Case IPR2016-00537
`Patent 7,156,492
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`HP Inc.,
`
`Petitioner
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`____________________
`
`Case IPR2016-00537
`Patent No. 7,156,492
`
`____________________
`
`
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,156,492 CHALLENGING CLAIMS 1, 2, 4, and 5
`
`
`Patent 7,156,492
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`HP Inc.,
`
`Petitioner
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`____________________
`
`Case IPR2016-00537
`Patent No. 7,156,492
`
`____________________
`
`
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,156,492 CHALLENGING CLAIMS 1, 2, 4, and 5
`
`
`
`TABLE OF CONTENTS
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`Case IPR2016-00537
`Patent 7,156,492
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`Page
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`INTRODUCTION .......................................................................................... 1
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`PATENT OWNER MISREPRESENTS AUSTRALIAN LAW ................... 2
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`A. Australian Law Permits Non-Owners to File Patent
`Applications .......................................................................................... 2
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`B.
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`Patent Owner Misrepresents Section 195 And The Facts .................... 3
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`i
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`I.
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`II.
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`TABLE OF AUTHORITIES
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`
`Case IPR2015-00803
`Patent 8,283,758
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`Page(s)
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`CASES
`Foster’s Australia Limited v. Cash’s (Australia) Pty Ltd,
`[2013] FCA 527 .................................................................................................... 3
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`STATUTES
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`Pre-AIA 35 U.S.C. § 103(c) ....................................................................................... 1
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`Australian Patents Act 1990, § 15 .............................................................................. 3
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`Australian Patents Act 1990, § 29 .............................................................................. 2
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`Australian Patents Act 1990, § 195............................................................................ 3
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`Australian Patents Act 1990, § 196............................................................................ 5
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`REGULATIONS
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`Australian Patent Regulations 1991, Regulation 3.1 ................................................. 4
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`ii
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`Case IPR2016-00537
`Patent 7,156,492
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`EXHIBIT LIST
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`Exhibit #
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
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`Ex. 1010
`Ex. 1011
`Ex. 1012
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`Description
`U.S. Patent No. 7,156,492 to Silverbrook et al.
`Declaration of Stephen Pond, Ph.D. (“Pond Decl.”)
`File History of U.S. Patent 7,156,492
`U.S. Patent No. 5,565,900 to Cowger et al.
`WO 01/02172 A1 to Silverbrook et al.
`U.S. Patent No. 6,428,142 to Silverbrook et al
`U.S. Patent No. 5,682,186 to Bohorquez et al.
`Curriculum Vitae of Stephen Pond, Ph.D.
`Foster’s Australia Limited v. Cash’s (Australia) Pty Ltd [2013]
`FCA 527
`General Correspondence re AU Pat. No. 2002240728 (excerpted)
`Australian Patent Regulations 1991 (excerpted)
`Australian Patents Act 1990 (excerpted)
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`iii
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`
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`I.
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`INTRODUCTION
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`Case IPR2016-00537
`Patent 7,156,492
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`As authorized by the Board (IPR2016-00537, Paper 8.), this Reply addresses
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`misrepresentations made in Patent Owner’s Preliminary Response regarding
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`whether one of the references raised in the Petition, namely U.S. Patent No.
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`6,428,142 (hereinafter “’142 patent”), qualifies as prior art under pre-AIA 35
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`U.S.C. § 103(c) (hereinafter “pre-AIA 103(c)”).
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`On May 9, 2016, Patent Owner filed its Preliminary Response arguing that
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`pursuant to pre-AIA 103(c), the ’142 patent does not qualify as prior art because, at
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`the time of the alleged invention of U.S. Patent No. 7,156,492 (hereinafter “’492
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`patent”), both were owned by Silverbrook Research Pty. Ltd. (hereinafter “SR”).
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`Under pre-AIA 103(c), a prior art patent cannot be relied upon to show
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`obviousness if it was owned by, or was under obligation to be assigned to, the
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`same entity as the challenged patent “at the time the claimed invention was made.”
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`Patent Owner asserts that the claimed “invention was made” when the Australian
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`Provisional Patent (PR3996), to which the challenged ’492 patent claims priority,
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`was filed, i.e., on March 27, 2001. Prelim. Resp. at 19-20. Thus, assuming
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`arguendo that this date is correct, the ’142 patent qualifies as prior art unless Patent
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`Owner can show that on March 27, 2001, both PR3996 and the ’142 patent were
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`owned by, or under an obligation to be assigned to, the same entity.1 Patent
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`1 To avoid prior art in the related district court litigation, Patent Owner asserts a
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`priority date of no later than October 19, 2000. Patent Owner cannot choose
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`1
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`Case IPR2016-00537
`Patent 7,156,492
`Owner, however, has failed to make any such showing. Rather, Patent Owner
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`merely indicates that the purported Applicant that filed the Australian provisional
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`patent application PR3996 was the same as the purported Owner of the ’142
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`patent.2 This proves nothing, because under Australian law the Applicant need not
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`be—and often is not—the Owner. As such, Patent Owner has failed to provide any
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`evidence establishing that SR was the Owner of PR3996 at the time of its filing.
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`Accordingly, the ’142 patent qualifies as prior art and institution of Inter Partes
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`Review on Ground 3 and 4 is warranted.
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`II.
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`PATENT OWNER MISREPRESENTS AUSTRALIAN LAW
`A. Australian Law Permits Non-Owners to File Patent Applications
`Under Australian law, any person (including a company) may file a patent
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`application. Ex. 1012, § 29(1) (“A person may apply for a patent for an invention
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`by filing, in accordance with the regulations, a patent request and such other
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`documents as are prescribed.”). However, only a person with entitlement to the
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`invention may be granted a patent:
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`…a patent for an invention may only be granted to a person who: (a) is the
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`different dates of invention for different purposes. In any case, no showing has
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`been made of common ownership as of the PR3996 filing date of March 27, 2001,
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`let alone as of October 19, 2000.
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`2 Patent Owner failed to provide any actual assignments for the ’142 patent, only
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`the summary assignment history from the USPTO website. See Exs. 2001-02.
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`
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`2
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`Case IPR2016-00537
`Patent 7,156,492
`inventor; or (b) would, on the grant of a patent for the invention, be entitled
`to have the patent assigned to the person; or (c) derives title to the invention
`from the inventor or a person mentioned in paragraph (b);….
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`Ex. 1012, § 15(1). Indeed, Australian law is clear that an Applicant need not be the
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`Owner at the time of filing. Ex. 1009, ¶¶ 86-87 (“The effect of ss 15(1) and 29(1)
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`of the Patents Act is that a person may make a valid application for a patent even
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`though not ultimately eligible for the grant of the patent for which application has
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`been made.”).
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`
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`Here, there is no evidence that SR was the Owner of PR3996 at the time of
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`filing. In fact, the only evidence that Patent Owner provided is a print-out from the
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`AU Patent Office website, AusPat. Ex. 2003. According to this website, the
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`“Applicant” of PR3996 is identified as SR; the “Agent” is listed as SR; the
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`“Inventor(s)” section is blank; and it says nothing about ownership.
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`Patent Owner Misrepresents Section 195 And The Facts
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`B.
`Patent Owner claims that the AusPat record is prima facie evidence of
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`
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`ownership, invoking Australian Patents Act 1990, Section 195. See IPR2016-
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`00537, Paper No. 8 at 3. This is incorrect. Section 195 states only that “[t]he
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`Register is prima facie evidence of any particulars registered in it.” Ex. 1012,
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`§195 (emphasis altered). The particulars here show only that SR was the Applicant
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`and the Agent—never the Owner. As discussed above, in Australia one is not
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`required to be the Owner of a patent in order to be the Applicant. In addition,
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`contrary to Patent Owner’s assertion to the Board during the conference call, the
`3
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`Case IPR2016-00537
`Patent 7,156,492
`“Change of ownership” section in the AusPat record does not say “unchanged.”
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`Rather, this section is completely blank. See Ex. 2003. On the same call, Patent
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`Owner argued that the lack of subsequent assignments in the AusPat record means
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`that the Applicant is the Owner. As shown above, this is simply not the case.
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`
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`Moreover, any inference that SR was the Owner at the time of filing is
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`negated by the prosecution history of a later Australian Application claiming
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`priority to PR3996. In Australian Patent No. AU 2002240728, a Notice of
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`Entitlement was submitted on July 28, 2003 asserting that SR was the Owner by
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`operation of the inventors’ employment contracts. See Ex. 1010.3 These alleged
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`contracts were not provided to the AU Patent Office or with the Preliminary
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`Response. Thus, not only did SR fail to provide actual evidence of ownership in
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`AU 2002240728, but the Notice of Entitlement there suggests that SR did not own
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`or have any rights at the time of filing the PR3996 application.
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`Needless to say, Patent Owner provided no such evidence of ownership of
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`PR3996 in the Preliminary Response. Indeed, Patent Owner failed to provide any
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`actual assignments for the ’492 patent, only certain summary assignment histories
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`from the USPTO website. See Exs. 2004-05 (including assignment history for
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`App. No. 10,102,700, but omitting App. Nos. 10/728,922 and 11/250,450).
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`3 While not required for provisional applications (e.g., PR3996), that cannot grant,
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`a Notice of Entitlement was required for AU2002240728. Ex. 1011, Reg. 3.1(2).
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`4
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`Case IPR2016-00537
`Patent 7,156,492
`Moreover, these assignment histories reveal another entity in the chain-of-title,
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`Clamate Pty Ltd, who purportedly assigned its rights in 2012. Ex. 2004. But it is
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`unclear how or when those rights were obtained in the first place—a fact ignored
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`by Patent Owner in its Preliminary Response. Whether this entity owned the
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`relevant rights at the relevant time period can be tested during the trial.
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`Patent Owner should not be permitted to provide new evidence of ownership
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`now, after failing to timely do so in its Preliminary Response. In Australia, a
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`document whose particulars have not been entered into the Register is not typically
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`admissible to prove ownership. See Ex. 1012, § 196. In any event, the appropriate
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`time to introduce any new evidence is after institution of the trial, where Patent
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`Owner will have an opportunity to present further arguments in its Response, and
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`Petitioner will be able to address any new evidence or request additional discovery.
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`Because Patent Owner has failed to show that the prior art subject matter and
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`the claimed invention were, at the time the claimed invention was made, owned by
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`the same person or subject to an obligation of assignment to the same person,
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`Patent Owner’s pre-AIA 103(c) arguments should be rejected and Inter Partes
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`Review should be instituted on Grounds 3 and 4.
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`Date: June 24, 2016
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`Respectfully submitted,
`By /Dion M. Bregman/
`Dion M. Bregman
`USPTO Reg. No. 45,645
`MORGAN, LEWIS & BOCKIUS LLP
`Attorneys for Petitioner HP Inc.
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`5
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`Case IPR2016-00537
`Patent 7,156,492
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Reply to
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of
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`United States Patent No. 7,156,492 and supporting exhibits were served on June
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`24, 2016 by email to:
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`jimglass@quinnemanuel.com
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`marckaplan@quinnemanuel.com
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`johnmckee@quinnemanuel.com
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`Date: June 24, 2016
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`By: /Dion M. Bregman/
`Dion M. Bregman
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`650.843.4000
`650.843.4001 (fax)
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