Paper No. 12
`Filed: October 14, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICRO MOTION, INC.
`Petitioner
`
`v.
`INVENSYS SYSTEMS, INC.
`Patent Owner
`
`Patent No. 7,571,062
`Issue Date: August 4, 2009
`Title: DIGITAL FLOWMETER
`_______________
`
`Case No. IPR2014-01409
`____________________________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION
`
` TO PETITIONER’S MOTION FOR JOINDER
`
`37 C.F.R. § 42.122(b)
`
`4842-0418-9215.2
`
`
`Filed: October 14, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICRO MOTION, INC.
`Petitioner
`
`v.
`INVENSYS SYSTEMS, INC.
`Patent Owner
`
`Patent No. 7,571,062
`Issue Date: August 4, 2009
`Title: DIGITAL FLOWMETER
`_______________
`
`Case No. IPR2014-01409
`____________________________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION
`
` TO PETITIONER’S MOTION FOR JOINDER
`
`37 C.F.R. § 42.122(b)
`
`4842-0418-9215.2
`
`
`
`Patent No. 7,571,062
`Case No. IPR2014-01409
`I. PETITIONER’S MATERIAL FACTS STAND AS ADMITTED
`
`Petitioner’s motion for joinder (Paper 3) contained a “Statement of Material
`
`Facts,” none of which were denied in Patent Owner’s opposition (Paper 10). Those
`
`facts now stand as “admitted.” 37 C.F.R. § 42.23(a). See Ariosa Diagnostics v. Isis
`
`Innovation Ltd., IPR2013-00250 (Sept. 3, 2013) (Paper 24) (granting joinder where
`
`petitioner’s facts “stand as admitted”).
`
`II. TARGET IS A MINORITY OUTLIER DECISION AND IS WRONG
`
`Patent Owner’s opposition relies exclusively on Target Corp. v. Destination
`
`Maternity Corp., IPR2014-00508 (Paper 18) (Sept. 25, 2014), which is neither
`
`“precedential” nor “informative” under the Board’s SOP 2, and therefore is not
`
`binding. While Patent Owner characterizes Target as an “expanded panel,” the two
`
`judges that were added to the original panel (consisting originally of Judges Bisk,
`
`Fitzpatrick, and Weatherly) appear to have been added precisely because of their
`
`known, contrary view on the issue. See Ariosa Diagnostics v. Isis Innovation Ltd.,
`
`IPR2012-00022 (Sept. 2, 2014) (Paper 166) (Green, J.) (holding that § 315(c)
`
`authorizes joinder between the same parties); Microsoft Corp. v. Proxyconn, Inc.,
`
`IPR2013-00109 (Feb. 25, 2013) (Paper 15) (Giannetti, J.) (same).
`
`As shown in the chart below, Target is directly contrary to at least five prior
`
`decisions, including Microsoft—a decision listing the current Vice Chief as a
`
`panelist and which the Board itself published on its webpage of “Representative
`
`4842-0418-9215.2
`
`-1-
`
`
`
`Patent No. 7,571,062
`Case No. IPR2014-01409
`Orders, Decisions, and Notices” as a “Decision granting motion for joinder.”1
`
`Indeed, Microsoft specifically noted that “the same patents and parties are involved
`
`in both proceedings” and stressed that this was “an important consideration here,
`
`because Microsoft was served with a complaint asserting infringement of the ʼ717
`
`patent more than a year before filing the second Petition.” Id. at 4. Petitioner here
`
`reasonably relied on Microsoft in its motion. Mot. 7 (citing Microsoft).
`
`Decisions Holding That “Any Person” in § 315(c) Excludes the Original Petitioner
`Target Corp. v. Destination Maternity Corp., IPR2014-00508 (Sept. 25, 2014)
`(Paper 18) (Bisk, Fitzpatrick, Weatherly, JJ.) (Green, Giannetti, JJ., dissenting)
`Decisions Holding That “Any Person” in § 315(c) Means Any Person
`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109 (Feb. 25, 2013) (Paper 15)
`(Representative Decision) (Medley, Boalick, Giannetti, JJ.)
`ABB Inc. v. Roy-G-Biv Corp., IPR2013-00286 (Aug. 9, 2013) (Paper 14)
`(Giannetti, Moore, Bisk, JJ.)
`Sony Corp. v. Yissum Res. Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-
`00327 (Sept. 24, 2013) (Paper 15) (Medley, Easthom, Arpin, JJ.)
`Samsung Elecs. Co. v. Virginia Innovation Scis., Inc., IPR2014-00557 (June 13,
`2014) (Paper 10) (Kim, McNamara, Clements, JJ.)
`Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022 (Sept. 2, 2014) (Paper
`166) (Green, Prats, Robertson, JJ.)
`
`The Target decision is wrong, moreover, because it ignores the plain language
`
`of 35 U.S.C. § 315(c) and effectively rewrites it to read:
`
`If the Director institutes an inter partes review, the Director, in his or her
`discretion, may join as a new and different party to that inter partes
`
`
` http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp
`
`1
`
`4842-0418-9215.2
`
`-2-
`
`
`
`Patent No. 7,571,062
`Case No. IPR2014-01409
`review any a person other than the first petitioner who properly files a
`petition under section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes review
`under section 314.
`
`35 U.S.C. § 315(c) (strikethrough and underlined text added).
`
`The legislative history that Target relies on is in no way limiting. It states: “The
`
`Director may allow other petitioners to join an inter partes or post-grant review.”
`
`H.R. REP. NO. 112-98, pt.1, at 76 (2011). First, this statement does not say “only
`
`allow”; nor does it say “different petitioners.” Second, because an IPR operates on
`
`a ground-by-ground, claim-by-claim basis, a “person” who files two different
`
`petitions at different times against the same patent is a “petitioner” (and “party”) in
`
`the first IPR and is also a “petitioner” (and “party”) in the second IPR. Thus,
`
`joinder of multiple IPR “petitioners” (or “parties”) is both logical and semantically
`
`sound, even if the petitions were filed by the same “person.”
`
`As the Supreme Court has noted, “the word ‘any’ has an expansive meaning,”
`
`and where, as here, “Congress did not add any language limiting the breadth of that
`
`word,” it “must [be] read” literally. United States v. Gonzales, 520 U.S. 1, 5 (1997)
`
`(emphasis added). Thus, “any person” must be read to include the first petitioner.
`
`4842-0418-9215.2
`
`-3-
`
`
`
`Patent No. 7,571,062
`Case No. IPR2014-01409
`III. THE PETITION RAISES A NEW COMBINATION OF PRIOR ART
`
`Contrary to Patent Owner’s argument that the petition should be denied under
`
`§ 325(d), Petitioner has explained in its petition why it should not. Pet. 49-50.
`
`Indeed, Petitioner has been careful to avoid § 325(d) by not reasserting the same
`
`arguments or grounds of rejection (Pet. 49-50; Mot. 4-5), but has also taken care to
`
`ensure efficient joinder due to a “substantial overlap” of issues, prior art, and
`
`declarants (Mot. 7-11), all of which the Board views favorably on a motion for
`
`joinder. See Microsoft, at 4 (granting joinder where there was an “overlap in the
`
`cited prior art” and “declarants”); ABB, at 3; Sony, at 5; Ariosa, at 21.
`
`IV. GOOD CAUSE CONTINUES TO EXIST TO GRANT JOINDER
`
`Contrary to Patent Owner’s “harassment” argument (Opp. 11), it was Patent
`
`Owner who sued Petitioner on seven patents, thus necessitating these IPR petitions.
`
`Moreover, the instituted ’393 IPR already involves the ’062 patent’s two
`
`independent claims (claims 1 and 40) in view of Romano and Kolatay, separately;
`
`while the ’1409 IPR asserts the combination of Romano and Kolatay together
`
`against dependent claims 12, 23-25, 29, 36 and 43. (Mot. ¶¶ 4, 9-10.) As the Board
`
`recognized in Samsung in granting joinder, there is a “strong[] … public interest in
`
`having consistency of outcome concerning similar sets of claimed subject matter
`
`and prior art.” Samsung, at 18 (emphasis added). The same holds true here, where
`
`4842-0418-9215.2
`
`-4-
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`
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`Patent No. 7,571,062
`Case No. IPR2014-01409
`similar sets of claimed subject matter have been found to be likely unpatentable
`
`over similar prior art (Romano and Kolatay, respectively). (Mot. ¶¶ 4, 9-10).
`
`Likewise, the fact that only a “minimal additional amount of work [would be]
`
`required on the part of Patent Owner to address claims” in the ’1409 IPR is
`
`evidenced by Patent Owner’s own opposition, which relies on large portions of its
`
`own Vipperman declaration submitted in IPR2013-00170 involving the ’136
`
`patent. Samsung, at 18; Opp. 10 (citing Ex. 2001, ¶¶ 60-93, to argue that “both
`
`Kalotay and Romano disclose that their microprocessors use only the left sensor”).
`
`Also, Petitioner has offered to adopt the same schedule adjustments as those in
`
`Ariosa (Paper 37), including a 90-day adjustment to Due Date 1 (Mot. 12), which
`
`would make Patent Owner’s response and motion to amend in the ’1409 IPR due
`
`on January 8, 2015. An adjustment of “6 additional weeks” for Due Date 7 (Mot.
`
`12) would set the oral hearing date in the joined ’390, ’392, ’393, and ’1409 IPRs
`
`on April 24, 2015. No adjustment would be needed for the final written decision,
`
`due on August 4, 2015, which can still be extended due to joinder.
`
`Finally, the deposition of Dr. Sidman in the ’1409 IPR can be scheduled at the
`
`same time his reply depositions take place in related IPR2014-00167, -00170, -
`
`00178, -00179, which, as was ordered in Samsung, may take place “at a location
`
`convenient to counsel for Patent Owner” if joinder is granted. Samsung, at 18.
`
`Dated: October 14, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`/Andrew S. Baluch /
`Counsel for Petitioner
`
`4842-0418-9215.2
`
`-5-
`
`
`
`Patent No. 7,571,062
`Case No. IPR2014-01409
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a copy of the foregoing PETITIONER’S
`
`REPLY TO PATENT OWNER’S OPPOSITION TO PETITIONER’S
`
`MOTION FOR JOINDER was served on counsel of record on October 14, 2014,
`
`by filing this document through the Patent Review Processing System as well as
`
`delivering a copy via email to the counsel of record for the Petitioner at the
`
`following addresses:
`
`
`jeffrey.johnson@dlapiper.com
`Invensys_Micro_IPR@dlapiper.com
`
`
`
`Date: October 14, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Nora L. Luersen/
`Nora L. Luersen
`Foley & Lardner LLP
`
`
`
`4842-0418-9215.2
`
`-6-
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