`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`BOREALIS AG
`Petitioner
`
`v.
`
`BERRY PLASTICS CORPORATION,
`Patent Owner
`___________________
`
`Case IPR2016-00564
`Patent 8,883,280
`Filed: February 12, 2016
`___________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`155504743v.1
`
`1
`
`
`
`Case IPR2016-00564
`Patent No. 8,883,280
`Docket No.: 2212049.00121US2
`
`Introduction
`Petitioners filed the above-captioned inter partes review petition to challenge
`
`
`
`I.
`
`the validity of claims 1, 15-36, 40, 42, 43, 54-61, 63, and 64 of U.S. Patent No.
`
`8,883,280 (“the ‘280 Patent”). Berry Plastics Corporation (“the Patent Owner”)
`
`respectfully submits this preliminary response to the petition.
`
`II.
`
`Statutory Disclaimers Under 37 C.F.R. § 1.321(a)
`
`The Patent Owner previously disclaimed claims 1-14, 36-42, 44-48, 51-54, 61,
`
`62, 65, and 66 of the ‘280 Patent in statutory disclaimers filed on March 9, 2016, and
`
`March 22, 2016. Copies of the disclaimers and related documents are of record in
`
`this proceeding as Exhibits 2101 and 2102.
`
`The Patent Owner has now also disclaimed claims 15-35, 43, 55-60, 63, and 64
`
`of the ‘280 Patent under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a).
`
`A copy of the submission of a Form PTO/SB/43 and related documents effecting this
`
`disclaimer is attached as Exhibit 2103. The filing of this statutory disclaimer is not an
`
`admission or acquiescence by Patent Owner regarding the merits of Petitioner’s
`
`challenge to the disclaimed claims. Patent Owner disagrees with Petitioner’s
`
`arguments in the petition and reserves the right to rebut such arguments with respect
`
`to any other patents and/or patent applications.
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`155504743v.1
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`2
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`
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`III. Conclusion
`Because all of the claims challenged in the above-captioned petition are no
`
`Case IPR2016-00564
`Patent No. 8,883,280
`Docket No.: 2212049.00121US2
`
`longer at issue, an inter parties review should not be instituted. See 37 C.F.R.
`
`§ 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”)
`
`The Patent Owner respectfully requests that the petition be dismissed.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with IPR 2016-00564 to its Deposit Account 080219.
`
`
`
`Respectfully Submitted,
`
`/Yung-Hoon Ha/
`
`Yung-Hoon Ha
`Registration No. 56,368
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`250 Greenwich Street
`New York, NY 10007
`
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`155504743v.1
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`3
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`Case IPR2016-00564
`Patent No. 8,883,280
`Docket No.: 2212049.00121US2
`
`CERTIFICATE UNDER 37 CFR § 42.24(d)
`
`
`
`
`
`Under the provisions of 37 CFR § 42.24(d), the undersigned hereby certifies
`
`that the word count for the foregoing Patent Owner’s Preliminary Response totals 301
`
`words, as counted by the word processing program used to prepare this paper, which
`
`is less than the 14,000 words allowed under 37 CFR § 42.24(a)(i).
`
`
`
`
`
`Respectfully submitted,
`
`/Yung-Hoon Ha/
`
`Yung-Hoon Ha
`Registration No. 56,368
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`250 Greenwich Street
`New York, NY 10007
`
`
`155504743v.1
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`4
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`
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`Pursuant to 37 C.F.R. § 42.63(e) Patent Owner submits the following current
`
`Case IPR2016-00564
`Patent No. 8,883,280
`Docket No.: 2212049.00121US2
`
`
`
`Exhibit List and Exhibit 2103.
`
`Exhibit
`2101
`
`2102
`
`2103
`
`Description
`Statutory disclaimer and related documents filed in U.S. Patent
`No. 8,883,280 on March 9, 2016
`Statutory disclaimer and related documents filed in U.S. Patent
`No. 8,883,280 on March 22, 2016
`Statutory disclaimer and related documents filed in U.S. Patent No.
`8,883,280 on May 23, 2016
`
`
`
`
`
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`155504743v.1
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`5
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`Case IPR2016-00564
`Patent No. 8,883,280
`Docket No.: 2212049.00121US2
`
`
`
`
`
`Certificate of Service
`
`I hereby certify that on May 23, 2016, I caused a true and correct copy of the
`
`foregoing materials:
`
`Patent Owner’s preliminary response under 37 C.F.R. § 42.107
`
`Exhibit 2103
`
`•
`
`•
`
`
`
`to be served via email on the following attorneys for Petitioner:
`
`Mark J. Feldstein
`mark.feldstein@finnegan.com
`
`Joshua L. Goldberg
`joshua.goldberg@finnegan.com
`
`Hojung Cho
`hojung.cho@finnegan.com
`
`
`
`
`/Yung-Hoon Ha/
`
`Yung-Hoon Ha
`Registration No. 56,368
`
`
`155504743v.1
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`6
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