Filed on behalf of Clearlamp, LLC
`By:
`
`Matthew L. Cutler (mcutler@hdp.com)
`
`
`Bryan K. Wheelock (bwheelock@hdp.com)
`
`
`Harness, Dickey & Pierce, PLC
`
`
`7700 Bonhomme, Suite 400
`
`
`St. Louis, MO 63105
`
`
`Tel: (314) 726-7500
`
`
`Fax: (314) 726-7501
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`LKQ CORPORATION
`Petitioner
`
`v.
`
`Patent of CLEARLAMP, LLC
`Patent Owner
`
`_____________
`
`Case IPR2013-00020
`Patent 7,297,364
`_____________
`
`PATENT OWNER CLEARLAMP, LLC’S PRELIMINARY RESPONSE
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`
`
`Case IPR 2013-00020
`Patent No. 7,297,364
`
`
`Page
`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT .............................. 1
`
`II.
`
`FACTUAL BACKGROUND.......................................................................... 7
`
`A. Overview of the Invention of the ‘364 Patent ....................................... 7
`
`B.
`
`C.
`
`The ‘364 Patent’s Novel Methods for Refurbishing Vehicle Lamps ... 8
`
`The ‘364 Patent’s Prosecution History ...............................................10
`
`III. LKQ’s Proposed Ground Do Not Show a Reasonable Likelihood That LKQ
`Will Prevail As To Any Claim ......................................................................11
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Certain of LKQ’s Proposed Grounds Must Fail Because They Rely on
`Arguments that the Office has Previously Rejected ...........................12
`
`The Office’s Prior Ruling that Kuta Teaches Away from the Claims
`Was Correct, and the Board Should Therefore Reject LKQ’s Grounds
`1–5 .......................................................................................................13
`
`The Cole Reference Also Teaches Away From Removing A Lamp
`From a Vehicle, so LKQ Likewise Cannot Prevail on Grounds
`6–10 .....................................................................................................19
`
`LKQ’s Ground 11 Fails Because Autopia Does Not Disclose
`Applying a Clear Coat to the Vehicle Light........................................21
`
`LKQ’s Attempted Reliance on the “Admitted [Magni] Prior Art” in
`Grounds 1–11 is Improper and Does not Support a Finding of
`Obviousness .........................................................................................22
`
`1.
`
`2.
`
`Grounds 1–11 must fail to the extent they rely on the ‘364
`patent’s description, which is not prior art ...............................22
`
`The Magni Prosecution History Cited by LKQ Fails to Teach
`Applying the Compound as a Clear Coat to a Vehicle Lens ....24
`
`F.
`
`Grounds 2, 3, 5, 7, 8, 10, and 11 also fail because the Internet forum
`documents relied on in those Grounds are not competent evidence of
`the prior art ..........................................................................................25
`
`1.
`
`LKQ’s Internet-based evidence is not admissible evidence
`because it is not authenticated...................................................25
`
`-ii-
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`

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`Case IPR 2013-00020
`Patent No. 7,297,364
`
`
`2.
`
`LKQ has not shown Autopia, Eastwood, or SHO to be prior art
`because the alleged dates of those posts are supported only by
`inadmissible hearsay .................................................................26
`
`IV. CONCLUSION ..............................................................................................28
`
`
`
`
`
`
`
`
`-iii-
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`

`

`TABLE OF AUTHORITIES
`
`Case IPR 2013-00020
`Patent No. 7,297,364
`
`
`Page(s)
`
`
`CASES
`
`Duhn Oil Tool, Inc. v. Cooper Cameron Corp.,
`818 F. Supp. 2d 1193 (E.D. Cal. 2011) .............................................................. 14
`
`Hilgraeve, Inc. v. Symantec Corp.,
`271 F. Supp. 2d 964 (E.D. Mich. 2003) ............................................................. 27
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................... 17
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) .............................................................................. 14
`
`In re Hedges,
`783 F.2d 1038 (Fed. Cir. 1986) .......................................................................... 15
`
`Janssen Pharmaceutic N.V. v. Mylan Pharmaceuticals, Inc.,
`456 F. Supp. 2d 644 (D.N.J. 2006) ..................................................................... 15
`
`Lorraine v. Markel Am. Ins. Co.,
`241 F.R.D. 534 (D. Md. 2007) ........................................................................... 26
`
`Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc.,
`73 F.3d 1085 (Fed. Cir. 1995) ............................................................................ 15
`
`Ricoh Co., Ltd. v. Quanta Computer, Inc.,
`550 F.3d 1325 (Fed. Cir. 2008) .......................................................................... 16
`
`St. Luke’s Cataract and Laser Inst. v. Sanderson,
`2006 WL 1320242 (M.D. Fla. May. 12, 2006) .................................................. 26
`
`Symbol Techs., Inc. v. Opticon, Inc.,
`1990 WL 58887 (S.D.N.Y. May 3, 1990), 17 U.S.P.Q.2d 1737 (S.D.N.Y.
`1990), aff’d, 935 F.2d 1569 (Fed. Cir. 1991) ..................................................... 23
`
`Tec Air, Inc. v. Denso Mfg. Mich., Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) .......................................................................... 14
`
`-iv-
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`

`Case IPR 2013-00020
`Patent No. 7,297,364
`
`
`U.S. v. Adams,
`383 U.S. 39 (1966) .............................................................................................. 14
`
`United States v. Cestnik,
`36 F.3d 904 (10th Cir. 1994) .............................................................................. 27
`
`Volterra Semiconductor Corp. v. Primarion, Inc.,
`796 F. Supp. 2d 1025 (N.D. Cal. 2011) .................................................. 17, 19, 20
`
`STATUTES
`
`35 U.S.C. § 102 .................................................................................................passim
`
`35 U.S.C. § 103 ...................................................................................................... 4, 6
`
`35 U.S.C. § 112 ........................................................................................................ 11
`
`35 U.S.C. § 314 ................................................................................................ 1, 6, 11
`
`35 U.S.C. § 316 ........................................................................................................ 28
`
`35 U.S.C. § 325 .......................................................................................... 2, 3, 12, 13
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.61 ..................................................................................................... 25
`
`37 C.F.R. § 42.62 ..................................................................................................... 25
`
`37 C.F.R. § 42.104 ................................................................................................... 25
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`77 Fed. Reg. 48756, 48758 (Aug. 14, 2012) ........................................................... 25
`
`77 Fed. Reg. 48764 (Aug. 14, 2012).......................................................................... 4
`
`2 Donald S. Chisum, Chisum on Patents, § 5.03[3][a][i][G] (Matthew
`Bender) ................................................................................................................ 20
`
`FRE 901 ............................................................................................................. 25, 26
`
`FRE 902 ................................................................................................................... 26
`
`-v-
`
`

`

`Case IPR 2013-00020
`Patent No. 7,297,364
`
`H.R. Rep. No. 11-98, 112th Cong., 1st Sess. 47 (June 1, 2011) ............................. 11
`
`Office Patent Trial Practice Guide, § II ................................................... 6, 13, 22, 24
`
`
`
`-vi-
`
`

`

`INTRODUCTION AND SUMMARY OF ARGUMENT
`
`Case IPR 2013-00020
`Patent No. 7,297,364
`
`
`I.
`
`Pursuant to 37 C.F.R. §42.107, patent owner Clearlamp, LLC (“Clearlamp”)
`
`submits this preliminary response to LKQ Corporation’s (“LKQ”) request for inter
`
`partes review of U.S. Patent No. 7,297,364 (“the ‘364 patent”). The ‘364 patent is
`
`directed to methods for refurbishing damaged or discolored vehicle headlamps and
`
`tail lamps to such a high quality that they are suitable for sale as OEM-replacement
`
`parts. LKQ’s petition should fail at this stage of the inter partes review proceeding
`
`because the Grounds it presents either comprise an attempted rehashing of
`
`arguments already considered and dismissed by the Office, or contain other fatal
`
`flaws. To fulfill the goals of efficient and expedited proceedings, as articulated in
`
`both the America Invents Act and its implementing regulations, LKQ should not be
`
`allowed to “re-do” the prosecution of the ‘364 patent on the same grounds as those
`
`already considered by the Office. This, plus the other infirmities with LKQ’s
`
`arguments, makes it clear that there can be no “reasonable likelihood that [LKQ]
`
`would prevail with respect to at least one of the claims challenged in the petition.”
`
`35 U.S.C. § 314. As such, LKQ’s petition should be denied in its entirety.
`
`More specifically, the first ten of LKQ’s eleven proposed Grounds are
`
`related to the same prior art already considered by the Office during prosecution of
`
`the ‘364 patent (Grounds 1-5), or to art with substantially the same disclosure as
`
`that previously-considered art (Grounds 6-10). The America Invents Act directs
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`1
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`

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`Case IPR 2013-00020
`Patent No. 7,297,364
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`that a decision to deny grounds for inter partes review can be based on the fact that
`
`the petition merely repeats prior art or arguments already considered by the Office.
`
`Section 325 of the Patent Act reads, in this regard:
`
`In determining whether to institute or order a proceeding under …
`
`chapter 31 [Inter Partes Review], the Director may take into account
`
`whether, and reject the petition or request because, the same or
`
`substantially the same prior art or arguments previously were
`
`presented to the Office.
`
`Here, Grounds 1–5 of LKQ’s Petition each use U.S. Patent Pub. No. US
`
`2005/0208210 (“Kuta”) as the primary reference to be combined with a series of
`
`secondary references. But, during prosecution of the ‘364 patent, Primary
`
`Examiner William Phillip Fletcher III found that Kuta teaches away from the
`
`inventions claimed in the ‘364 patent. As such, the prior art and argument LKQ
`
`advances in its Petition in Grounds 1–5 are identical to what previously-considered
`
`by the Office. Each of Grounds 1–5 should, therefore, be denied.
`
`Next, Grounds 6–10 of LKQ’s Petition each use U.S. Patent No. 7,163,446
`
`(“Cole”) as the primary reference, to be combined in the same way as Kuta, with
`
`the same series of secondary references. But, Cole has the same relevant teaching
`
`as that contained in Kuta and, as such, Cole teaches away from a combination with
`
`the secondary references, as well. In short, then, the same argument and
`
`2
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`

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`Case IPR 2013-00020
`Patent No. 7,297,364
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`substantially the same prior art LKQ advances in its Petition in Grounds 6–10 was
`
`previously presented to the Office. Inter partes review proceedings are not
`
`intended to allow parties a second bite at the apple. Because LKQ’s Grounds 1–10
`
`are a mere rehashing of arguments and prior art already presented to the Office, the
`
`Board should avail itself of the guidance provided by 35 U.S.C. §325 and deny
`
`each of Grounds 1–10.
`
`Further, LKQ’s attempts to argue that Kuta and Cole do not teach away are
`
`unpersuasive. As discussed in more detail below, LKQ sets forth four arguments
`
`seeking to re-argue the finding already entered by the Office. None of these
`
`arguments can meet the heightened “reasonable likelihood” standard. For
`
`example, LKQ points out a distinction between “lenses” (Kuta’s and Cole’s
`
`terminology) and “lamps” (the ‘364 patent’s terminology). Setting aside any
`
`impact this distinction may have on the fact that Kuta and Cole teach away, LKQ’s
`
`argument almost wholly undermines its proposed Grounds for unpatentability in its
`
`Petition. This is assuming that LKQ is correct that the terms “lens” and “lamp” are
`
`fundamentally different, then LKQ’s Petition must fail because both Kuta and Cole
`
`do not disclose the “lamps” required in each challenged claim. LKQ’s other
`
`arguments are similarly unavailing.
`
`Next, not only are LKQ’s Grounds 1–10 insufficient because they have
`
`already been considered by the Office, and LKQ’s arguments otherwise are
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`3
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`

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`Case IPR 2013-00020
`Patent No. 7,297,364
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`
`insufficient, but these Grounds are also substantively insufficient to show
`
`obviousness under the Office’s implementation guidance. Specifically, the “Office
`
`Patent Trial Practice Guide” for inter partes review practice sets forth a series of
`
`exemplary reasons according to which review should not be instituted, including
`
`“…II. C. (4) The prior art teaches or suggests away from a combination that the
`
`petitioner is advocating.” 77 Fed. Reg. 48764 (Aug. 14, 2012). For Grounds 1–5,
`
`Primary Examiner Fletcher was correct in finding that Kuta teaches away from an
`
`invention that involves removing vehicle lamps as a part of the refurbishing
`
`process. Similarly, because Cole contains the same guidance on this aspect of the
`
`refurbishing process, Grounds 6–10 (which primarily rely on Cole) should likewise
`
`be rejected. LKQ’s petition tries to overcome the lack of disclosure in Kuta and
`
`Cole, but LKQ’s proffered rationale is insufficient, as discussed in more detail
`
`below.
`
`The final ground for unpatenability asserted by LKQ, Ground 11, suggests
`
`that each element of the challenged claims is found in an Internet posting on the
`
`Autopia.com website or a combination of the Autopia reference and “admitted
`
`prior art.” Ostensibly, this is a § 103 argument, though LKQ’s argument resonates,
`
`in part, in § 102 anticipation. To be clear, the Autopia reference, in addition to
`
`suffering from evidentiary flaws, does not disclose at least two limitations of each
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`4
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`

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`Case IPR 2013-00020
`Patent No. 7,297,364
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`of the challenged claim—spraying a clear coat on the headlamp and curing that
`
`clear coat.
`
`The information cited by LKQ relating to the MAGNI trademark (Ex. 1014)
`
`cannot cure the above deficiency with Ground 11 because a combination of
`
`Autopia and this trademark information fails to make out a prima facie case of
`
`obviousness. Specifically, there is nothing in the Exhibit 1014 that teaches the
`
`above-referenced steps of “spraying a replacement clear coating material…” and
`
`“curing the replacement clear coating material.” Indeed, the referenced trademark
`
`material is related to “corrosion inhibiting coatings for metals.” Id. (emphasis
`
`added). In short, LKQ points to no evidence, that qualifies as prior art under 35
`
`U.S.C. § 102, that discloses each limitation of the challenged claims and, as such,
`
`no prima facie case of obviousness is presented. LKQ seeks to remedy this
`
`shortcoming by pointing to certain disclosures from the ‘364 patent description,
`
`but this is insufficient to meet its burden in this proceeding. If it existed, LKQ had
`
`the burden to present evidence showing all steps of the claimed methods as part of
`
`Ground 11. Its failure to do so is fatal to this ground of unpatentability.
`
`Finally, and independent of the above reasons, LKQ’s Grounds are all
`
`undermined by its failure to present competent evidence in support of the
`
`arguments. First, as alluded to above, all Grounds rely in part on the disclosure of
`
`the ’364 patent itself to fill holes in LKQ’s other prior art. But the ‘364 patent is
`
`5
`
`

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`Case IPR 2013-00020
`Patent No. 7,297,364
`
`
`not prior art to itself, and cannot form the basis for an obviousness rejection.
`
`Second, the Grounds that rely on internet documents (i.e., Grounds 2, 3, 5, 7, 8, 10
`
`and 11) fail to show with competent evidence that the internet Exhibits supporting
`
`those Grounds are in fact prior art. See Office Patent Trial Practice Guide, §
`
`II.C.2. Specifically, Exhibits 1004, 1005, and 1007, all of which purportedly show
`
`posts made on internet forums, are unauthenticated in contravention to the Federal
`
`Rules of Evidence. Similarly, those internet posts’ dates of publication are
`
`supported only by inadmissible hearsay (i.e., the dates shown on the faces of the
`
`Exhibits themselves), and thus are not proper evidence of the content of the prior
`
`art.
`
`In summary, LKQ seeks to portray the inventions of the ‘364 patent as
`
`obvious through the lens of perfect hindsight. A careful review of LKQ’s analysis
`
`reveals, however, that the ‘364 patent claims are both novel (no § 102 grounds are
`
`even proposed) and non-obvious. Rather, LKQ’s only Grounds seeking
`
`unpatentability under § 103 comprise recycled arguments already considered and
`
`dismissed by the Office, or grounds that fail to teach material limitations of the
`
`challenged claims. This attempt cannot meet the heightened “reasonable
`
`likelihood” standard of 35 U.S.C. § 314 and, as such, each of Grounds 1 through
`
`11 should be denied.
`
`6
`
`

`

`II.
`
`FACTUAL BACKGROUND
`
`A. Overview of the Invention of the ‘364 Patent
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`Case IPR 2013-00020
`Patent No. 7,297,364
`
`
`The ‘364 patent discloses and claims novel methods for refurbishing vehicle
`
`lamps (e.g., car headlights and tail lights) that have been delaminated, scratched, or
`
`otherwise have a marred or discolored surface. Such damaged vehicle lights
`
`present a serious safety issue. As taught by the patent:
`
`The scratches [in the lamp surface] affect the aesthetic qualities of the
`lamp, as well as its performance. Scratches divert light from the
`direction in which the lamp is designed to emit light, reducing the
`performance of the lamp. In addition, some scratches in the lamp
`surface may misdirect enough light as to cause distraction to those
`peripheral to the lamp.
`
`Ex. 1001, 1:19–25.
`
`
`
`Moreover, the inventors recognized that in “many situations, the [damaged]
`
`lamp is not broken; [but] it is scratched severely enough to warrant the replacement
`
`thereof.” Ex. 1001, 1:17–19. Prior to the ‘364 patent, damaged vehicle lamps
`
`were oftentimes replaced rather than repaired, at significant expense to owners and
`
`insurers. Ex. 1001, 1:14–15. This was because refurbished aftermarket lights were
`
`generally inferior to new lights in terms of optical quality, if they were even
`
`available at all. The ‘364 patent’s inventors changed that, though, by inventing a
`
`process by which damaged vehicle lamps could be refurbished to a condition that
`
`was suitable for re-sale as replacement parts.
`
`7
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`

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`Case IPR 2013-00020
`Patent No. 7,297,364
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`B. The ‘364 Patent’s Novel Methods for Refurbishing Vehicle Lamps
`
`Generally, the ‘364 patent’s claims
`
`describe a refurbishing process that requires
`
`removing a lamp from the vehicle, removing
`
`the lamp’s clear coating, grinding out
`
`imperfections (scratches, chips, etc.) on the
`
`lamp’s surface, and then applying and curing a
`
`replacement clear coating over the lamp
`
`surface. Specific claims expand on this basic
`
`process. A more specific recitation of the
`
`inventive process from the ‘364 patent is
`
`shown in Figure 4, and is explained in more detail below. The first step of the ‘364
`
`patent’s method is removing the damaged lamp from the vehicle.
`
`Kuta and Cole were filed shortly before the filing of the ‘364 patent. Both
`
`Kuta and Cole taught that, as more sophisticated refurbishing processes were
`
`developed, it was far more preferable—and cost effective—to leave the headlamp
`
`in place on the vehicle during the refurbishing process. But, the inventors of the
`
`‘364 patent recognized the problems with that approach, particularly the likelihood
`
`of damaging the car’s body. Thus, in contrast to Kuta and Cole, the ‘364 patent
`
`claims each require the removal of the lamp from the vehicle.
`
`8
`
`

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`Case IPR 2013-00020
`Patent No. 7,297,364
`
`
`Also relevant to the issues herein, after the refurbishing steps, a
`
`replacement protective clear coating material is applied to the lamp surface,
`
`and the clear coating is cured. Ex. 1001, 4:4–11. The curing process can be
`
`through, for example, application of infrared or ultraviolet radiation,
`
`depending on the clear coating material used. See Ex. 1001, 4:11–19. The
`
`‘364 patent identifies a compound marketed under the tradename MAGNI
`
`700 as a suitable clear coat replacement. As shown by Exhibit 1014 to
`
`LKQ’s request, MAGNI 700 was known in 2005 as a “corrosion inhibiting
`
`paint-type coating for metals.” Exh. 1014, p. 010. Significantly, the
`
`inventors of the ‘364 patent realized that this substance could also be used
`
`on vehicle lamp surfaces. See Ex. 1001, 4:13–19.
`
`The replacement clear coating is important because it protects the
`
`lamp surface from degradation after it is installed. The clear coat thus
`
`distinguishes the ‘364 patent’s invention from “shade tree mechanic” type
`
`lamp refurbishing, in that it results in a headlamp that is of such a high
`
`quality, it can be sold or used as an aftermarket or OEM replacement at, for
`
`example, a body shop. This results in significant cost savings to insurers and
`
`consumers.
`
`9
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`

`

`C. The ‘364 Patent’s Prosecution History
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`Case IPR 2013-00020
`Patent No. 7,297,364
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`
`The ‘364 patent issued from U.S. Application Serial No. 11/311,852 (“the
`
`‘852 application”), which was filed on December 19, 2005. The ’852 application
`
`does not claim priority to any earlier filing. As filed, the ‘852 application
`
`contained 24 claims.
`
`The first substantive Office Action issued on January 12, 2007. The Action
`
`allowed the claims that correspond to issued claims 1–6 and 13–23 of the ‘364
`
`patent. The Office provided the following “statement of reasons for the indication
`
`of allowable subject matter”:
`
`Kuta (US 2005/0208210 A1) is the closest prior art. Broadly, this reference
`
`teaches:
`
`This reference also teaches away from the instantly claimed step of
`
`removing the lamp from the motor vehicle:
`
`
`
`
`
`10
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`

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`Case IPR 2013-00020
`Patent No. 7,297,364
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`
`As such, the claimed invention is patentable over the prior art.
`
`Ex. 1011, pp. 005–6. (emphasis added).
`
`
`
`After Applicants made certain amendments and canceled some claims to
`
`overcome § 112 rejections, the pending claims were allowed on August 26, 2007,
`
`for the same “Reasons for Allowance” as noted above. The patent issued on
`
`November 20, 2007.
`
`III. LKQ’s Proposed Ground Do Not Show a Reasonable Likelihood That
`LKQ Will Prevail As To Any Claim
`
`Pursuant to 35 U.S.C. § 314, an inter partes review should only be instituted
`
`when there “is a reasonable likelihood that the petitioner would prevail as to at
`
`least one of the claims challenged in the petition.” This “reasonable likelihood”
`
`standard is a higher standard than the “substantial new question” standard that was
`
`applied in reexamination proceedings, as illustrated by the America Invents Act’s
`
`legislative history:
`
`The threshold for initiating an inter partes review is elevated from
`‘significant new 112 question of patentability’—a standard that
`currently allows 95% of all requests to be granted—to a standard
`requiring petitions to present information showing that their challenge
`has a reasonable likelihood of success.
`
`H.R. Rep. No. 11-98, 112th Cong., 1st Sess. 47 (June 1, 2011).
`
`11
`
`

`

`A. Certain of LKQ’s Proposed Grounds Must Fail Because They
`Rely on Arguments that the Office has Previously Rejected
`
`Case IPR 2013-00020
`Patent No. 7,297,364
`
`
`One way that the “reasonable likelihood” standard may not be met by a
`
`petition is that the petition repeats arguments that were previously rejected by the
`
`Patent Office. Specifically, 35 U.S.C. § 325 directs that “[i]n determining whether
`
`to institute or order a proceeding under … chapter 31 [inter partes review], the
`
`Director may take into account whether, and reject the petition or request because,
`
`the same or substantially the same prior art or arguments previously were
`
`presented to the Office.”
`
`LKQ’s Grounds 1–5 are based primarily on the Kuta reference. See Petition
`
`at 3. But, as shown above, the Office previously found that the ‘364 patent’s
`
`claims are not invalidated by Kuta, because Kuta teaches away from the claimed
`
`invention. Because the Office has already considered Kuta’s application to the
`
`‘364 patent’s claims, LKQ’s Grounds 1–5 should be rejected under 35 U.S.C.
`
`§ 325. Simply, LKQ cannot meet the heightened “reasonable likelihood” standard
`
`by rehashing arguments discarded during the ‘364 patent prosecution.
`
`Similarly, Grounds 6–10 should be denied because they rely on Cole, which
`
`has the same teaching as Kuta. That is, like Kuta, Cole teaches away from
`
`removing the lamp from the vehicle as a part of the refurbishing process:
`
`12
`
`

`

`Case IPR 2013-00020
`Patent No. 7,297,364
`
`
`Ex. 1008, col. 2, ll. 22–30. Thus, the teaching of Cole is, in this regard,
`
`substantially the same as Kuta’s. 35 U.S.C. § 325 thus also supports rejections of
`
`
`
`Grounds 6–10.
`
`
`
`In short, to ensure the efficient and expeditious proceedings, LKQ cannot be
`
`granted a “re-do” of the prosecution of the ‘364 patent and Grounds 1-10 should be
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`denied.
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`B.
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`The Office’s Prior Ruling that Kuta Teaches Away from the
`Claims Was Correct, and the Board Should Therefore Reject
`LKQ’s Grounds 1–5
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`Even if the Board is inclined to reconsider the Kuta reference, Grounds 1–5
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`should be rejected because, according to § II.C. of the Trial Practice Guide, inter
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`partes review should not be instituted when “[t]he prior art teaches or suggests
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`away from a combination that the petitioner is advocating.” Specifically, LKQ’s
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`Grounds 1–5 must fail because Kuta teaches that removing a vehicle lamp is
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`impractical—i.e., they teach away from that step. Instead, Kuta teaches an
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`alternative to replacement that is more cost effective, in that it does not require
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`Patent No. 7,297,364
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`removal of worn lenses nor mounting of new ones.” Ex. 1002 at at ¶ 10 (emphasis
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`added).
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`The Federal Circuit has found that, as a “useful general rule,” references that
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`teach away from the claim invention cannot serve to create a prima facie case of
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`obviousness. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Rather, “if a
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`reference teach away from its combination with another source,” then “[t]here is no
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`suggest to combine” those references in forming an obviousness rejection. Duhn
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`Oil Tool, Inc. v. Cooper Cameron Corp., 818 F. Supp. 2d 1193, 1226 (E.D. Cal.
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`2011) (citing Tec Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353, 1359 (Fed.
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`Cir. 1999). This follows logically from the predictability standard for obviousness.
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`See U.S. v. Adams, 383 U.S. 39, 51–52 (1966). In Adams, the Supreme Court
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`ruled that a claim for a battery with one magnesium electrode and one cuprous
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`chloride electrode. Id. Both magnesium and cuprous chloride were previously
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`known as battery components. Id. However, combining the two in one battery
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`went against the conventional wisdom in the battery art at the time the patent was
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`filed, because that combination would have required the person of ordinary skill to
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`ignore the expected incompatibilities between the two components. Id.
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`Examination of LKQ’s prior art shows that the conventional wisdom when
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`the ‘364 patent’s application was filed was that it is better to refurbish a vehicle
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`lamp while it is on the vehicle, rather than incurring the time and expense of taking
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`the lamp off first. See Ex. 1002, ¶ 10. See Janssen Pharmaceutic N.V. v. Mylan
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`Pharmaceuticals, Inc., 456 F. Supp. 2d 644, 659–62 (D.N.J. 2006) (person of
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`ordinary skill in the art as of 1985 filing date would not have focused on claimed
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`chemical as lead compound in antipsychotic drug research, because the “prior art
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`demonstrated that the dominant theory in March 1985” focused on a different class
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`of compounds). But the ‘364 patent’s inventors proceeded against that
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`conventional wisdom, instead realizing—where others had not—that removing
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`vehicle lights to vigorously refurbish them would have significant advantages.
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`Such action in the face of accepted wisdom is “strong evidence of
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`nonobviousness.” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986); see also
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`Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1093 (Fed.
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`Cir. 1995) (patent was non-obvious where prior art taught away from claimed
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`handgun configuration).
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`Given this teaching, and no contrary teaching anywhere in Kuta, one of skill
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`would not be led to combine Kuta with any of the other references in LKQ’s
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`Grounds 1–5. They are, quite simply, contradictory. Moreover, that this argument
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`cannot meet the heightened “reasonable likelihood” standard is confirmed by the
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`fact that the Office already determined during the ‘364 patent’s prosecution that
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`Kuta teaches away from the claims.
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`Case IPR 2013-00020
`Patent No. 7,297,364
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`Moreover, the Office’s previous analysis was correct. “A reference may be
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`said to teach away when a person of ordinary skill, upon reading the reference,
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`would be discouraged from following the path set out in the reference, or would be
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`led in a direction divergent from the path that was taken by the applicant.” Ricoh
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`Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008).
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`LKQ’s attempts to argue around the Office’s finding of teaching away by
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`Kuta are unavailing. First, LKQ attempts to minimize the distinctions between
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`Kuta and the invention of the ‘364 patent, by suggesting that the ‘364 patent’s
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`methods only address one of four listed problems with the method of the Kuta
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`Reference. Petition at 6. While largely a red herring, it is worth noting that all
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`four of the problems with Kuta are solved by the methods of the ‘364 patent. For
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`example, the first-listed problem relates to the water in the Kuta method
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`transmitting debris from the headlamp onto the vehicle—a condition that can cause
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`the portion of the vehicle below the headlamp to be damaged by subsequent wiping
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`down of the vehicle. Ex. 1001, 1:35-40. Because the headlamp is removed from
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`the vehicle in the methods of the ‘364 patent, this problem with Kuta is indeed
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`solved by the ‘364 patent, despite LKQ’s denial of that fact. The other problems
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`identified in Kuta are similarly solved by the inventive methods of the ‘364 patent.
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`As a second line of attack, LKQ points out a distinction between “lenses”
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`(Kuta’s terminology) and “lamps” (the ‘364 patent’s terminology). Assuming that
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`Patent No. 7,297,364
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`LKQ is correct that the terms “lens” and “lamp” are fundamentally different, then
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`LKQ’s Petition must fail because there is a fundamental flaw in several of the
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`references upon which it relies. Specifically, Kuta, among other references, does
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`not disclose the lamp required by each of the challenged claims.
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`Third, LKQ relies on In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004) in support
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`of its argument that Kuta does not teach away from the claims. But, Fulton is
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`distinguishable from this case because Kuta does “criticize, discredit, or otherwise
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`discourage the solution claimed” in the ‘364 patent, because Kuta at the very least
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`discourages the removal of vehicle lamps as a way to reduce cost. See, e.g.,
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`Volterra Semiconductor Corp. v. Primarion, Inc., 796 F. Supp. 2d 1025, 1083
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`(N.D. Cal. 2011) (prior art taught away from more expensive invention claimed in
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`later patent).
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`Fourth, LKQ argues that Kuta does not teach away because secondary
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`references relied upon by LKQ “negate” any teaching away in Kuta. LKQ’s
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`argument is legally and factually incorrect. LKQ states that U.S. Patent No.
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`4,497,755 (“the Korsyn Patent”) negates any teaching away by Kuta because the
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`Korsyn Patent discloses that the lens “has been removed.” Petition at 10.
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`Similarly, LKQ states that U.S. Patent No. 6,106,648 (“the Butt Patent”) negates
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`any teaching away by Kuta because the Butt Patent teaches that it is more
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`convenient to remove the lamp. Id. LKQ also asserts tha