`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`FORD MOTOR COMPANY
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-00767
`Patent 7,455,134
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response to
`Petition for Inter Partes Review of U.S.
`Patent No. 7,455,134
`
`
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ......................................................................................... 1
`
`PROCEDURAL BACKGROUND ............................................................... 3
`
`III. BACKGROUND OF THE ’134 PATENT .................................................. 4
`
`IV. CLAIM CONSTRUCTION .......................................................................... 9
`
`V.
`
`FORD’S PETITION SHOULD BE DENIED BECAUSE IT IS FORD’S
`THIRD BITE AT THE APPLE AFTER UNSUCCESSFULLY
`PETITIONING FOR REVIEW IN TWO EARLIER PROCEEDINGS
` ....................................................................................................................... 10
`
`A.
`
`B.
`
`C.
`
`The Instant Petition Impermissibly Uses the Board’s Prior
`Decisions as a Roadmap for Its Third Serial IPR .......................... 11
`
`Ford’s Knowledge of All “New” Prior Art References Before It
`Filed the ’568 Petition Further Supports a Denial of the Instant
`Petition ................................................................................................ 14
`
`The Instant Petition Should Be Denied Because It Advances the
`Same or Substantially the Same Prior Art and Arguments that It
`Previously Presented ......................................................................... 17
`
`VI. FORD’S PETITION IS DEFECTIVE ON ITS FACE BECAUSE IT
`FAILS TO PRESENT A RATIONALE TO MODIFY THE ’455 PCT
`PUBLICATION WITH SEVERINSKY’S ALLEGED “2.5” RATIO ... 20
`
`VII. CONCLUSION ............................................................................................ 24
`
`
`
`
`
`
`
`
`
`i
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2014-00581,
`
`Paper No. 8 at 12-13 (PTAB October 14, 2014) .......................................... 11, 12
`
`Cisco v. C-Cation Technologies, IPR2014-00454,
`
`Paper 12 at 9 (PTAB Aug. 29, 2014) ................................................................... 24
`
`eBay Inc. v. MoneyCat Ltd., CBM2015-00008,
`
`Paper No. 9 at 8 (PTAB May 1, 2015) ................................................... 15, 18, 19
`
`Fidelity National v. DataTreasury, IPR2014-00491,
`
`Paper 9 at 8 (PTAB Aug. 13, 2014) ..................................................................... 23
`
`Micro Motion, Inc. v. Invensys Systems, Inc., IPR2014-0393,
`
`Paper 16 at 16 (PTAB Aug. 4, 2014) ................................................................... 23
`
`Microsoft Corporation v. Enfish, LLC, IPR2013-00559,
`
`Paper No. 65 at 29 (PTAB March 3, 2015) ......................................................... 21
`
`Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024,
`
`Paper No. 16 at 43 (PTAB November 19, 2013) ................................................. 21
`
`Shaw Industries Group, Inc. v. Automated Creel Sys., Inc., IPR2013-00584,
`
`Paper 16 at 10 n.5 (PTAB Dec. 21, 2013) ........................................................... 24
`
`Tempur Sealy Int’l Inc. v. Select Comfort Corp., IPR2014-01419,
`
`Paper 7 at 7 (PTAB Feb. 17, 2015) ...................................................................... 23
`
`ii
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`Unilever v. Procter & Gamble Company, IPR2014-00628,
`
`Paper No. 23 at 5 (PTAB March 20, 2015) ......................................................... 15
`
`
`
`Statutes
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 325(d) ........................................................................................... passim
`
`
`
`
`
`
`
`
`
`iii
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`Exhibit Number
`Ex. 2001
`Ex. 2002
`
`
`EXHIBITS
`
`Exhibit Name
`Table of Ford’s IPR Petitions
`Appendix A
`
`
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`I.
`
`INTRODUCTION
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`Paice LLC and the The Abell Foundation, Inc. (“the Patent Owner” or
`
`collectively referred to as “Paice”) respectfully submit this Preliminary Response
`
`in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, responding to the
`
`Petition for Inter Partes Review (“the Petition”) filed by Ford Motor Company
`
`(“Ford” or “the Petitioner”). Paice requests that the Board not institute inter partes
`
`review because (1) the Instant Petition is Ford’s third bite at the apple and uses the
`
`Board’s previous decisions denying institution of two earlier petitions to present
`
`arguments already lost and (2) the Instant Petition is defective on its face because
`
`Ford’s conclusory statements regarding the combinability of Publication No. WO
`
`00/015455 (“the ’455 PCT Publication”) and U.S. Patent No. 5,343,970
`
`(“Severinsky”) fail to present any rationale for modifying the ’455 PCT
`
`Publication with the electrical parameters taught by Severinsky.
`
`First, Ford’s Instant Petition is the prime example of why the Board has
`
`discretion under 35 U.S.C § 325(d) to deny institution of petitions that burden
`
`patent owners and the Board by advancing “the same or substantially the same
`
`prior art or arguments [that] previously were presented to the Office.” The Board
`
`should exercise that discretion to prevent Ford from taking now its third bite at the
`
`apple vis-à-vis its Instant Petition. Here, Ford has impermissibly used the Board’s
`
`
`
`1
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`prior two decisions as a roadmap to remedy its prior, deficient challenges to bring a
`
`substantially similar prior art and arguments—this time relying on Severinsky
`
`instead of the ’134 patent itself. Patent Owner should not bear the burden of
`
`having to point out deficiencies in prior petitions only to have to bear the cost of a
`
`third proceeding. Finally, it is undisputed that Ford knew about Severinsky as well
`
`as all the other art on which it relies. Thus, estoppel considerations also support
`
`the Board’s decision to deny institution.
`
`Second, the Instant Petition fails to present any rationale for modifying the
`
`’455 PCT Publication with the electrical parameters taught by Severinsky. While
`
`the Instant Petition generally describes why the two references are related, Board
`
`precedent makes clear that merely alleging that two references are related is
`
`insufficient to meet the petitioner’s burden as to obviousness. As Ford’s petition
`
`offers no further explanation regarding the combinability of the ’455 PCT
`
`Publication, it is deficient on its face. This failure permeates through each and
`
`every ground of unpatentability.
`
`Accordingly, Ford’s petition fails to establish a reasonable likelihood that it
`
`would prevail with respect to at least one of the claims challenged in the petition.
`
`This petition should be denied.
`
`
`
`2
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`II.
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`PROCEDURAL BACKGROUND
`On April 4, 2014, Ford filed a first petition (IPR2014-00568) for Inter
`
`Partes Review against claims 1, 2, 3, 5, 6, 19, 20, 26, 27, 40, 58, and 62 of the
`
`’134 patent (“the ’568 Petition”). The grounds of the ’568 Petition all rely on the
`
`’455 PCT Publication. On September 8, 2014, the Board denied the institution of
`
`Inter Partes Review in IPR2014-00568, finding that there is no reasonable
`
`likelihood that Petitioner would prevail in challenging the claims as unpatentable.
`
`On June 5, 2014, Ford filed a second petition IPR2014-00852 for Inter
`
`Partes Review against claims 1, 2, 3, 5, 6, 19, 27, 40, and 58 of the ’134 patent
`
`(“the 852 Petition”). The grounds of the ’852 Petition all rely on U.S. Patent No.
`
`5,586,613 (“Ehsani”) either alone or in combination with other prior art. On
`
`November 20, 2014, the Board denied the institution of Inter Partes Review in
`
`IPR2014-00852, again finding that there is no reasonable likelihood that Petitioner
`
`would prevail in challenging the claims as unpatentable.
`
`With regard to both the ’568 Petition and ’852 Petition, the Board agreed
`
`with Patent Owner in both instances that Ford impermissibly took parameters from
`
`Application No. 09/822,866 (from which the ’134 patent claims priority) to arrive
`
`at the claimed invention, particularly the limitation requiring “a ratio of maximum
`
`DC voltage … to current supplied from the electrical storage device to at least the
`
`
`
`3
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`first AC-DC converter, when maximum current is so supplied, is at least 2.5.” See
`
`Ford Motor Company v. Paice LLC & The Abell Foundation, Inc., IPR2014-
`
`00568, Paper No. 12 at 13; Ford Motor Company v. Paice LLC & The Abell
`
`Foundation, Inc., IPR2014-00852, Paper No. 11 at 10. The Instant Petition
`
`attempts to fix the problems pointed out by Patent Owner and the Board by relying
`
`on Severinsky in addition to the ’455 PCT Publication.
`
`III. BACKGROUND OF THE ’134 PATENT
`The ’134 patent (Ex. 1201) issued on November 25, 2008 from Application
`
`No. 11/429, 457 (“the ’457 application,” Ex. 1232), which was filed on May 8,
`
`2006. The ’457 application was a division of U.S. Patent 7,104,347 (“the ’347
`
`patent”), filed on March 7, 2003 as Application No. 10/382,577(“the ’577
`
`application,” Ex. 1235), which in turn was a division of U.S. Patent No. 6,554,088
`
`(“the ’088 patent”), filed on April 2, 2001 as Application No. 09/822,866 (“the
`
`’866 application,” Ex. 1213). The ’088 patent was a continuation-in-part of U.S.
`
`Patent No. 6,338,391(“the ’391 patent”), filed on Sep. 9, 1999 as Application No.
`
`09/392,743(“the ’743 application,” Ex. 1215), and a continuation-in-part of U.S.
`
`Patent 6,209,672 (“the ’672 patent”), filed on Mar. 9, 1999 as Application No.
`
`09/264,817(“the ’817 application,” Ex. 1214). The ’134 patent claims priority to
`
`provisional application No. 60/122,296, filed on March 1,1999 (Ex. 1211) and
`
`
`
`4
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`provisional application No. 60/100,095, filed on Sep. 14, 1998 (Ex. 1210). The
`
`’743 application, “the ’817 application” and the provisional applications may be
`
`collectively referred to herein as the pre-CIP applications.
`
`Furthermore, Paice filed a PCT application, Ser. No. PCT/US1999/018844,
`
`on September 10, 1999, that was published as Publication No. WO 00/015455
`
`(“the ’455 PCT Publication,” Ex. 1203) on March 23, 2000, which is more than
`
`one year prior to the filing date of the CIP application from which the ’134 patent
`
`claims priority for the new subject matter disclosed therein. The ’134 patent is
`
`entitled to the priority date of the ’743 and ’817 applications for the subject matter
`
`disclosed therein. The PCT application combined the disclosures of the ’743 and
`
`’817 applications, for simplification of foreign prosecution. Therefore the PCT
`
`application includes no subject matter for which the ’134 patent is not entitled to a
`
`priority date of the ’743 and ’817 applications—a date earlier than the publication
`
`date of the PCT application. Moreover, the PCT application contains the same
`
`disclosure as the ’743 and ’817 applications.
`
`The ’134 patent is directed to hybrid vehicles that include an internal
`
`combustion engine (ICE), as well as one or more electric motors to supply torque
`
`to the driving wheels of the vehicle. See, e.g., Ex. 1201, 1: 20-30. The ’134 patent
`
`shares the specification with the ’088 and ’347 patents, and the specification
`
`
`
`5
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`describes certain improvements over the implementations described in the pre-CIP
`
`applications. See, e.g., id., 11: 21-32. The improvements pertain to various
`
`aspects, including for example, particular combinations of powertrain and ancillary
`
`components such that the electrical motors are capable of providing adequate
`
`acceleration without assistance from the internal combustion engine, and the
`
`efficiency of the vehicle is improved. See, e.g., id., 19: 59 to 20:24 and 49: 58 to
`
`50: 18. In particular, the ’134 patent recognizes that in order to achieve the desired
`
`efficiency, the components should be selected such that under peak electrical
`
`loading the ratio of the battery voltage to the peak current should be at least 2.5:1.
`
`See, e.g., id., 49: 58 to 50: 18. The inventors also recognized that a high ratio of
`
`the battery voltage to the peak current allows for using components with low
`
`current ratings. In particular, the ’134 patent describes (see id., 49:23-36):
`
`More particularly, suppose that the "average
`maximum" current (e.g., defined as the maximum current
`flowing for more than, for example, thirty seconds; under
`most circumstances, the average current would be much
`less) is controlled to be 50 A. This allows use of
`inexpensive mass-produced plug-in connectors, and can
`be controlled by inexpensive mass-produced power
`electronic components, as needed to construct the
`inverter/charger units. These components can be
`
`
`
`6
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`designed to conduct up to approximately 200 A for up to
`thirty seconds, so that full acceleration can be provided
`for a time sufficient for the vehicle to reach essentially its
`maximum speed; according to this aspect of the
`invention, the peak current can accordingly be set at, for
`example, 150 A, and the power electronics components
`then sized based on this value.
`More particularly, it appears useful to size the
`components with respect to one another, in particular, the
`battery bank with respect to the traction motor( s), so that
`the peak current is no more than about 150 A, and so that
`under peak electrical loading (usually under acceleration)
`a ratio of at least 2.5: 1 of the battery voltage to the peak
`current is exceeded.
`
`The ’134 patent describes multiple examples where a sufficiently high ratio
`
`helps achieve sufficient acceleration without assistance from an ICE. See, e.g., id.,
`
`49: 44-57. To emphasize the importance of the ratio, the ’134 patent also mentions
`
`the Toyota Prius as an example of how a low ratio is insufficient to provide
`
`adequate acceleration without assistance from an ICE. See, e.g., id., 49: 58 to 50:
`
`18. Recognizing the shortcomings of the Toyota Prius, the inventors were able to
`
`ascertain an appropriate lower limit on the ratio. See, e.g., id., 49: 58 to 50: 18.
`
`Therefore, rather than being a byproduct of the design constraints (as alleged by
`
`
`
`7
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`the Ford on page 17 of the Petition), the ratio is used in the ’134 patent as a key
`
`design parameter to select appropriate components. See, e.g., Ex. 1201, 50: 5-18.
`
`For example, the ’134 patent describes (see id., 49:44 to 50:10):
`
`For example, suppose it is desired to implement
`the invention with respect to a relatively heavy, e.g.,
`6000 pound, vehicle having target acceleration
`capabilities such that a 120 HP electric traction motor,
`typically drawing 100 kW, will be required. The battery
`bank for such a vehicle is sized to provide a nominal
`voltage of 830 v (i.e., when not under load); this will
`drop to approximately 650 V under load. The battery
`bank will thus be required to produce 153 A (=100 kW
`/650 V) during full acceleration, and the ratio of voltage
`to peak current is 3.92 (=650VI153 A).
`In another example, of a much lighter 3000 lb
`vehicle, a 80 HP, 60 kW motor might be sufficient. To
`keep the peak current to 115 A, a battery bank of 600 V
`nominal, 500 V under load would be required. The ratio
`is then 4.3 (=500VI115 A).
`
`***
`
` [More generally,] the components of the hybrid
`vehicles of the invention are to be sized so that the ratio
`between battery voltage under load to peak current is at
`
`8
`
`
`
`
`
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`least about 2.5, and preferably is at least 3.5 to 4: 1; this
`allows adequate acceleration from low speeds without
`use of torque from the ICE.
`
`Selecting components in accordance with the teachings of the ’134 patent
`
`provides several advantages. For example, it may allow the elimination of
`
`multiple-speed or variable-ratio transmission (thereby making the design simpler),
`
`and may allow torque and rotation from the ICE to be disengaged from the wheels
`
`except when the ICE can be employed efficiently to propel the vehicle. See, e.g.,
`
`id., 50:5-15.
`
`IV. CLAIM CONSTRUCTION
`Ford’s construction of vehicle load—“the torque sufficient to meet road load
`
`and the load required to charge the battery and supply accessories” has surplus
`
`language that renders the construction confusing and unworkable. For this reason,
`
`the Board should reject Ford’s construction and adopt Paice’s construction: “road
`
`load and the load required to charge the battery and supply accessories.”
`
`Ford’s construction of vehicle load includes the term “road load” for which
`
`Ford also offers a construction. When the two constructions are combined, it is
`
`clear that Ford’s construction is confusing and unworkable: “the torque sufficient
`
`to meet the instantaneous torque required to propel the vehicle… and the load
`
`
`
`9
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`required to charge the battery and supply accessories.” As Paice’s construction
`
`simply removes the surplus language, Paice’s construction should be adopted.
`
`V.
`
`FORD’S PETITION SHOULD BE DENIED BECAUSE IT IS FORD’S
`THIRD BITE AT THE APPLE AFTER UNSUCCESSFULLY
`PETITIONING FOR REVIEW IN TWO EARLIER PROCEEDINGS1
`The Instant Petition relies on substantially the same arguments that Ford
`
`presented to the Board in its first two petitions. Under Section 325(d), the Board
`
`should deny petitions that challenge a patent based on previously-rejected grounds
`
`and cumulative art, otherwise petitioners will be given an unwarranted and unfair
`
`procedural advantage. See 35 U.S.C. § 325(d).2 Ford knows that its Instant
`
`Petition falls squarely within the confines of Section 325(d) and has proffered a
`
`myriad of excuses for why the Board should refrain from denying institution. Ford
`
`
`1 Patent Owner reserves the right to raise additional arguments in its Patent
`
`Owner Response should the Instant IPR be instituted.
`
`2 Section 325(d) states: 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.
`
`
`
`10
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`cannot escape, however, the underlying fact that Ford’s latest petition i) improperly
`
`uses the Board’s prior decisions as a roadmap to concoct new arguments and ii)
`
`relies on prior art that Ford indisputably knew about when it filed its first and
`
`second faulty petitions.
`
`A. The Instant Petition Impermissibly Uses the Board’s Prior
`Decisions as a Roadmap for Its Third Serial IPR
`
`As Ford’s third bite at the apple, Ford’s Instant Petition runs afoul of Section
`
`325(d) and Board precedent because it impermissibly relies on the Board’s
`
`Decision and Patent Owner’s arguments to reargue positions that it previously lost.
`
`Section 325(d) authorizes the Board to deny institution of petitions or grounds for
`
`inter partes review that seek to reargue positions previously lost. Indeed, the board
`
`in Butamax Advanced Biofuels LLC v. Gevo, Inc., denied institution of a second
`
`petition that used the panel’s “prior decision as a roadmap to remedy [the
`
`petitioner’s] prior, deficient challenge.” IPR2014-00581, Paper No. 8 at 12-13
`
`(PTAB October 14, 2014). The Board noted that “[a]llowing similar, serial
`
`challenges to the same patent, by the same petitioner, risks harassment of patent
`
`owners and frustration of Congress’s intent in enacting the Leahy-Smith America
`
`Invents Act.” Id. (citing H.R. Rep. No. 112-98 at 48 (2011)).
`
`The Board should exercise its discretion under 35 U.S.C § 325(d) to prevent
`
`Ford from taking now its third bite at the apple vis-à-vis its Instant Petition. Here,
`11
`
`
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`Ford is attempting to gain a tactical advantage by using Patent Owner’s arguments
`
`and the Board’s previous decisions as a roadmap to concoct new prior art
`
`combinations and arguments. Ford unabashedly told the Board that it is using the
`
`Board’s institution decision as a roadmap in an attempt to fix the flaws that formed
`
`the bases for the Board’s decision denying institution.3 Such practice is improper
`
`and a waste of the Board’s resources. Butamax Advanced Biofuels LLC v. Gevo,
`
`Inc., IPR2014-00581, Paper No. 8 at 12-13 (PTAB October 14, 2014). Moreover,
`
`the Instant Petition is replete with serial claim challenges that are burdensome on
`
`Patent Owner. Patent Owner should not bear the burden of repeatedly responding
`
`
`
`3 IPR2015-00767 Petition at 1 (“Ford filed IPR 2014-00568 seeking review
`
`of a subset of the claims challenged now. (“the ’568 Petition”). The Board denied
`
`that petition … The Board denied the ’568 Petition stating that the claimed “at
`
`least 2.5” ratio “could [not] be arrived at with the parameters solely from the ’455
`
`PCT publication and the knowledge of a person of ordinary skill in the art
`
`[POSA].” (Id. at 13.) … This petition is directed to a new set of claims and new
`
`art grounds which render moot the issue of how a voltage drop should be
`
`calculated.).
`
`
`
`12
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`to Ford’s petitions because Ford is unable to prepare a well-grounded petition in
`
`the first instance.
`
`If the Board accepts these types of cumulative, repetitive grounds, it will
`
`encourage petitioners to engage in a pattern of serial IPR filing. Parties will file
`
`petition after petition, making similar arguments and reshuffling the prior art in an
`
`attempt to navigate the Board’s decisions and patent owners’ arguments. Such a
`
`practice will overburden the Board with repetitive petitions. It is also prejudicial to
`
`patent owners who would have to continually defend against repetitive IPR
`
`challenges.
`
`The prejudice to Patent Owner is particularly acute here in view of the other
`
`24 petitions for IPR that Ford has filed. In addition to the serial claims filed in the
`
`Instant Petition, Ford has filed an additional 131 serial claim challenges. In other
`
`words, on 131 occasions Ford has challenged the same claim more than once using
`
`more than one IPR petition. A table demonstrating the serial nature of the Instant
`
`Petition as well as Ford’s other petitions is included as Exhibit 2001.
`
`Ford claims that it should be immunized from Section 325(d) because the
`
`Instant Petition challenges a “different set of claims.” Petition at 2. Ford’s
`
`statement here is misleading. Ford’s “different set of claims” includes its third
`
`
`
`13
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`
`Case IPR2014-00767
`Patent Owner Preliminary Response
`
`Attorney Docket No: 36351-0012IP3
`challenge to eight claims4 and a second challenge to one claim.5 The fact that Ford
`
`added additional claims in the Instant Petition should not permit Ford to get three
`
`bites for the same patent.6 Allowing Ford to escape Section 325(d) simply because
`
`it added more claims would incentivize petitioners to skirt Section 325(d) by filing
`
`a first petition on a small number of claims and then filing a follow-on petition
`
`with the benefit of the Board’s institution decision on a larger number of claims.
`
`Such a practice would not promote the efficient and economical use of Board and
`
`party resources.
`
`B.
`
`Ford’s Knowledge of All “New” Prior Art References Before It
`Filed the ’568 Petition Further Supports a Denial of the Instant
`Petition
`
`That Ford knew about all of the prior art before filing any of its IPR petitions
`
`further underscores the need for the Board to deny institution of Ford’s subsequent
`
`bites at the apple. Ford does not contend that the newly cited references were not
`
`known or available to it at the time it filed the ’568 Petition. Indeed, it is
`
`
`4 See claims 1, 2, 5, 6, 19, 27, 40, and 58.
`
`5 See claim 20.
`
`6 At the very least, the Board should deny institution of claims 1, 2, 5, 6, 19,
`
`20, 27, 40, and 58, which Ford has challenged previously.
`
`
`
`14
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`indisputable that Ford knew about these references, and was contractually
`
`obligated to disclose those to Paice prior to filing the ’568 Petition.
`
`The board’s decision in Unilever v. Procter & Gamble Company, found that
`
`the Board has the discretion under 35 U.S.C § 325(d) to consider estoppel effects
`
`and deny institution of subsequent petitions in order to “achieve a result that
`
`promotes the efficient and economical use of Board and party resources, and
`
`reduces the opportunity for abuse of the administrative process.” IPR2014-00628,
`
`Paper No. 23 at 5 (PTAB March 20, 2015) (declining review, in part, because new
`
`prior art or arguments raised in the second petition were known or available to the
`
`petitioner at the time of filing the first petition); see also eBay Inc. v. MoneyCat
`
`Ltd., CBM2015-00008, Paper No. 9 at 8 (PTAB May 1, 2015) (declining review,
`
`in part, because “Petitioner … presents no argument or evidence that the newly
`
`cited reference was not known or available to it at the time of filing of the 093
`
`Petition.”). The denial of subsequent petitions based on estoppel considerations
`
`“removes an incentive for petitioners to hold back prior art for successive attacks,
`
`and protects patent owners from multifarious attacks on the same patent claims.”
`
`Unilever, IPR2014-00628, Paper No. 23 at 5.
`
`The Board should apply estoppel considerations here and decline review of
`
`Ford’s Instant Petition. Patent Owner has indisputable proof that Ford knew about
`
`
`
`15
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`all three “new” prior art references before it filed its first petition.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Moreover, Ford has used the
`
`Severinsky reference in numerous of its other IPRs, including IPR2014-00570 and
`
`IPR2014-00571 which Ford filed simultaneously with the ’568 Petition. Because
`
`there is no question that Ford actually knew about these references when it filed
`
`the first deficient petition, the Board should decline review of Ford’s Instant
`
`Petition.7
`
`
`7 Ford’s argument that “the new claims and new grounds could not have
`
`been previously presented” is wrong. Petition at 3. Ford knew about all of the
`
`newly cited prior art prior to filing the ’568 Petition and is clearly able to attack all
`
`of the Challenged Claims in a single IPR.
`
`
`
`16
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`
`Case IPR2014-00767
`Patent Owner Preliminary Response
`
`Attorney Docket No: 36351-0012IP3
`C. The Instant Petition Should Be Denied Because It Advances the
`Same or Substantially the Same Prior Art and Arguments that It
`Previously Presented
`
`The Instant Petition also falls within Section 325(d) because it advances
`
`three new obviousness grounds, each of which essentially seeks to replace the
`
`deficiencies of the ’455 PCT Publication with Severinsky, which allegedly
`
`discloses the “at least 2.5” ratio limitation. In its decision denying institution of
`
`the ’568 Petition, the Board agreed with Patent Owner that Ford had failed to
`
`demonstrate that “that the ‘inherent’ or ‘implicit’ ratio of 2.76:1 could be arrived at
`
`with the parameters solely from the ’455 PCT publication and the knowledge of a
`
`person of ordinary skill in the art” and that “it is impermissible for the Petitioner to
`
`take parameters from the ’866 application [from which the ’134 patent claims
`
`priority] to arrive at the claimed invention.” IPR 2014-00568, Paper No. 12 at 13.
`
`The Board found with respect to the ’852 Petition that Ford committed the exact
`
`same error. IPR 2014-00852, Paper No. 11 at 10.
`
`Ford admits that the sole purpose of citing Severinsky in the Instant Petition
`
`is to provide the same disclosure Ford previously contended was inherently
`
`provided by the ’455 PCT Publication. Petition at 2. Other than the addition of
`
`Severinsky, the art cited in the independent claims of the Instant Petition’s
`
`obviousness grounds overlaps completely with that asserted against the
`
`
`
`17
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary Response
`
`
`
`
`Case IPR2014-00767
`Attorney Docket No: 36351-0012IP3
`
`independent claims in the ’568 Petition. Thus, the Instant Petition advances “the
`
`same or substantially the same prior art or arguments [that] previously were
`
`presented to the Office.” 35 U.S.C. § 325(d).
`
`Ford’s arguments to the contrary are without merit. First, Ford argues that
`
`“[t]he new grounds are thus not a mere substitution of different art predicated on
`
`the same underlying argument.” Petition at 2. At the heart of both its first
`
`deficient ’568 Petition and the Instant Petition, however, is the identical argument
`
`that the ’455 PCT Publication invalidates the Challenged Claims. That Ford has
`
`chosen this time to rely on a second prior art reference instead of the teachings of
`
`the ’134 patent itself to arrive at the “at least 2.5” ratio limitation is of no
`
`consequence. See eBay Inc., CBM2015-00008, Paper No. 9 at 8 (denying
`
`institution of second petition that relied on a new prior art reference because
`
`“Petitioner is simply now presenting a reference to show what Petitioner
`
`previously implied was within the skill of one of ordinary skill in the art.”). Ford
`
`should have brought its best invalidity case in its first petition. Ford should not be
`
`able to reap the benefit of Patent Owner’s and the Board’s tutelage on the law
`
`concerning matters of inherency and the impropriety of ex post reasoning by using
`
`such teachings to correct its faulty petitions.
`
`
`
`18
`
`PUBLIC - REDACTED VERSION
`
`
`
`
`Patent No. 7,455,134
`Patent Owner Preliminary R
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
