22 48:12,20 49:6,12  17:17 35:14 42:2 69:2,3      need  [4]  15:9 35:14 45:14 52:24 
     16:1 21:21 22:4 23:4,9,11,15,18   50:9,25 52:17 54:4,16 55:9 56:17  look  [20]  7:5 10:1 25:14 26:2 29:8  needs  [6]  21:4 41:2,3,5 45:8 48:10 
     25:1 28:21 29:9,15 31:16,17 35:   57:25 58:2,10 59:18 60:8,19,20   35:11 36:1,16,18,23 40:14 45:4   never  [8]  12:11 18:23,24 19:2 23:6 
     20 43:17 45:3,16 51:23 53:8 55:   61:6,15 64:7 65:1,3,7,13 66:1,7,   47:23 50:21,23 57:20 61:24 62:20  26:19 31:8,12 
     24 58:20,24 62:25 66:19 67:7 69:  12,17 67:5,10,17 68:3,8,11,17,20  63:3 64:10             new  [4]  40:17 50:21 52:10 57:13 
     21 70:2 71:1             69:6,10,15,25 70:9,14,23 71:8,15,  looking  [2]  16:9 57:12       next  [1]  3:4 
     instructive             18 72:2               looks  [1] [1]  57:23                                58:17           Nine  [6]  12:20,22,22 14:7 26:19,25 
     intend                                  lose  [1] [1]  61:3                   K             29:22            nobody  [1]  43:10 
     intended                                lot  [3] [3]  18:24 43:25 44:6                         24:19 28:3 59:19       non-frivolous  [1]  46:9  KAGAN  [20]  15:3,7,12,22 16:7,20  intends                                 lower  [1] [1]  51:7                                  49:20           non-instituted  [2]  15:14 17:13 17:1,11,20 22:14 23:1,6,23 54:4,  intention  [1]  59:21                                    M         normally  [1]  51:4 16 66:12 69:15,25 70:9,14  inter                                                     nothing  [10] [37]  3:14 4:1,7 9:16 12:14,24                                              16:24,24 17:3 18:13 
                               Heritage Reporting Corporation 
    Sheet 4                                                           implicated - nothing 
                                                                        77
                               Official - Subject to Final Review
�
     26:20 31:9 52:12 62:7 63:22 64:3  own  [5]  23:10 50:20 62:5,6 65:5   19,22 62:17 64:11 66:5 69:4,13   produces  [1]  68:18 
     notice  [1]  9:19           Owner  [2]  34:18 61:23       Petitioner's  [7]  31:2 33:17 34:1   prohibited  [1]  21:14 
     notion  [2]  64:8,15                  P          44:8 52:4 63:11 64:5        prohibition  [2]  22:3 46:17 
     notwithstanding  [1]  55:4                        petitioners  [1]  3:15         prohibits  [1]  35:23 
     November             p.m  [1] [1]  1:13             72:4             petitions  [1]  51:14         proof  [1]  13:15 
     number              PAGE  [5] [4]  13:25 39:20 44:22 63:       2:2 36:12 55:23 57:15   phase  [6]  29:15 39:12,14 45:17 53:  properly  [1]  54:12 
     4                  63:16                8 66:19               proposed  [1]  41:7 
             O         pages  [2]  10:1 29:10        phrase  [4]  16:11 41:11 44:7,8    proscribe  [1]  49:13  panel  [2]  57:5,6           phrased  [2]  41:11 46:17      proscribed  [1]  47:11  object  [1]  26:1           panels  [1]  58:15          pick  [2]  43:9 51:2          provision  [9]  4:1 18:2 35:22 40:20  objecting  [1]  26:1          part  [5]  27:4 31:8,12 44:1 48:5    picks  [1]  24:6            42:20 47:14 48:1 66:14 68:13  objection  [1]  12:5          parte  [3]  50:17 65:4,6        place  [6]  12:6 31:13 35:15 39:16  provisions  [1]  47:13  objections  [1]  20:21        partes  [36]  3:14 4:1,7 9:16 12:14,  51:5 67:12             PTAB  [2]  41:21 54:22  obvious  [1]  33:5           24 14:6 17:19,23,25 18:3,14 22:  plain  [3]  3:16,22 45:11       PTO  [13]  30:21 31:5 35:11,23 41:  obviously  [2]  24:6 67:25       17 24:15 26:9,12 30:3,20 35:19   plaintiff  [1]  24:9           21 45:8 46:8,18 54:22 60:14 62:  odd  [1]  23:13             36:2 38:15,17,20 45:3 47:18,20   pleading  [1]  9:19          17,24 63:20  Office  [15]  1:7 11:25 12:9 13:16,24  48:3 52:11 56:7,20 62:13 64:8,15  please  [3]  3:10 4:13 30:19     PTO's  [1]  60:9 14:5 24:25 25:5,19,20 26:16,17   66:15 67:15 70:19         point  [16]  20:13 24:3 25:23 30:2   public  [3]  12:14 58:11,14 28:19 37:8 60:1          partial  [16]  4:17 10:23 21:15,20 22: 40:2 42:11 43:14,16 54:5 58:21   purpose  [5]  7:1 11:6 28:6 43:15  often  [5]  39:21 55:18 56:17,18 68:  3 28:20 31:16,17 35:20 43:17 51:  60:13 62:5 64:20 67:7 70:10 71:   51:16 14                  23 58:20,24 62:25 69:21 70:1    23                 purposes  [4]  24:14 51:19 58:12  okay  [8]  12:22 22:1 26:5,15,17,21,  particular  [8]  8:8 22:25 48:5 50:  pointed  [2]  25:4 71:8        67:6  23 27:3               21,23 56:3 62:15,16        points  [10]  41:18 45:15 46:15 53:7  pursue  [1]  34:19  once  [3]  10:24 22:18,18       particularity  [1]  19:16        60:4,12 66:9,10 67:10 71:20    put  [5]  32:3 39:18,18 59:16 60:15  one  [43]  10:25 13:5,11,11 15:17 16:  particularly  [4]  16:10 19:5 25:3   posed  [1]  38:2           putative  [1]  59:20 20 19:6,12 20:16 22:20 23:1,14,   65:21                position  [8]  15:5,8 17:9 24:21 32:  puts  [2]  52:5 64:5 21 24:18 26:3,10,11,17,19,23 32:  parties  [8]  20:7 41:24 50:19 55:6  3 34:1 44:8 63:11                  Q  22 35:15 39:23 40:6 41:22 43:3,   57:11,17 62:8 63:13        possibility  [3]  44:18 63:24 64:4 20 45:9 46:9,20 47:3 49:14,24 50:  pass  [1]  17:4            possible              quality  [1] [1]  32:7               51:21 
     6 51:5 59:3 61:21 62:21 63:9 64:  past  [1]  40:14            possibly              question  [24] [1]  71:2                 4:22 7:12 8:23 20: 
     16 65:23,23 68:15         Patent  [63]  1:7 3:11,14,19 5:7,20 7:  potential  [1]  62:23          20 23:24 32:11,12 36:16 37:17,25 
     ones  [3]  24:17 29:7 43:7       11,11 9:24 11:25 12:7,9 13:3,16,  power  [1]  5:13            38:2,3,5 42:9,18 43:18 44:5 49:14 
     only  [16]  4:10 5:12,13 8:3,8 12:19  24 14:3,5 16:5 17:17 20:22,24 22:  practical  [3]  16:8 28:7,15      50:11,22 58:21 62:10 67:6 70:1 
     13:11,24 19:5 28:17 45:1 62:16   6,10 24:24 25:5,19,20 26:16,17   practice              questions  [7] [3]  31:1 56:24,25             4:12 30:11 36:21 43: 
     63:21 64:19 67:19 68:15      28:19 30:9,22 34:18 36:4,6 38:16,  precedent  [1]  6:25         19 51:1,2 65:24 
     opening  [5]  28:3 37:19 38:7 39:4,  19 40:16 41:17 43:4,21 44:12 51:  precisely             quite  [1] [1]  58:6              55:10 
     15                  21 52:1 53:19 54:6 57:24,24 58:7,  preclude              quote  [1] [3]  49:19 51:9 61:4         13:20 
     opinion  [2]  7:25 24:14        8,10,14,18 59:4,4,13,25 60:18 61:  precludes             quoted  [1] [2]  11:19,22             3:25 
     opinions  [1]  58:4          23 63:18 64:22 65:22 67:14     premise              quotes  [1] [1]  37:20               40:15 
     opponents  [1]  28:8         patentability  [15]  3:19 5:14 7:8 8:  present  [2]  10:7 32:12               R  opportunity  [5]  10:7 11:13,17 25:  24 10:10,13,15 11:3 14:7 36:6 41:  presented  [8]  4:22 8:16 32:11 42: 10 64:21              13 50:22 54:20 55:21 56:16                       raised  [2]  32:1 50:22 19 52:9 54:12 55:20 58:22  oral                                                      ran  [1] [5]  1:16 2:2,5 3:7 30:16     patentable  [1]  30:23                              29:9  presents  [1]  32:10  order                                                     rather  [3] [1]  29:13           patents  [4]  24:17 29:7 51:14 59:                          20:14,16 47:23  preserving  [1]  49:8  ordinarily                                                  read  [8] [1]  59:12         10                                        22:5 27:8,9 28:15 36:11,  presumably  [2]  62:1 69:4  ordinary  [3]  24:8 39:11 56:24    pay  [1]  20:16                               13 38:12 67:14  presumed  [1]  59:7  original                                                    reading  [3]  [1]  16:16          pending  [1]  45:2                                   22:8,9 28:15  presupposes  [1]  39:15  originally                                                   real  [1] [1]  15:15         percent  [1]  35:8                                 33:20  prevail  [1]  26:5  other                                                     really  [11] [23]  6:13,25 7:20 9:14 10:6,6  perfectly  [3]  15:18 35:19 51:24                           10:21 11:2,12 17:20 19:  prevent  [1]  52:18 11:10 15:14,21 18:7 19:8,9,15 21:  permissible  [4]  31:21 53:6 68:16                     5 20:18,20 22:16 23:18 36:15 61:  previously  [1]  64:23 2 25:18 38:18 44:25 51:6 52:3 57:  70:2                                   9  principally  [1]  47:13 11,17 62:22 70:8          permits                                 reason  [10] [1]  22:2                                   4:9 25:16 37:17 44:5,  principle  [1]  24:8  others  [1]  62:24           permitted  [2]  37:4 62:2                          16 53:11 55:19 58:3,25 59:24  prior  [4]  31:15 33:5,6 62:16  otherwise                                                  reasonable  [9] [1]  16:4         perspective  [3]  60:10,11 61:16                              8:17,18,22 26:4 46:  problem  [3]  32:1 33:20 47:16  ought  [3]  10:15 12:6 29:22     petition  [29]  9:20 14:14 15:15 16:                     20 48:21 49:25 52:2,7  procedure  [1]  52:21  out                                                      reasonableness  [1] [13]  9:22 12:20,23 23:20 24:16  16 18:5,6 22:18,19,24 27:18 33:3,                               29:2  proceed  [6]  34:19 35:1,16 48:25 25:4 27:2 29:6 43:11 44:18 47:8   7,9,23 43:24 44:1 45:4,18 52:9 53:                    reasonably  [1]  62:19 62:5 63:9 48:18 71:8             18 55:20,22 56:6,11 57:16,22 68:                    reasoned  [2]  29:12,18  proceeding  [19]  20:16 31:9,12 34:  outer  [2]  49:17,18          6 69:7 70:8                               reasons  [6]  3:11 24:18 29:5 30:24 24,25 36:25 37:1,10 38:4,5,8,9 39:  outset  [3]  13:13 19:24 52:23    Petitioner  [41]  1:4,21 2:4,10 3:8,                     53:16 56:25 3,13 40:12 45:24 52:25 57:8 62:6  over  [12]  8:22 14:7 18:25 23:15 31:  20 16:12,16,18 17:15 18:3 20:12                     REBUTTAL  [3]  2:8 66:4 71:20  proceedings  [6]  31:1 35:5 55:8 15 33:5 35:7 41:25 59:3 64:2 65:  22:7,10 24:8 36:7,10,19,22 37:15                    reconsider  [1]  64:22 65:4,17 68:22 16,20                39:2,9,14 40:15,17 41:17 42:3 43:                    record  [4]  9:2,7,13 10:11  process  [8]  9:17 11:3 18:9 25:12  overly  [1]  71:19           22 44:11,13,17,21 52:20 56:13 61:                    reduce  [2]  20:9 33:12 32:17 34:3 48:18 61:13 
                               Heritage Reporting Corporation 
    Sheet 5                                                             nothing - reduce 
                                                                        78
                               Official - Subject to Final Review
�
     reexamination  [1]  50:18      18,19 65:16 67:15 70:19      sequentially  [1]  36:12        15,21 29:11 30:3 31:10,23 35:1, 
     reference  [1]  12:10         reviewability  [2]  65:4 71:12    serious  [1]  37:6           18,22 36:11 37:18 39:21 40:4 43: 
     references  [1]  33:4         reviewable  [1]  31:19        serves  [1]  24:13           1,15,16 44:9 52:18 53:21 57:7 62: 
     referred  [1]  39:4          reviewed  [2]  13:24 62:24      set  [8]  18:11 19:4,7,15 36:12 49:18  12 67:12,13,16,23 69:16 
     referring  [4]  38:7,9 68:4,6      reviewing  [2]  59:10,17        56:3 57:7              statutes  [1]  40:2 
     refers  [2]  18:2 38:19        reviews  [3]  10:23 12:6 66:15    sets  [1]  49:16            statutory  [10]  15:4,18 16:14 24:7 
     refined  [1]  39:8           revise  [1]  34:5           setting  [1]  49:20           27:10,16 42:19 57:13 68:12,15 
     reflects  [1]  31:21          revisit  [1]  30:22           settle  [3]  34:17 41:24 68:23     stay  [4]  34:24 35:8,15 63:25 
     regard  [6]  12:6 22:25 24:24 29:2,  rewrote  [1]  67:12          settled  [2]  41:23 68:21       stayed  [1]  35:5 
     16 71:3               rights  [1]  62:8            settlement  [2]  69:4,8        steps  [2]  61:2,2 
     Register  [4]  12:4,4,9 71:7      ROBERTS  [13]  3:3 30:13 31:25 32:  several  [1]  41:19          stick  [1]  6:25 
     regulation  [10]  11:25 12:10 27:9   13 35:4 39:6 42:22 43:7 55:9 56:  shall  [3]  36:5 67:21 70:18      still  [9]  18:8,19 29:1,18 65:3,7,9 68: 
     28:18,25 49:8 71:1,6,11,17     17 66:1 71:18 72:2         shenanigans  [1]  71:15       25 69:20 
     regulations  [4]  47:5,10 51:18 56:  room  [1]  47:2            short  [2]  29:13 57:6         stories  [1]  23:2 
     5                  Rosenwasser  [1]  67:21      shouldn't  [1]  10:22         story  [2]  17:22 22:16 
     regulatory  [1]  51:10        roughly  [1]  35:5           show  [2]  21:12 66:23        straightforward  [1]  17:21 
     reject  [2]  25:17 29:21        rule  [6]  33:19 57:18 59:4,13,13 65:  showed  [1]  67:20          strange  [1]  54:17 
     related  [4]  32:21,24,24,25      22                 showing  [6]  33:8 48:9,14 49:3,5  streamlined  [2]  9:17 52:21 
     relates  [1]  12:23          rule-making  [1]  23:12        53:12                streamlines  [1]  30:9 
     relatively  [1]  57:13         ruled  [2]  7:12,13          shows  [1]  57:16           stretch  [2]  39:7,8 
     releasing  [1]  63:7          rules  [3]  23:10 48:9 66:21      side  [4]  10:6 11:10 21:3 24:20    strong  [2]  28:22 63:18 
     relitigate  [1]  16:2          ruling  [3]  53:23 54:1,25       sign  [1]  43:21            strongest  [1]  19:7 
     relitigating  [1]  29:25        run  [1]  25:24            simple  [2]  17:21 45:5        strongly  [1]  24:1 
     relying  [2]  12:2 64:7                 S         simpler  [1]  30:4           structure  [5]  56:3,7,12 57:19 66: 
     remain  [2]  45:2 60:21                          simply  [4]  40:25 46:17 61:23 65:   24 
     remainder             same  [10] [2]  30:12 68:14          16:3 17:2 34:2 44:2,16   18                 stuck  [1]  47:16 
     render  [3]  15:9,19 52:19       47:14 49:22 61:1 67:22 71:13    since  [1]  42:10           subject  [3]  28:25 38:17 67:15 
     rendered             SAS  [2] [1]  33:5              1:3 3:4           single  [2]  14:2 20:22        submission  [1]  56:16 
     reply                saying  [21] [1]  25:4                  6:14 7:6 8:1,5 10:24   situation  [1]  14:5          submissions  [1]  55:5 
     request  [2]  18:4 33:2        12:13 23:24 24:21 26:18 27:20,23  slowed  [1]  64:1           submitted  [2]  72:3,5 
     require  [3]  18:6 56:6 61:7      34:4 39:5 40:19 42:23 50:20 51:  Solicitor  [1]  1:22          subset  [1]  18:16 
     required  [2]  49:18 52:19       11 53:11 69:2,20 70:11       solid  [1]  63:3            substantial  [1]  50:21 
     requirement            says  [18] [1]  66:24            6:7 8:7 13:9 17:9 19:13  someone  [2]  27:5 62:19      substantive  [1]  68:19 
     requirements  [1]  18:5        21:6 23:6 26:17,21 35:11 40:16   sorry  [3]  9:8 14:10 44:12      substitute  [3]  41:6 62:11,18 
     requires  [6]  3:17 5:4 8:11 31:10   43:23 49:3 61:19,20 67:16 70:1,  sort  [1]  21:20            success  [3]  41:15 52:23 53:2 
     40:21 57:20             17                 SOTOMAYOR  [52]  4:10,14,24 5:5,  sudden  [1]  26:24 
     requiring             scheme  [11] [2]  18:11 19:4             13:16 27:16 40:11 50: 12,17,23 6:1,5,9,18,23 7:5,16,19 8:  sued  [6]  13:18,18 15:25 34:22 61: 
     reserve  [1]  30:12          3,17 57:13 62:20,22 64:9,20 68:   13,25 9:5,6,9,11 10:4,16,18,21 14:  25 63:17 
     resolve  [1]  45:1           15                  10,18,22 15:1 18:10,17,23 19:3,18,  sufficiency  [2]  48:10 49:9 
     resources             scope  [16] [1]  47:4               17:23 18:1,2 27:17 29:2  22 20:19 21:1,8,12,17,24 22:2,12  sufficient  [5]  48:14 49:4,5 53:12 
     respect  [21]  3:18 4:11 5:1,8 9:2,13  31:2 34:16 36:21 39:20 40:3,3,9   43:20 57:25 58:2,10 67:5 68:17,   65:11 
     15:17,20 19:6 23:4 25:6 32:2 33:7  59:11 62:14 65:20 66:14      20 69:6,10             suggested  [1]  38:3 
     36:5 38:20 41:12 42:8 49:14 50:6  screens  [2]  24:16 29:6       sounds  [1]  38:13          suggesting  [2]  45:7 50:19 
     52:25 69:18            se  [1]  62:8              speaks  [1]  49:15          suggestive  [1]  50:15 
     respects              Second  [8] [1]  32:8                3:22 4:9,9 44:4 48:1   specific  [2]  33:4 66:8        suggests  [1]  24:1 
     responded  [1]  66:20        57:10 64:10 70:7          specifically  [2]  42:20 50:12     suit  [5]  35:17 37:2 58:16 61:25 64: 
     Respondents           secret  [2]  [4]  1:9,24 2:7 30:        24:2 70:6         specification  [1]  56:4        3 
     17                 Section  [35]  5:4 8:2,4 12:10,11,12  specify  [1]  27:22          sum  [1]  45:10 
     responses  [1]  66:8         13:8 16:3 17:24,24 18:1,4 20:21  speed  [1]  59:22           summary  [2]  53:1 54:1 
     rest  [1]  63:4             21:23 22:20 28:24 31:19 40:18,25  spinning  [1]  60:17         supported  [1]  3:20 
     resubmit  [1]  34:5          54:11 56:1 59:7 62:3 64:17 66:14,  stage  [5]  22:11 47:18 55:6,8 56:19  supports  [1]  24:7 
     result  [3]  34:2 44:6 61:1       25 70:13,16,17,22 71:1,3,5,6,14  standard  [5]  24:25 42:21 51:15 63:  suppose  [1]  61:10 
     review               see  [6] [95]  3:15 4:2,7,20 5:6,9 6:      6:9 12:3,8 36:14 47:10 48:  5 65:10               supposed  [3]  22:17 25:25 32:18 
     13 7:3,7,23 8:14,21,23 9:12,16 10:  20                 standards  [4]  48:14 49:3,4 55:7  SUPREME  [2]  1:1,16 
     5 12:15,24 13:22 14:6 17:23,25   seek  [1]  63:13            standing  [2]  36:24 44:21      surely  [1]  60:8 
     18:3,14 19:14 20:8 21:15 22:11,  seeking  [1]  63:14          start  [2]  21:23 27:8         system  [4]  11:11 13:17 24:16 59:1 
     17 23:8 24:3,16,23 25:6,14 26:9,  seem  [5]  32:2,14,16 54:17 68:13  started  [2]  27:19,23 
     12,20,22 30:3,20 31:18 32:15,16,  seemed                                         T  [1]  68:9          starting  [2]  36:12 37:20 
     22,24 33:2,16,21,23 34:16 35:12,  seems  [4]  11:9 23:2 49:13 50:13  starts               tack  [1]  [2]  4:6 17:22             42:6 
     19 36:2 38:15,17,20 39:12 40:20  select  [1]  18:15           STATES              tail  [1] [2]  1:1,17             40:24 
     41:15 45:4 47:18,20 48:3,15,17   selective  [1]  24:3          statistics             tailor  [1] [1]  56:22              33:22 
     50:4 52:11 53:22 54:7,23 55:5,10,  sense  [5]  27:1 32:23 60:6 61:3 64:  statute               tale  [1] [46]  3:17 4:5 11:18,22 16:      71:13 
     18,18 56:7,20 57:4,14,21 59:11,14, 24                  10 17:9,12 19:21,23 20:2 21:5,6,  talked  [1]  68:20 
     16 60:1,16 62:13 63:4,6,20 64:15,  sentence  [1]  40:24         13 22:15 23:2 25:25 27:5,9 28:6,8,  talks  [1]  71:9 
                               Heritage Reporting Corporation 
    Sheet 6                                                          reexamination - talks 
                                                                        79
                               Official - Subject to Final Review
�
     tells  [6]  17:20 22:15 44:23 47:5 69:  unless  [5]  33:12,12 46:19 49:23   without  [2]  11:2 52:3 

     14 71:13 
             51:13                witness  [1]  9:25 
     term  [1]  42:25            unlikely  [1]  57:21          word  [10]  17:15 20:2 38:19 39:19, 
     terms  [3]  8:11 32:17 45:11     unpatentable  [2]  5:21 56:10    20 40:3,13 42:12 43:9 67:18 
     text  [1]  8:11             unreasonable  [1]  25:3       worded  [1]  67:23 
     textual  [2]  24:1 28:22        untenable  [1]  52:5         words  [8]  15:14 29:20 36:19,23 38: 
     theory  [2]  19:10 68:24        up  [9]  6:11 12:9 13:15 14:15 25:12  18 44:2,14 71:15 
     there's  [16]  9:2 15:23 16:8,23,24   26:16 50:12 58:24 63:13      work  [8]  17:16 22:17 25:25 29:14 
     17:3 21:24 25:16 26:20 31:9 33:  up-or-down  [1]  46:23        31:1 44:25 52:11 65:17 

     20 34:24 42:5 43:18 46:1 63:24 
 urging  [1]  27:8           working  [1]  63:1 
     therefore  [3]  45:17 46:23 64:10   usage  [1]  39:11           works  [1]  15:4 
     they've  [1]  17:8           useful  [3]  58:7,7,8          world  [4]  15:23 28:24 41:10,16 
     thinking  [2]  28:11 40:5       Utility  [1]  68:12           worth  [2]  34:17 53:13 
     though  [3]  13:10 28:7 64:6             V         worthwhile  [1]  49:25
     three  [4]  3:11 14:17 29:13 66:8                      write  [3]  23:10 27:5 29:4 
     threshold  17:5 33:3 50:1 55:  vague  [1] [4]                 43:10          writing  [1]  28:6  valid  [4]  5:8 24:17 29:7 59:7     written  [15]  3:13,18 5:18 8:12 23:2 
     thumbs              validity  [2] [2]  58:24,25              8:19 18:25       27:12 29:12,23 31:3,5 40:21 49: 
     thumbs-down           validly  [1] [1]  46:10            31:7           21 56:18 58:5 71:11 
     thumbs-up            vegetable  [1] [1]  46:10               67:24        wrote  [1]  29:6 
     tie  63:13             versus  [1] [1]                      3:5
                        vested                       Ytied                     [2] [1]  50:5                  32:19 59:15
     time-consuming         via  [1]  67:3             year  [6] [1]  53:20                           14:11,16,19,22,23,24
     timely               view  [4] [1]  37:14               16:9 33:18 42:11 61:9   years  [2]  14:6,11
     Timing   17          viewed  [1]  62:18          yellow  [1] [1]  70:                                   71:12
     today               voting  [1] [1]  58:22                42:6                   Z 
     took                vulnerable  [1] [4]  12:9 14:20,20 61:8             63:19        zone  [1]  29:1  tool  [3]  30:21,25 52:10               W 
     total  [1]  45:10            wage  [1]  67:22  Trademark  [1]  1:7         walk  [1]  61:22  translate  [1]  64:16         wanted  [6]  41:9 59:25 61:11 62:20  treat  [1]  51:11            67:1,13  treated  [1]  54:25          wants  [3]  21:3 42:14 50:12  trepidation  [1]  30:6         Washington  [3]  1:12,20,23  Trial  [7]  3:11 7:11 9:17 16:5 20:24  wastes  [1]  52:6 36:4 57:9              wasting  [1]  52:3  tribunal  [2]  59:15 66:21       way  [20]  5:22 7:13,20 11:3,4,6 22:  trouble  [3]  25:24 27:4 28:5      16 27:2 28:7 29:4 34:5 39:1,19 41:  true  [2]  17:2 49:22          11 42:14 44:19,25 61:11 65:17 67:  trying  [2]  6:10 28:5          22  turned  [1]  28:4           ways  [2]  45:7 55:15  two  [18]  4:12 12:19 15:23 20:17 24:  weak  [2]  19:13 63:19 14 29:5 41:1,18 45:15 46:15 47:  wedded  [1]  28:11 12 56:24 60:4,12 61:1,2 63:2 68:9  weeding  [1]  48:18  type  [1]  30:8             weeding-out  [1]  71:10  types  [1]  30:5            whatever  [4]  8:6,6,16 57:5  U         wheels  [1]  60:17 
     U.S                 whereas  [2] [1]  1:7                    45:20 64:6 
     under          13:15,15  whereby  [2] [22]  6:17 8:2 12:12             13:17 14:5
     16:3 19:9 26:9 31:6,19 36:3 40:17  Whereupon  [1]  72:4
     41:7 45:10 51:10 54:10,10 56:1   whether  [23]  19:24,25 20:2,3,4 22:
     59:7 62:2 66:25 68:24        22,23,24 23:7,25 45:8 46:8 47:19
     underlying  [2]  62:6,9        48:4,17 53:5 56:19 58:23 68:4,5
     underscored  [1]  51:20       70:4,5,18
     underscores           who's  [2] [1]  46:4             34:14 37:15
     understand            whole  [1] [6]  6:21 15:7 16:7 34:      32:17
     7 42:23 69:16           will  [25]  6:11,11 20:7,10 26:8,9,11,
     understanding  [1]  70:10      13,22 34:5 43:5,8,10 44:18 61:21
     understood  [1]  38:18        62:1,23 63:4,9,24 64:12 65:20,22,
     undeveloped  [1]  10:11       23 66:10
     unfair               window  [1] [2]  11:9,10                57:7
     UNITED              within  [10] [2]  1:1,17               29:1 37:4,14 39:3,14
     universe  [2]  40:22 48:5       40:9,12 41:4 49:11 62:6

                               Heritage Reporting Corporation 
    Sheet 7                                                                tells - zone 
