Paper No. 13
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`MICRO MOTION, INC.
`Petitioner
`v.
`
`INVENSYS SYSTEMS, INC.
`Patent Owner
`
`_________________________
`
`CASE: IPR2014-01409
`Patent No. 7,571,062
`_________________________
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`EAST\87453739.2
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`MICRO MOTION, INC.
`Petitioner
`v.
`
`INVENSYS SYSTEMS, INC.
`Patent Owner
`
`_________________________
`
`CASE: IPR2014-01409
`Patent No. 7,571,062
`_________________________
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`EAST\87453739.2
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`
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`I.
`
`
`
`INTRODUCTION
`
`MicroMotion’s “second bite at the apple” petition in this Inter Partes review
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`(the “Second Petition”) should be denied because it is time-barred under 35 U.S.C.
`
`§ 315(b) under the rationale of the Target opinion. Even if not time barred, the
`
`Board should exercise its discretion to deny the Second Petition because (1)
`
`MicroMotion has failed to explain why the grounds of unpatentability asserted in
`
`the Second Petition could not have been asserted in Micro Motion’s petition for the
`
`’393 IPR (the “First Petition”); (2) granting the Second Petition will significantly
`
`increase the complexity, time and cost of the ’393 IPR; (3) joining this petition to
`
`the ’393 IPR, without which the Second Petition cannot be granted, will
`
`significantly impact the schedule of the ’393 IPR; and (4) the Board has previously
`
`rejected essentially the same challenge raised in the Second Petition.
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`II. ARGUMENT
`
`
`
`
`
`A.
`
`35 U.S.C. § 315(b) Bars the Second Petition
`
`Micro Motion admits that it was served with a complaint asserting
`
`infringement of the ’062 patent more than one year prior to the filing of the
`
`Petition. Paper No. 3 at 7. Micro Motion further admits that its Second Petition is
`
`therefore barred under 35 U.S.C. § 315(b) absent joinder with IPR2014-00393,
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`which is also directed toward the ’062 patent. Id. However, the joinder statute, 35
`
`U.S.C. § 315(c), precludes joinder because it does not allow joinder of an existing
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`EAST\87453739. 2
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`1
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`party and Petitioner is already a party to IPR2014-00393. Target Corp. v.
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`Destination Maternity Corp., IPR2014-00508, Paper No. 18 (the Target Decision)
`
`at 7.
`
`
`
`In Micro Motion’s Reply on the Motion for Joinder (Paper No. 12 at 2-3),
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`Micro Motion asserts that the Target decision is wrong because that decision
`
`rewrites the plain language of 35 U.S.C. § 315(c), which states:
`
`If the Director institutes an inter partes review, the Director, in
`
`his or her discretion, may join as a party to that inter partes review
`any person 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.
`(Emphasis added).
`Micro Motion cannot be joined as a party to IPR2014-00393 because it is
`
`
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`already a party to that IPR. The plain language of the statute therefore precludes
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`Micro Motion’s joinder motion. Thus, it is not the Target Decision but rather
`
`Mirco Motion that is rewriting 35 U.S.C. § 315(c) to read:
`
`If the Director institutes an inter partes review, the Director, in his or
`her discretion, may join as a party to that inter partes review any
`issues raised in person who properly files a petition filed 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,
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`2
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`determines warrants the institution of an inter partes review under
`section 314.
`Rewriting the statute in this way is improper for the reasons discussed in the
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`
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`Target Decision. While the split in authority at the Board over the proper
`
`construction of 35 U.S.C. § 315(c) has not yet been resolved, Patent Owner
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`respectfully submits that the Target Decision is correct for the reasons discussed
`
`therein and urges this panel to adopt the Target Decision, deny Micro Motion’s
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`Motion for Joinder and accordingly deny this Petition as time-barred under 35
`
`U.S.C. § 315(b).
`
`B. Micro Motion Has Failed to Explain Why the Grounds Raised in
`the Second Petition Could Not Have Been Raised in the First
`Petition
`
`Micro Motion admits the ground of unpatentability asserted in the Second
`
`
`
`
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`Petition is a new ground that was not raised in the First Petition. Motion for
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`Joinder (Paper No. 3 at 4). The prior art relied on in this new ground, Romano and
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`Kalotay, were both known to Micro Motion when the First Petition was filed as
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`they were both asserted in the First Petition in different grounds. Motion for
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`Joinder (Paper No. 3) at 3. However, despite this knowledge of the prior art relied
`
`on in the Second Petition, nowhere in the Second Petition or the Motion for Joinder
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`does Micro Motion offer any explanation as to why the ground of unpatentability
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`raised in the Second Petition could not have been asserted in the First Petition.
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`The failure to offer such an explanation has been relied on by the Board in denying
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`3
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`
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`petitions that would be time-barred absent a grant of joinder. Standard Innovation
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`Corp. v. Lelo, Inc., IPR2014-00907, Paper No. 10 at 10-11. The Second Petition
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`should be denied for Micro Motion’s failure to offer any reasons why the ground
`
`asserted therein could not have been raised in the First Petition.
`
`C. Granting the Second Petition Would Significant Increase the Cost
`and Complexity of the ’393 IPR
`
`In the ’393 IPR, only independent claim 1 and its dependent claim 29 remain
`
`
`
`
`
`at issue. IPR2014-00393, Corrected Patent Owner’s Response, Paper No. 30, at 1.
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`These claims are challenged on the basis of only a single prior art reference
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`(Romano). Id. The statutory basis for the lone challenge is anticipation under 35
`
`U.S.C. § 102(b). Id.
`
`
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`Granting the Second Petition would greatly expand the complexity, and
`
`therefore the cost, of the ’393 IPR. The Second Petition seeks to increase the
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`number of claims at issue from 2 to 8. Additionally, a second prior art reference,
`
`Kalotay, would also need to be addressed. Moreover, the addition of an
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`obviousness challenge would inject significant new issues into the ’393 IPR. In
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`particular, there is a substantial issue concerning objective indicia of non-
`
`obviousness including commercial success, unexpected results and praise by the
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`industry that was touched on in the Patent Owner Response (Paper No. 30) at 3.
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`Because the only challenge addressed therein is anticipation, these issues were not
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`developed in the ’393 IPR. However, grating the Second Petition will result in the
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`EAST\87453739. 2
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`4
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`need to address these issues, including the potential for factual declarations from,
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`and cross examination depositions of, Invensys witnesses to establish commercial
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`success and potential fact discovery from the Micro Motion witness (Tom
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`O’Banion) who described the solution to the two-phase flow problem as “one of
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`the Holy Grails” of Coriolis flowmeter technology. ’393 IPR, Ex. 2001 at 4.
`
`Additional issues that will be injected into the ’393 IPR if the Second Petition is
`
`granted include the propriety of combining Romano and Kalotay. Such a
`
`significant expansion of the cost and complexity of the ’393 IPR are good reason
`
`to deny the Petition. Standard Innovation Corp. v. Lelo, Inc., IPR2014-00907,
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`Paper No. 10, at 11.
`
`D. Granting the Second Petition Would Significantly Impact the
`Schedule of the ’393 IPR
`
`The ’393 IPR has progressed significantly. Both of the expert declarants
`
`
`
`
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`have been deposed. Patent Owner’s Response has been filed, and Petitioner’s
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`Reply is due in just three days from the filing of this Preliminary Response.
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`Moreover, there has been no motion to amend in the ‘393 IPR (other than a motion
`
`to cancel a claim). Thus, the substantive testimony and pleadings for the ’393 IPR
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`will likely be nearly complete (with the exception of a possible deposition and
`
`motion for observation of any declarant relied on in Petitioner’s Reply) by the time
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`this Board rules on the Second Petition. Additionally, the oral argument for the
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`5
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`
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`’393 IPR is scheduled for March 12, which is less than three months from the date
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`of this preliminary response.
`
`
`
`If the Second Petition were to be granted, there would be the need to
`
`schedule due dates 1-7. In the ’393 IPR, which involved significantly less issues
`
`as compared to those raised in the Second Petition, approximately seven months
`
`were allocated for the completion of due dates 1-7, which appears to be typical in
`
`an AIA trial. If the same amount of time were to be scheduled for the Second
`
`Petition, the oral hearing in the ’393 IPR would be delayed by a minimum of four
`
`months and possibly longer depending on when the Board is able to reach its
`
`decision on the Second Petition. Even if the Board were to compress the typical
`
`seven month period to some extent1, the impact on the schedule would still be
`
`significant and is itself reason to deny the Second Petition. This is particularly true
`
`when one considers that the need for such delay is entirely the result of Micro
`
`Motion’s failure to pursue the ground raised in the Second Petition in the First
`
`Petition and Micro Motion’s decision to wait until the last possible day of the one
`
`month period under 37 C.F.R. § 42.122(b) to file its Second Petition and Motion
`
`for Joinder. See Medtronic, Inc. v. Endotach LLC, IPR2014-00695, Paper No. 18,
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`1 Patent Owner wishes to make clear that it does not agree with Petitioner that a
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`compressed schedule is appropriate in this IPR given the large number of potential
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`issues implicated by the Second Petition.
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`EAST\87453739. 2
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`6
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`
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`at 5 (noting that “[w]ith respect to the ‘just’ consideration, we note that Petitioner
`
`created its own § 315(b) bar situation by filing the Second Petition when it did,
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`something entirely within Petitioner’s control” in denying the Second Petition).
`
`E.
`
`The Board Has Previously Denied Substantially the Same
`Challenge Raised in the Second Petition
`
`As discussed in Patent Owner’s Opposition to Micro Motion’s Motion for
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`
`
`
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`Joinder, Title 35 U.S.C. § 325(d) gives the Board the discretion to deny a petition
`
`when it presents substantially the same prior art or arguments that were previously
`
`presented to the Board:
`
`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, 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.
`The Second Petition presents substantially the same arguments that were set forth
`
`in the First Petition.2 Because those arguments were rejected in the 393 IPR, the
`
`Board should exercise its discretion under § 325(d) to deny the Second Petition and
`
`the Motion for Joinder in this inter partes review.
`
`
`2 The 1409 Petition seeks inter partes review of claims 1, 12, 23-25, 29, 36, and 43
`
`of U.S. Patent No. 7,571,062 (the “’062 patent”). 1409 Petition at 3. Of these
`
`claims, only claim 43 does not depend from claim 1.
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`EAST\87453739. 2
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`7
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`The First Petition alleged that claim 1 of the ’062 patent is invalid over
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`Kalotay, Ex. 1008. Claim 1 requires the use of “digital signal processing to adjust
`
`a phase of the drive signal to compensate for a time delay associated with
`
`components connected between the sensor and the driver.” Ex. 1002 at 55:37-40.
`
`The First Petition alleges that Kalotay discloses this element of claim 1:
`
`Kalotay discloses applying bursts of energy to the drive coil, and
`timing each burst to occur during a certain portion of a time window.
`“An object of the present invention is to provide a drive circuit for use
`in a Coriolis meter that provides substantially accurate control over
`the amount of energy that is to be applied to the drive coil at any
`time.” (Kalotay, Ex. 1008, 3:40-43.) “This burst can be applied at a
`pre-defined point in each cycle of the oscillatory motion with no
`energy being applied during that cycle other than when the burst
`occurs.” (Id., 3:63-66 (emphasis added).) (Sidman Decl., Ex. 1002,
`¶ 220.)
`
`First Petition at 34-35. The First Petition then explains that Kalotay discloses the
`
`use of a comparator 540 (shown in Fig. 4 of Kalotay, reproduced below with added
`
`annotation) that compares a reference voltage to the left sensor velocity signal to
`
`define a drive window (shown in Fig. 6 of Kalotay, reproduced below) in the
`
`middle 80% of the positive half of each cycle in the left velocity sensor waveform.
`
`First Petition at 35.
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`EAST\87453739. 2
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`8
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`comparator
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`
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`
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`After discussing how the comparator 540 establishes the drive window, the
`
`First Petition asserts that it would have been obvious to account for delays in
`
`components such as A/D converters by adjusting the phase of the drive signal so
`
`that it would fall within the drive window:
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`EAST\87453739. 2
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`9
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`
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`Component effects, including delay, are an inherent and well-known
`part of any electronic system, and the desirability of compensating for
`delays was well known in the prior art. A successful design takes
`such effects into consideration. For example, an A/D converter, such
`as A/D 520 illustrated in Fig. 4 of Kalotay, was well known to have
`associated delay for which it was well known to compensate. It
`would be obvious under KSR rationale C or D, to adjust the timing of
`the energy pulses of Kalotay to account for circuit delays such as A/D
`delay (i.e., “adjust a phase of the drive signal to compensate for a time
`delay associated with components”) so that each energy pulse falls
`within the desired window. (Sidman Decl., Ex. 1002, ¶¶ 103-119,
`224.)
`First Petition at 36 (emphasis added). In other words, the First Petition asserts that
`
`it was obvious to have Kalotay’s microprocessor time Kalotay’s energy bursts to
`
`fall within the drive window, separate and apart from the constraints imposed by
`
`the comparator 540.
`
`
`
`The Board rejected this assertion. As the Board correctly noted in its 393
`
`Decision:
`
`Petitioner’s assertion that Kalotay discloses adjusting a phase is
`premised on Kalotay’s disclosure of timing of energy pulses.
`However, adjusting the timing of a burst does not mean, necessarily,
`that the adjustment is “to compensate for a time delay associated with
`components connected between the sensor and the driver.” Instead, in
`the passages of Kalotay relied on by Petitioner, comparator 540 is
`used to time the bursts based on “the middle 80% of the positive half
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`EAST\87453739. 2
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`10
`
`
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`of each cycle in the left velocity sensor waveform.” Ex. 1008, 13:9-
`33, Fig. 6. As shown in more detail in Figure 4, the left velocity
`sensor signal is routed to comparator 540 via junction 515, which is
`before A/D converter 520 or microcontroller 530.
`393 Decision at 15. Thus, the Board correctly determined that the mere existence
`
`of delay in components does not mean that a phase adjustment is to compensate for
`
`such delay and that the comparator 540 rather than any independent compensation
`
`performed by the microprocessor is what is used to align Kalotay’s energy bursts
`
`to the drive window.
`
`
`
`The Second Petition is nothing more than an attempt to re-hash these same
`
`arguments, albeit with more gloss. The central theme of the Second Petition is that
`
`Kalotay’s microprocessor, separate and apart from the drive window circuitry
`
`including the comparator 540, determines “when within the half-cycle the burst
`
`should be applied.” 1409 Petition at 21. But the Board’s 393 Decision indicates
`
`that it understood that the First Petition made the same argument: “With respect to
`
`this limitation, Petitioner asserts that Kalotay discloses ‘applying bursts of energy
`
`to the drive coil, and timing each burst to occur during a certain portion of the time
`
`window.’” 393 Decision at 15 (emphasis added). As discussed above, the Board
`
`appropriately rejected this argument.
`
`
`
`The fallacy of the arguments in the Second Petition is also readily apparent
`
`from a simple review of Kalotay. For example, step 680 of Fig. 5 indicates that the
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`EAST\87453739. 2
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`11
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`
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`“gate” input of the timer/counter 550 is set by the microprocessor when the peak
`
`amplitude of the sensor signal (Vpeak in Fig. 5) falls below a lower limit (VL in Fig.
`
`5). See also Ex. 1008 at 15:55-16:8. Nothing in this passage or anywhere else in
`
`Kalotay discusses any selection of a particular time in the drive window or any
`
`compensation for circuit delays. However, Kalotay does discuss the fact that
`
`setting of the gate input of the timer/counter 550 to activate the pulse width
`
`modulated output would have no effect unless the “enable” input to the
`
`timer/counter 550 were also set by the comparator 540. Id. at 16:2-8. This
`
`condition would never occur if Petitioner were correct that the microprocessor had
`
`some independent means of selecting a particular point in the drive window for
`
`Kalotay’s energy burst.
`
`
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`In addition, the assertion in the Second Petition that the microprocessor
`
`chooses a “sweet spot” in the center of the drive window to apply the energy burst
`
`is directly contradicted by the disclosure in Kalotay that “it is not critical where a
`
`burst of energy . . . is applied to the flow conduits as long as that burst is applied
`
`within the positive ‘drive window.’” Id. at 13:34-40.
`
`
`
`Finally, on an even more basic level, if Kalotay’s microprocessor were
`
`configured to time the energy bursts to specific points in the drive window by
`
`compensating for the delay in components of Kalotay’s system between the sensor
`
`and the drive, there would be no need for Kalotay’s drive window generation
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`EAST\87453739. 2
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`
`12
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`
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`circuitry. The Second Petition fails to explain why Kalotay’s system would
`
`include such redundant circuitry.
`
`
`
`Petitioner’s reliance on Romano to bolster the argument based on Kalotay is
`
`unavailing. The Second Petition relies almost exclusively on Kalotay for the
`
`assertion that claim 1 and its “to compensate for a time delay associated with
`
`components connected between the sensor and the driver” limitation are obvious.
`
`The detailed discussion of the alleged obviousness of claim 1 begins on page 16 of
`
`the Second Petition and does not discuss Romano until page 29, and then only for
`
`two pages.
`
`
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`Moreover, the Second Petition’s reliance on Romano makes no sense.
`
`Romano allegedly discloses introducing a phase shift to the right sensor channel.
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`This phase shift allegedly “propagates through” to the drive signal because
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`Romano allegedly discloses that the microprocessor 330 uses both the left and
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`right channel sensor data to generate the drive signal. Second Petition at 29-30.
`
`But both Kalotay and Romano disclose that their microprocessors use only the left
`
`sensor channel to generate the drive signal. Ex. 1008 (Kalotay) at Fig. 4, 4:5-9,
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`11:34-45; Ex. 1006 (Romano) at 24:32-60, 30:48-31:17; see also Decl. of Dr.
`
`Jeffrey Vipperman in IPR2013-00170, submitted herewith as Ex. 2001, ¶¶ 60-93
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`(explaining that only the left sensor channel is used to generate the drive signal in
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`EAST\87453739. 2
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`13
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`
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`Romano and that the phase shift applied to the right sensor channel would have no
`
`effect even if it were used to generate the drive signal).
`
`
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`Because both Kalotay and Romano disclose using the left sensor channel to
`
`generate the drive signal Petitioner’s reliance on Romano due to a phase shift
`
`applied only to the right sensor is unsound and adds nothing to Petitioner’s
`
`previously rejected arguments in the First Petition based on Kalotay alone. Under
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`such circumstances, the Motion for Joinder and the Petition should be denied.
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00436, Paper No.
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`17 (designated as an informative opinion by the PTAB) at 11-12 (exercising
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`discretion under § 325(d) to deny a petition when the arguments were the same or
`
`substantially the same as those presented in an ongoing IPR to which the petitioner
`
`was a real party in interest).
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`III. CONCLUSION
`
`The Second Petition should be denied for all of the foregoing reasons.
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`
`
`Respectfully Submitted,
` /Jeffrey L. Johnson/
`Jeffrey L. Johnson
`Reg. No. 53,078
`DLA Piper LLP (US)
`1000 Louisiana Street, Suite 2800
`Houston, TX 77002-5005
`713-425-8445
`
`
`
`
`
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`EAST\87453739. 2
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`
`14
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`
`
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`(703) 773-4148
`Attorneys for Patent Owner
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`EAST\87453739. 2
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`15
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing instrument
`
`
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`was served on Petitioner, Micro Motion, Inc., by emailing a copy to counsel at the
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`email addresses listed below:
`
`Andrew S. Baluch - WASH-Abaluch-PTAB@foley.com
`
`Jeffrey N. Costakos - jcostakos@foley.com
`
`Angela D. Murch - amurch@foley.com
`
`Linda E. B. Hansen - lhansen@foley.com
`
`
`
`
`
`
`
`
`
`/Jeffrey L. Johnson/
`Jeffrey L. Johnson
`Reg. No. 53,078
`jeffrey.johnson@dlapiper.com
`Invensys_Micro_IPR@dlapiper.com
`Counsel for Invensys Systems, Inc.
`
`
`Dated: December 16, 2014
`
`
`
`
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`EAST\87453739. 2
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`
`16
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`
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