`Patent 7,297,364
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`Trials@uspto.gov
`Tel: 571.272.7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`LKQ CORPORATION
`Petitioner
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`v.
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`Patent of CLEARLAMP, LLC
`Patent Owner
`_____________
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`Case No. IPR2013-00020
`Patent 7,297,364
`_____________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`TABLE OF CONTENTS
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`I.
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`II.
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`Statement of Relief Requested ........................................................................ 1
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`Statement of Reasons For the Relief Requested.............................................. 1
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`Page
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`A.
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`B.
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`C.
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`D.
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`E.
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`Background ........................................................................................... 1
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`Claim Construction ............................................................................... 2
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`Invalidity Based on the Prior Art .......................................................... 3
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`Kuta’s Process on a Removed Lamp Fully Removes the
`Clear Coat ................................................................................... 3
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`Kuta Discloses “Evening the Lamp Surface” ............................. 4
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`Those of Skill Understand Kuta as Disclosing “Spraying” ........ 5
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`PO’s Distinction between “OEM” and “Consumer”
`Markets ........................................................................................ 6
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`“Statically Neutralizing” ............................................................. 9
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`Curing with Infrared Radiation ................................................. 10
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`Curing by Heating in an Oven .................................................. 10
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`PO’s Expert Testimony is of Little Probative Value .......................... 10
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`PO’s Secondary Consideration Arguments ......................................... 12
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`1.
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`2.
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`Allegations of Copying ............................................................. 12
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`PO’s Commercial Success Arguments ..................................... 14
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`III. Conclusion ..................................................................................................... 15
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`ii
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`TABLE OF AUTHORITIES
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`CASES
`Cable Electric Products, Inc. v. Genmark, Inc.
`770 F.2d 1015 (Fed. Cir. 1985) ............................................................................ 13
`
`Friskit, Inc. v. Real Networks, Inc.
`306 Fed. Appx. 610 (Fed. Cir. 2009) ................................................................... 14
`
`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC
`683 F. 3d 1356 (Fed. Cir. 2012) ........................................................................... 14
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`Wyers v. Master Lock Co.
`616 F.3d 1231 (Fed. Cir. 2010) ............................................................................ 12
`
`RULES
`37 C.F.R. §42.23 ........................................................................................................ 1
`
`OTHER AUTHORITIES
`MPEP 716.06 ........................................................................................................... 14
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`
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`iii
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`I.
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`STATEMENT OF RELIEF REQUESTED
`LKQ Corp. (“LKQ” or “Petitioner”) respectfully requests that claims 1 to 24
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`of U.S. Patent No. 7,297,364 (“the ’364 Patent”) be canceled on the grounds in the
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`March 29, 2013 Decision instituting inter partes review (“Decision”).
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`II.
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`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`The Patent Owner Response (“Response”)1 purports to set forth “several,
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`and significant differences” between the prior art and the claims. (Response, 2-3).
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`Not only does the prior art describe each claimed step, but Clearlamp LLC’s
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`(“PO”) experts undermine its arguments. PO tries to save its patent by arguing
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`secondary considerations. However, its copying argument does not show copying,
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`and its commercial success argument does not establish the required nexus.
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`A. BACKGROUND
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`On October 15, 2012, Petitioner petitioned for inter partes review of the
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`’364 Patent (“Petition”). On March 29, 2013 the Patent Trial and Appeals Board
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`(“Board”) instituted review on two grounds: (1) claims 1 to 24 under 35 U.S.C. §
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`103(a) based on U.S. Pub. No. 2005/0208210 to Kuta (“Kuta”) in view of U.S.
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`Patent No. 6,106,648 to Butt (“Butt”) and (2) claims 1 to 24 under 35 U.S.C. §
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`103(a) based on Kuta in view of the Eastwood ShopTalk Web Site (“Eastwood”).
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`1 The Response does not include a statement of material facts. Accordingly, no
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`response is due herein pursuant to 37 C.F.R. §42.23(a), and no facts are admitted.
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`1
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`On July 1, 2013, PO filed the Response and a Motion to Amend.
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`B. CLAIM CONSTRUCTION
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`The prior art discloses all the steps of all the claims of the ’364 Patent. PO
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`is forced to argue exceedingly narrow constructions that seek to import limitations
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`PO believes are not in the prior art. The only prosecution arguments relating to
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`claim scope deal with removing lamps from vehicles (Petition, 6-8), so the intrinsic
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`record does not support PO’s proposed narrowing constructions. PO appears to
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`concede that its alleged differences exist only if PO wins on claim construction, as
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`PO does not address the claims under the Board’s plain meaning.
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`PO first proposes to narrow “removing” to require fully removing a clear
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`coat finish. (Response, 13). However, PO does not identify any legitimate reason
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`to narrow the claims beyond their plain language, which does not require “fully.”
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`PO next argues that “evening the lamp surface” should be narrowed to
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`“smoothing out the lamp surface to minimize any troughs created through the
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`removal of damage.” (Response, 15). The underlined language has no antecedent
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`basis in the claims, and PO has provided no reason that “evening the lamp surface”
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`needs to be construed as “smoothing out the lamp surface.”
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`PO last seeks to narrow “statically neutralizing,” arguing that “logic
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`dictates” that it must occur after the grinding and buffing steps. (Response, 17-18).
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`However, PO does not explain why it would not be reasonable to statically
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`2
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`neutralize after grinding but before buffing. Mr. Bell, on whose opinion PO’s
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`claim construction turns, has no experience in plastic lamp refurbishing. (Ex.
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`1018, 41:22-42:6). Further, PO’s construction cannot reflect the broadest
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`reasonable interpretation, as it is narrower than PO’s proposed amendments, which
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`require static neutralization after grinding but either before or after buffing (claims
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`37 and 37’) or after evening but before or after grinding or buffing (claim 37’’).
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`Finally, PO’s arguments are undermined by its Motion to Amend, which
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`seeks to add each limitation the Response asserts must necessarily be present.
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`C.
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`INVALIDITY BASED ON THE PRIOR ART
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`The Board correctly recognized the at-issue grounds involve performing
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`Kuta’s process on a lamp removed from a vehicle. (Decision, 8). At least because
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`PO’s expert concedes this trivial modification to Kuta is “common sense” (Ex.
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`1018, 41:5-14), PO’s arguments about the impropriety of the Board’s findings with
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`regard to “removal” are of no moment. (Response, 28-30). Applying this common
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`sense, the prior art renders the claims of the ’364 Patent obvious.
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`1. Kuta’s Process on a Removed Lamp Fully Removes the Clear Coat
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`Despite the plain claim language, PO argues Kuta does not disclose “fully”
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`removing a clear coat. Mr. Katsamberis’ testimony undermines this position:
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`Q. Let's assume for a second that the system of Kuta was used to refinish a
`lamp that had been removed from a car; okay? Can you assume that?
`A. Yes.
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`3
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`Q. Would the limited access corners which are labeled as Number 14 in
`Kuta still exist if that was the case?
`A. Probably not.
`Q. Why not?
`A. Because the car body will not be there to limit your access to the corners.
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`(Ex. 1017, 102:4-15). This is unsurprising; Kuta discloses using the same 320 grit
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`sandpaper as the ’364 Patent to remove a clear coat. (Compare Ex. 1001 at 2:63-
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`65 with Ex. 1002 at ¶23). Mr. Katsamberis testified about the trivial nature of this
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`step, saying during his time at Visteon (prior to the filing of the ’364 Patent) he
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`knew “it would be possible to remove a clear coat on a headlamp and replace it
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`with a fresh version of the same clear coat.” (Ex. 1017, 129:18-130:9).
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`2. Kuta Discloses “Evening the Lamp Surface”
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`The ’364 Patent discloses sanding with 320 grit sandpaper to achieve
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`“evening.” (Ex. 1001, 3:21-24). Paragraph 23 of Kuta, cited in the Petition, is
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`nearly identical: “a fine sanding disc 20…of approximately 320 grit, is placed into
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`contact with one of the lenses and moved continuously, over the exterior surface
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`12 while applying an oscillating motion to disc 20…” (Ex. 1002, ¶23). Thus, to
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`the extent the ’364 Patent discloses “evening,” Kuta also discloses “evening.”
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`Kuta also teaches that mounting sand paper to a foam pad “is critical for smoothing
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`lens 10,” in satisfaction of PO’s additional claim limitations. (Ex. 1002, ¶ 28).
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`PO states that the only disclosure in Kuta regarding when to stop sanding is
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`4
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`when “the flushing water 30 turns clear.” (Response, 26). This is untrue. Kuta
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`discloses that its process is performed “to return the lenses 10 to like-new
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`condition,” which equates to PO’s concocted “OEM condition.” (Ex. 1002, ¶23).
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`In the event evening is construed as being performed until the lamp has its original
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`shape, Kuta’s disclosure of “like-new condition” teaches this limitation.
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`3. Those of Skill Understand Kuta as Disclosing “Spraying”
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`The Petition cited paragraph 26 of Kuta as disclosing “spraying”:
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`After preparing the lens 10, preferably, a scratch resistant coating is applied.
`This is a UV curable coating for hard overcoating onto polished lens, and
`preferably is, Tomco Finishing Products, Tomco Armor Coat No-Bake
`Scratch Coat. (Ex. 1002, ¶ 26).
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`Citing Mr. Katsamberis, PO argues that “the application of this type of UV curable
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`coating would be done by brushing or wiping.” (Response, 27). However, Mr.
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`Katsamberis is “not familiar with this product and [is] not aware that it is currently
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`available.” (Ex. 2007, ¶ 37). He also conceded the Tomco product is preferable,
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`but not the only clear coat that could be used. (Ex. 1017, 113:22-114:6). Mr.
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`Katsamberis testified that spraying is and was one of many known ways to apply
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`clear coat to lamps. (Ex. 1017, 31:10-19). He testified about AS 4000, which is a
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`spray-on clear coat for headlamps that he worked with at GE in the 90’s. (Ex.
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`1017, 20:6-22:14). Thus, Kuta teaches (and PO’s experts confirmed) that one of
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`skill would have known to use sprayable clear coats, such as AS 4000, to apply a
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`5
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`hard clear coat to a lamp. Accordingly, the art of record discloses this claim
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`limitation to a person of skill in the art. Even if Kuta is directed to PO’s
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`“consumer retail market,” this analysis applies because members of that market
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`can spray coat a lamp. (Ex. 1017, 123:24-124:3).
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`PO argues that Kuta’s failure to disclose masking means it cannot disclose a
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`spray-on clear coat. (Response, 27). Its expert, however, testified that the decision
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`to mask was known and depends on the part to be coated. (Ex. 1017, 121:1-20).
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`Petitioner notes that Cole (charted in the Petition) also discloses spraying as
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`one of several ways to apply replacement clear coats. (Ex. 1008, 6:9-20). To the
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`extent PO is now inexplicably arguing well-known spraying techniques were not
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`known to one of skill reading Kuta, Cole substantially undermines that assertion.
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`4. PO’s Distinction between “OEM” and “Consumer” Markets
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`PO argues that the art before the Board is directed to the “consumer retail
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`market” while the ’364 Patent is directed to the “OEM refurbished parts market.”
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`(See, e.g., Response, 29). When PO prepared the ’364 Patent, however, it defined
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`the “Field of the Invention” as “refurbishing of lamp surfaces” and “removing
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`surface wear and scratches in the lamp surface to return the lamp surface as near as
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`possible to its original optical quality.” (Ex. 1001, 1:8-11). It did not draw the
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`market distinction it now seeks to impose. In a section titled “Description of the
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`Related Art,” PO spent half a column describing App. No. 10/084,435: the at-issue
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`Kuta reference. (Ex. 1001, 1:25-56). This characterization of Kuta as “Related
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`Art” was lost on Mr. Bell, whose declaration is the cornerstone of PO’s market
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`theory. (Ex. 1018, 66:21-68:1).2 Mr. Bell’s testimony is even more dubious given
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`his concession that he is not an expert in the retail market (Ex. 1018, 64:6-7) and in
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`fact has no experience refurbishing plastic headlamps. (Ex. 1018, 41:22-42:6).
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`Mr. Bell’s “line of gradation” from OEM to consumer, and the inability to place
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`the ’364 Patent on that line, further undermines the position. (Ex. 1018, 73:14-22).
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`The ’364 Patent does not use the phrase “original equipment manufacturer”
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`or “OEM.” (Ex. 1018, 37:10-12). While the ’364 Patent recites that a goal is to
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`“return the lamp surface as near as possible to its original optical quality,” it does
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`not quantify “near as possible.” (Ex. 1001, 1:11-12). It also recites achieving
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`“optical characteristics which are very similar to those of the original equipment
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`lamp assembly,” but fails to describe how to judge “very similar.” (Ex. 1001,
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`4:21-23). Thus, it is unsurprising that the ’364 Patent does not cite any “OEM”
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`standards that allegedly support PO’s argument. (See, e.g., Response, 29; Ex.
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`1019, 123:5-9).
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`Even more troubling is the fact that the ’364 Patent claims are devoid of any
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`language supporting this asserted market distinction. The claims certainly do not
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`say “OEM,” and also do not contain a single recitation of the quality of the lamp
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`2 Mr. Rappaport conceded that Kuta is analogous art. (Ex. 1019, 89:14-22).
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`7
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`that results from the process being applied. (Ex. 1019, 58:11-14). Indeed, Mr.
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`Katsamberis testified that the steps of claim 1 could be performed correctly, and
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`depending on the particular clear coat applied, the resulting lamp may or may not
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`be OEM quality. (Ex. 1017, 96:19-98:1). PO’s false distinction is further
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`weakened by Petitioner’s interrogatory response from the district court case: “10%
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`- 15% of the lenses repaired by LKQ are deemed not to be acceptable for insurance
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`purposes…” (Ex. 2006, p. 12). The evidence does not support PO’s theory that
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`the claims per se result in an insurance quality part that meets “OEM” standards.
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`PO’s failure to argue this distinction at all during prosecution undermines its
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`assertion that the claims per se require the argued OEM distinction. Just four days
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`before the ’364 Patent issued, PO submitted an IDS that was not considered. (Ex.
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`1021). The IDS cited seven references, including the Zuk reference. (Ex. 1021,
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`see Ex. 1022). PO’s only argument about any of the seven references was that Zuk
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`“does not, however, mention removal lamps from a motor vehicle to repair
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`same…” (Ex. 1021). Even in PO’s last comments to the Patent Office, four days
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`before issuance, PO failed to raise the distinction it now says is clearly present.
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`Finally, PO has not shown that the prior art does not result in a lamp whose
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`optical quality approximates original equipment quality.3 Kuta discloses that its
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`process “restores optical clarity and light output to the level of new lenses.” (Ex.
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`3 Mr. Rappaport believes this inquiry is somehow irrelevant. (Ex. 1019, 52:8-17).
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`8
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`1002, ¶ 10). Kuta also teaches that its goal is to return lamps to “like-new
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`condition without the relatively high cost of replacing them.” (Ex. 1002, ¶23; see
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`also Ex. 1026, 1, 3; Ex. 1022, Abstract).4 Both Mr. Katsamberis and Mr. Bell
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`opined that this “like new” language is synonymous with the original equipment
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`quality PO seeks to inject into the claims. (Ex. 1017, 90:17-91:2; see also Ex.
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`1018, 59:24-60:1).
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`5. “Statically Neutralizing”
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`With regard to “statically neutralizing” in claim 13, PO concedes the water
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`flush of Kuta statically neutralizes, and only takes issue with the timing of Kuta’s
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`static neutralization. (Response, 32). If the Board declines to adopt PO’s proposed
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`narrowing construction, this argument is moot.
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`Even if PO’s narrowing construction is adopted, Mr. Katsamberis’ testimony
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`that “[t]o obtain proper adherence, the lens surface must be clean of any surface
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`contamination when the clear coating is applied” is fatal to PO’s position. (Ex.
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`2007, ¶21). A person of skill reading Kuta would have understood that applying
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`clear coat “[a]fter preparing the lens” teaches statically neutralizing if buffing
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`created “surface contamination.” (Ex. 1002, ¶26; see also Ex. 1018, 86:16-87:5;
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`Ex. 1008, 3:13-17, 3:54-61; 6:39-46).
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`4 PO’s unsupported proposed constructions were not reasonably foreseeable. New
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`prior art, therefore, can be considered in view of PO’s proposed constructions.
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`6. Curing with Infrared Radiation
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`With regard to claims 11 and 15, PO does not dispute that Magni 700 is an
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`infrared curable coating product. (Ex. 1001, 4:14-17). PO argues that Magni 700
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`is not admitted prior art. (Response, 33-35). The tense of the ’364 Patent is
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`enough to undermine PO’s argument—it states that the disclosed clear coat “is sold
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`by assignee under the trademark Magni 700.” (Ex. 1001, 4:14). PO’s expert
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`confirmed that Magni 700 was a clear coat with the same chemistry as prior art AS
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`4000. (Ex. 1017, 18:23-19:2). Accordingly, a person of skill reading Kuta would
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`have understood that known infrared curable coatings such as Magni 700 could
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`have been used as the disclosed clear coat. (Ex. 1002, ¶26).
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`7. Curing by Heating in an Oven
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`PO’s expert admitted that UV light sources impart heat on the coating “to
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`some extent.” (Ex. 1017, 117:17-19). Kuta’s disclosure of a UV hardenable
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`coating thus discloses the use of heat to cure the coat. (Ex. 1002, ¶26). PO’s
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`expert also testified that the prior art AS 4000 product “is a thermally cured
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`coating.” (Ex. 1017, 22:8-14). A person of skill reading Kuta would have
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`understood that coatings such as Magni 700 or AS 4000, which are both heat
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`curable, could have been used as the disclosed clear coat. (Ex. 1002, ¶26). Thus,
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`Kuta teaches using clear coats that can be cured by heating in an oven.
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`D.
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`PO’S EXPERT TESTIMONY IS OF LITTLE PROBATIVE VALUE
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`PO admonishes Petitioner for failing to provide expert testimony with regard
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`to the disclosure of the prior art in this proceeding. (See, e.g., Response, 6, 21, 25,
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`27, 31, 34, 36). Petitioner believes that the Board is more than capable of
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`comparing claim language to prior art without the need for expert testimony.
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`To the extent that expert witness testimony is considered, Mr. Katsamberis
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`testified at length about prior art clear coats, such as the AS 4000 coating available
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`in the 1990’s. (Ex. 1017, 20:6-25:14). As described above, this testimony further
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`demonstrates the unpatentability of the claims of the ’364 Patent in light of Kuta.
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`Mr. Bell’s testimony should be entitled to no weight. He admits that he has
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`no experience with polycarbonate headlamps. (Ex. 1018, 41:22-42:6). He also
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`lacks experience in the OEM refurbished parts market—his only experience is “as
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`a consumer.” (Ex. 1018, 40:10-12). Further, Mr. Bell admitted that—less than 24
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`hours before his deposition—he realized that “there’s some things [in the claims]
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`that are too general that need to be narrowed down and more specific.” (Ex. 1018,
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`91:20-21). PO’s position turns on the opinion of an expert who is skeptical of the
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`patentability of the claims. (Ex. 1018, 90:19-92:22). This cannot be ignored.
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`Mr. Rappaport’s testimony also should be given no weight. To the extent he
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`offered a technical opinion (which is unclear, see Ex. 1019, 40:11), he is not
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`qualified as an expert and his testimony should not be considered. (Ex. 1019,
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`34:23-25; 49:25-50:5). To the extent he opined about the quality of examination
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`and what the examiner was thinking, that testimony improperly relates to patent
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`office practice and procedure. (See, e.g., Ex. 1019, 67:3-69:1). These aspects will
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`be addressed in detail in a Motion to Exclude at the appropriate time. Finally, Mr.
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`Rappaport’s secondary considerations opinion is cursory and unsupported by the
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`evidence, as discussed below. (See generally Ex. 1019, 81:6-82:25; 99:8-105:25).
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`E.
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`PO’S SECONDARY CONSIDERATION ARGUMENTS
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`“[W]here the inventions represented no more than the ‘predictable use of
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`prior art elements according to their established functions,’ the secondary
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`considerations are inadequate to establish nonobviousness as a matter of law.”
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`Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (internal citations
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`omitted). Given the strong prima facie case of obviousness and the fact that the
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`claims are the predictable use of prior art elements according to established
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`functions, secondary consideration cannot rescue the ’364 Patent.
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`1. Allegations of Copying
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`PO argues LKQ “did not copy a prior art process…” (Response, 38). This
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`is wrong; PO’s arguments deal with how thoroughly known steps are performed.
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`PO also fails to mention that LKQ purchased a company, Northern Lights,
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`responsible for LKQ’s current headlamp refurbishing operation. (Ex. 1023, 58:21-
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`24). LKQ’s headlamp refurbishing is not traceable to Mr. Paperi at all; PO’s
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`expert has no basis for this conclusion. (Ex. 1019, 98:4-6). Nor could LKQ have
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`copied PO’s process because PO did not disclose its critical step to LKQ. PO’s
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`expert conceded that the clear coating used determines whether or not a
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`refurbished headlamp is OEM quality—the critical distinction under PO’s theory.
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`(Ex. 1017, 97:20-98:6). Yet Mr. Sandau testified that despite repeated requests,
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`Mr. Paperi would not tell LKQ the clear coating he used to refurbish headlamps.
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`(Ex. 2021, 54:19-55:2). Accordingly, LKQ cannot have copied PO’s process.
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`Despite the alleged copying, PO fails to offer a declaration of Mr. Paperi,
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`one of the inventors of the ’364 Patent and a principal of PO. Perhaps PO did not
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`wish to subject Mr. Paperi to cross examination; Mr. Sandau testified that with Mr.
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`Paperi, “[y]ou don’t know [if] what you’re hearing is really fact or not.” (Ex.
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`2021, 58:21-23). Or perhaps Mr. Paperi does not actually believe LKQ copied; he
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`shared the bulk of his process without asking Mr. Sandau to sign a confidentiality
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`agreement, yet concealed the critical coating. (Ex. 2021, 46:21-47:2). Whatever
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`the reason, the Board should note the absence of testimony from Mr. Paperi.
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`Finally, “more than the mere fact of copying is necessary to make that action
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`significant because copying may be attributable to other factors…” Cable Electric
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`Products, Inc. v. Genmark, Inc., 770 F.2d 1015 (Fed. Cir. 1985); see also MPEP
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`716.06. “Copying…has limited probative value in the absence of evidence of
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`failed development efforts…” Friskit, Inc. v. Real Networks, Inc., 306 Fed. Appx.
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`610, 617 (Fed. Cir. 2009). PO has not shown failed development, so even if
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`Case IPR2013-00020; Petitioner’s Reply to Patent Owner’s Response
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`copying is found, it is not a secondary consideration of nonobviousness.
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`2. PO’s Commercial Success Arguments
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`PO alleges that LKQ’s success has a nexus to the patentable features of the
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`’364 Patent, as is required to show secondary considerations of non-obviousness.
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`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F. 3d 1356, 1363-64 (Fed.
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`Cir. 2012). The evidence does not support such a nexus.
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`Interrogatory Response No. 1, which PO relies on, indicates that “10% -
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`15% of the lenses repaired by LKQ are deemed not to be acceptable for insurance
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`purposes…” (Ex. 2006, 12). Mr. Bell also conceded that the starting condition of
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`a lamp determines whether it needs refurbishing at all. (Ex. 1018, 73:14-19).
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`Thus, not all LKQ sales are because its process results in insurance quality lamps.
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`PO is also conspicuously silent on the portion of the LKQ process “to repair
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`the backs of the housings of the head lamps, and specifically to repair tabs and
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`other features that may have broken off the housing of the head lamps.” (Ex. 2006,
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`9-10). This patented process (U.S. Patent No. 8,136,971, Ex. 1020), of which PO’s
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`expert was unaware (Ex. 1019, 104:11-17), requires that LKQ creates and
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`maintains a supply of silicon molds of all the tabs and other features of any lamp
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`from any automobile make and model. (Ex. 2006, 10). This substantial housing
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`refurbishing effort occurs before any lamp surface refurbishing, and undermines
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`PO’s conclusion that LKQ’s success has a nexus to lamp surface refurbishing.
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`PO is also silent on its own commercial failings. Mr. Rappaport testified
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`that PO’s financial numbers are relatively small, and thus not worth including.
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`(Ex. 1019, 99:8-22; 100:20-24). This indicates that LKQ’s commercial success is
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`due to something other than the process described in the ’364 Patent.
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`Finally, PO fails to acknowledge LKQ’s vast network of salvage yards and
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`other sources of lamp cores. (Ex. 2006, 9; Ex. 2021, 24:13-18; Ex. 1019, 99:23-
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`100:14). It fails to acknowledge the substantial costs associated with refurbishing
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`lamps, including the cost to obtain lamp cores. (Ex. 1019, 103:19-22). PO seeks
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`to awe the Board with the dollar amount of LKQ’s sales (Ex. 1019, 103:10-18), but
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`does not acknowledge the other business factors that undermine its analysis.
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`III. CONCLUSION
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`Petitioner hereby requests cancellation of claims 1 to 24 of the ’364 Patent.
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`By:
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`Respectfully submitted by
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`K&L Gates LLP,
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` /Alan L. Barry/
`Reg. No. 30,819
`Customer No. 24573
`Date: September 30, 2013
`e-mail: alan.barry@klgates.com
`telephone number: 312-807-4438
`fax number: 312-827-8196
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`A copy of this PETITIONER’S REPLY TO PATENT OWNER’S
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`RESPONSE has been served to counsel for the Patent Owner at the following
`electronic mail addresses, pursuant to an agreement with the Patent Owner, on this
`30th Day of September, 2013:
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` /Alan L. Barry/
`Alan L. Barry
`K&L Gates LLP
`e-mail: alan.barry@klgates.com
`telephone number: 312-807-4438
`fax number: 312-827-8196
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`Matthew Cutler – mcutler@hdp.com
`Bryan Wheelock – bwheelock@hdp.com
`Douglas Robinson – drobinson@hdp.com
`Karen Bearley – kbearley@hdp.com
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`By:
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