Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`Patent No. US RE43,707 E
`Page 1 of 13
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`EIZO CORPORATION
`Petitioner
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`v.
`
`BARCO N.V.
`Patent Owner
`___________
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`Case IPR2014-00778
`Patent No. US RE43,707 E
`___________
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`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
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`Attorney Docket No. CA0006P2
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`Patent No. US RE43,707 E
`Page 1 of 13
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`EIZO CORPORATION
`Petitioner
`
`v.
`
`BARCO N.V.
`Patent Owner
`___________
`
`Case IPR2014-00778
`Patent No. US RE43,707 E
`___________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
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`
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`I.
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`INTRODUCTION
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`Patent No. US RE43,707 E
`Page 2 of 13
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`Petitioner’s Motion for Joinder filed July 21, 2014 seeks to join this
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`proceeding to Case IPR2014-00358. Patent Owner Barco N.V. respectfully
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`submits its opposition to that motion, said opposition being compliant with the
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`time limits of Rule 42.25(a)(1) and the page limits of Rule 42.24(b)(3).
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`Rule 42.1 states that Part 42 “shall be construed to secure the just, speedy,
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`and inexpensive resolution of every proceeding.”
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`Rule 42.20(c) reads as follows: “Burden of proof. The moving party has the
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`burden of proof to establish that it is entitled to the requested relief.”
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`The Office has stated that a motion for joinder “should address the reasons
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`why joinder is appropriate, identify any new ground(s) of unpatentability asserted
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`in the petition, and explain what impact (if any) joinder would have on the
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`schedule for the existing review.” Frequently Asked Question (“FAQ”) H5 on the
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`Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`II. RESPONSE TO ALLEGED MATERIAL FACTS
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`Alleged fact 2 is denied as to its representations of the Court’s reasons for
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`staying the litigation pending resolution of the reissue proceedings. Those reasons
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`are set forth in the Court’s own words in the two-page order of Exhibit 2001. In
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`this order, the Court specifically concluded “that a stay would not unduly prejudice
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`Patent No. US RE43,707 E
`Page 3 of 13
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`the plaintiffs” and “would simplify the issues in this case.” The Court also noted
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`“that no trial date has been set” and that “the plaintiffs have broadened their reissue
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`application since filing its complaint.”
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`Alleged fact 6 is denied. Public Law 112-274 (the “Technical Corrections
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`Act”) became effective on January 14, 2013, such that inter partes review of the
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`‘707 Patent was available to the Petitioner by statute more than five months before
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`the July 2, 2013 date it argues.
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`Alleged fact 7 is denied. An inter partes procedure on the ‘707 Patent -- the
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`inter partes reexamination requested by the Petitioner itself -- was already in
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`progress when the Petitioner filed its request for ex parte reexamination.
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`Alleged fact 8 is denied. All claims that were asserted to be infringed in the
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`original complaint, which was served on the Petitioner on October 7, 2011,
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`continued unamended in the ‘707 Patent. Under Section 252, the civil action
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`continued on those claims of the ‘707 Patent, unaffected by the surrender and
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`reissue.
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`Alleged fact 15 is denied as to its representations of the Petitioner’s reasons
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`for its actions and omissions, and also for the reasons set forth in the denial of
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`alleged fact 8.
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`Patent No. US RE43,707 E
`Page 4 of 13
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`Alleged fact 20 is denied. In fact, claims 64 and 65 were among the claims
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`challenged by the Petitioner in its first petition.
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`III. STATEMENT OF ADDITIONAL MATERIAL FACTS
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`1.
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`The Technical Corrections Act was enacted and became effective on
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`January 14, 2013: less than three weeks after the Petitioner filed its request for ex
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`parte reexamination.
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`2.
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`Even before the Petitioner filed its request for ex parte reexamination,
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`it was common knowledge that a technical amendment to address the so-called
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`“dead zone” was about to be enacted. See, e.g., Exhibits 2002, 2003.
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`3.
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`Patent Owner’s Amended Complaint was deemed filed as of January
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`17, 2013 and was served on the Petitioner electronically via the District Court’s
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`CM/ECF (Case Management / Electronic Case Filing) system. Exhibits 2004,
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`2005.
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`4.
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`The Technical Corrections Act was already in effect when the
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`amended complaint was served on the Petitioner on January 17, 2013.
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`5.
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`The Office’s final rules to implement the Technical Corrections Act
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`became effective on March 25, 2013: less than one week after the Petitioner’s
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`request for ex parte reexamination was granted, and nearly six months before a
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`Patent No. US RE43,707 E
`Page 5 of 13
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`Final Office Action was issued in that proceeding.
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`6. More than one year after the Technical Corrections Act became
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`effective on January 14, 2013, the Petitioner filed its first petition on January 17,
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`2014.
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`7.
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`The Petitioner never requested a stay of the ex parte reexamination it
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`had initiated in the ‘707 Patent.
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`8.
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`The Petitioner’s second petition was filed on May 20, 2014: more than
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`sixteen months after the amended complaint was served on the Petitioner.
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`IV. RESPONSE TO PETITIONER’S ARGUMENTS
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`A.
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`EFFICIENCY COMPELS DENIAL OF THE MOTION
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`On page 8 of its motion, the Petitioner argues that joinder is proper because
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`“it would be a waste of resources to have separate proceedings handled by different
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`panels to conduct the review of the two Petitions.” The Patent Owner respectfully
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`notes that this statement is misleading at best. In fact, there cannot be a separate
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`review of the second petition, at least because it was filed more than one year after
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`service of the amended complaint on the Petitioner. Standing alone, this petition is
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`time-barred. In truth, therefore, the most efficient solution would clearly be to
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`deny the Petitioner’s motion, as this course would save the other parties from ever
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`Patent No. US RE43,707 E
`Page 6 of 13
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`having to review the second petition.
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`At least because the Petitioner’s argument is based on a representation which
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`is false, the Patent Owner respectfully submits that the Petitioner fails to sustain its
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`burden of proving that it is entitled to the requested relief.
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`B.
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`THE MOTION FAILS TO IDENTIFY ANY OF THE NEW
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`GROUNDS ASSERTED IN THE PETITION
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`The Petitioner’s motion fails to identify a single one of the new grounds
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`asserted in its second petition, arguing instead that “the number of issues raised by
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`the joinder of the Petitions will not be substantially increased” (p. 8). In fact, this
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`second petition raises numerous substantive issues that are not before the Board in
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`Case IPR2014-00358.
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`The trial in Case IPR2014-00358 involves four claims of the ’707 Patent
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`(claims 101-104), a single ground of unpatentability, and two prior art references.
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`IPR2014-00358, Paper 11 at 31. In its second petition, Petitioner (1) challenges
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`thirty-five new claims (claims 64-66, 68-76, 80, 85-88, 91, 98-100, and 116-129);
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`(2) asserts eleven new grounds of unpatentability; and (3) asserts nine prior art
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`references, only two of which are at issue in the existing proceeding.
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`Patent No. US RE43,707 E
`Page 7 of 13
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`Among the thirty-five newly challenged claims, only claim 100 has a
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`common antecedent to any of the four claims in Case IPR2014-00358. All thirty-
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`eight of the other newly challenged claims are independent or depend from other
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`claims not involved in Case IPR2014-00358. Further, among the nine asserted
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`prior art references, only two (Greene and Kamada) were considered previously by
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`the Board in Case IPR2014-00358. See IPR2014-00358, Paper 11 at 31.
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`The legislative history states that the elevated threshold for instituting
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`proceedings “will prevent challenges from ‘mushrooming’ after the review is
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`instituted into additional arguments employing other prior art or attacking other
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`claims.” 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011), col. 3, ll. 30-45. It is
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`clear that by increasing the number of challenged claims by nearly ten times and
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`increasing by over four times the number of prior art references to be considered,
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`the relief requested in the Petitioner’s motion would produce exactly the
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`“mushrooming” that Congress specifically intended to prevent.
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`Additionally, none of the newly challenged claims were in their present form
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`when Petitioner’s first petition was filed. Indeed, some of these claims did not
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`even exist as of that statutory bar date. By definition, every claim challenged in
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`Petitioner’s petition raises new issues that did not exist until two months after the
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`statutory bar date and which arose from a proceeding initiated by the Petitioner.
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`Patent No. US RE43,707 E
`Page 8 of 13
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`The Petitioner states that it “has been diligent in filing the Second Petition
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`and timely in filing this motion to join the First and Second Petitions” (p. 9).
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`However, the facts show that the Petitioner took nearly three months after the
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`Notice of Intent to Issue in the ex parte reexamination, and seven weeks even after
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`the Ex Parte Reexamination Certificate was issued, to file the second petition.
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`Clearly, if the Petitioner was being diligent as it argues, this delay could only have
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`been due to the large number of new issues to be addressed in the second petition.
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`Consequently, the Petitioner’s own argument establishes that joinder would be
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`inappropriate.
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`C.
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`THE PETITION AND MOTION ARE ANYTHING BUT TIMELY
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`The Petitioner’s motion states that it “has in no way unduly delayed seeking
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`inter partes review of the claims in the Second Petition” (p. 9). In fact, the
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`Petitioner delayed seeking such review for more than sixteen months, as inter
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`partes review of all claims of the ‘707 Patent was available by statute to the
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`Petitioner as of January 14, 2013. Even if only the March 25, 2013 effective date
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`of the Office’s Final Rules is considered, inter partes review of all claims of the
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`‘707 Patent had been available to the Petitioner for nearly fourteen months when it
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`finally filed its second petition.
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`Patent No. US RE43,707 E
`Page 9 of 13
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`The record shows that instead of seeking inter partes review in a timely
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`manner, the Petitioner chose to allow the ex parte reexamination it had just
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`initiated to proceed, past the Patent Owner’s initial response of May 18, 2013, past
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`the Final Office Action of September 20, 2013, and finally to its resolution, all the
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`while consuming Office resources and causing considerable expense and delay to
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`the Patent Owner. With this motion, the Petitioner now seeks to nullify the
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`outcome of that proceeding, representing to the Board that its hands were tied and
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`that it could not have acted otherwise. In fact, it was the Petitioner who requested
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`the ex parte reexamination in the first place, and it was the Petitioner who allowed
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`that proceeding to continue while it delayed its petitions for inter partes review.
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`The Patent Owner notes, for example, that the Board has been ordering stays in
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`concurrent reexaminations since at least November 6, 2012 (see, e.g., Case
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`IPR2013-00033, Order of Nov. 6, 2012) and that the Petitioner itself requested a
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`stay in the related civil action. Pet. Mat. Fact 2.
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`D.
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`THE REQUESTED RELIEF WOULD SEVERELY PREJUDICE
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`THE PATENT OWNER
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`Having subjected the Patent Owner to the expense and delay of the ex parte
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`reexamination, with this motion the Petitioner now seeks to overturn the result of
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`that proceeding and also to cause the Patent Owner to incur the considerable
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`Patent No. US RE43,707 E
`Page 10 of 13
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`additional expense and delay of a greatly expanded inter partes review proceeding.
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`The Petitioner’s argument that joinder is proper because “there is no discernible
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`prejudice to either party” (p. 7) is clearly contrary to fact.
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`As demonstrated above, the Petitioner’s motion seeks to join numerous new
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`issues that arose only because of the Petitioner’s own actions and which did not
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`even exist as of the filing date of the first petition and statutory bar date. The
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`Patent Owner respectfully submits that as a matter of justice, when a petitioner
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`initiates a reexamination, causing the patent owner considerable expense and delay
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`while consuming Office resources, it would be unconscionable to then allow that
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`petitioner to expand an existing inter partes review proceeding with an otherwise
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`time-barred petition in which the petitioner seeks to nullify the results of the
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`reexamination it requested. The resulting inequity would be especially severe in a
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`case such as this one, where the Petitioner made no attempt to stay the
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`reexamination and now seeks to increase the number of challenged claims in the
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`existing proceeding by nearly ten times.
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`E.
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`THE MOTION FAILS TO EXPLAIN THE IMPACT JOINDER
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`WOULD HAVE ON THE SCHEDULE FOR THE EXISTING REVIEW
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`Patent No. US RE43,707 E
`Page 11 of 13
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`Patent Owner Barco N.V. respectfully notes that it is now nearly seven
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`months since the petition in Case 2014-00358 was filed. In that proceeding, the
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`October 14, 2014 due date of Patent Owner’s response and motion to amend is
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`already less than two months away. Clearly, the greatly expanded relief requested
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`by the Petitioner’s motion would adversely affect the schedule of the existing
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`proceeding.
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`The Patent Owner recognizes that the time set forth in 37 CFR 42.100(c) can
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`be extended by up to six months for good cause or adjusted by the Board in the
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`case of joinder. The Patent Owner respectfully submits that by seeking a “do-
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`over” of a proceeding which was initiated by the Petitioner itself and has already
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`cost the Patent Owner considerable expense, and moreover by seeking such relief
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`for the first time months after the filing date of the first petition and statutory bar
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`date, the Petitioner’s motion fails to demonstrate any good cause.
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`The Patent Owner also respectfully notes that the concurrent stayed
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`litigation has already incurred nearly two years of delays since the ‘707 Patent
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`issued on October 2, 2012, solely because of the panopoly of post-grant
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`proceedings that have been initiated by the Petitioner.
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`Patent No. US RE43,707 E
`Page 12 of 13
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`For at least the reasons above, Patent Owner Barco N.V. respectfully
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`submits that granting the relief requested in the Petitioner’s motion would be
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`neither just, nor speedy, nor inexpensive. The Patent Owner respectfully reiterates
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`that the Petitioner bears the burden of proof to establish that it is entitled to the
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`requested relief. It is respectfully submitted that the Petitioner’s motion fails to
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`sustain that burden and should be denied.
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`The Board is hereby authorized to charge any fees or costs associated with
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`this submission to Deposit Account No. 506021.
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`Date: August 21, 2014
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`Reg. No. 41,818
`Tel. No. (703) 499-9594
`Fax No. (703) 499-9594
`Customer No. 49108
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`____/Kerry Hartman/____________
`Signature of Practitioner
`Kerry T. Hartman
`HARTMAN PATENTS PLLC
`3399 Flint Hill Pl.
`Woodbridge, VA 22192
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`Case IPR2014-00778
`Attorney Docket No. CA0006P2
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`Patent No. US RE43,707 E
`Page 13 of 13
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that a copy of this document has been
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`served in its entirety (including a copy of this certificate and copies of the five
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`exhibits referenced herein) on the Petitioner via FedEx International Priority
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`service directed to the following name and address, via electronic mail directed to
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`marcweinstein@quinnemanuel.com, and via the Patent Review Processing
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`System:
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`Marc K. Weinstein
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`Quinn Emanuel Urquhart & Sullivan LLP, NBF Hibiya Bldg., 25F,
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`1-1-7 Uchisaiwai-cho, Chiyoda-ku, Tokyo 100-0011, Japan
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`Date: August 21, 2014
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`Reg. No. 41,818
`Tel. No. (703) 499-9594
`Fax No. (703) 499-9594
`Customer No. 49108
`
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`____/Kerry Hartman/____________
`Signature of Practitioner
`Kerry T. Hartman
`HARTMAN PATENTS PLLC
`3399 Flint Hill Pl.
`Woodbridge, VA 22192
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