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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`
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`SAMSUNG ELECTORNICS, CO., LTD., SAMSUNG ELECTRONICS AMERICA,
`INC., AND SAMSUNG SEMICONDUCTOR, INC.,
`Petitioners
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner
`_______________
`
`Case IPR2016-00739
`
`Patent 5,591,678
`_______________
`
`PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 5,591,678
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`IPR2016-00739
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`EXHIBIT
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`2001
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`EXHIBIT LIST
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`
`DESCRIPTION
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`Defendants’ Invalidity Contentions and Disclosures
`Pursuant to Patent Rules 3-3 and 3-4, October 2, 2015
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`i
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`TABLE OF CONTENTS
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`IPR2016-00739
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`Page(s)
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`’678 PATENT BACKGROUND .................................................................... 2
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`III. RELEVANT RELATED MATTERS ............................................................. 3
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`A. District Court Litigation ........................................................................ 3
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`B.
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`C.
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`D.
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`E.
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`IPR 2015-01201 .................................................................................... 4
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`IPR2016-00209 ..................................................................................... 5
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`IPR2016-00739 ..................................................................................... 6
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`Petitioners Are Attempting to Frustrate the Litigation ......................... 8
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`IV. THE BOARD SHOULD DENY INSTITUTION ........................................... 9
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`V.
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`CONCLUSION .............................................................................................. 13
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`ii
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`
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`TABLE OF AUTHORITIES
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`IPR2016-00739
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` Page(s)
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`Cases
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper 8 (PTAB October 14, 2014) ................................ 9, 12-13
`
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010) ............................................................................ 7
`
`In re Hilmer,
`359 F.2d 859 (1966) .............................................................................................. 7
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`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited,
`IPR2013-00324, Paper 19 (PTAB November 21, 2013) .......................... 9, 11, 12
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`LG Electronics, Inc. v. ATI Technologies ULC,
`IPR2015-00327, Paper 15 (PTAB September 2, 2015).................................. 9, 11
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`Medtronic, Inc. v. Nuvasive, Inc.,
`IPR2014-00487, Paper 8 (PTAB September 11, 2014)...................................... 10
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`Unilever, Inc. v. The Procter & Gamble Co.
`IPR2014-00506, Paper 17 (PTAB July 7, 2014) ............................................ 9, 12
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`Statutes
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`35 U.S.C. § 102(e) ..................................................................................................... 4
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`35 U.S.C. § 313 .......................................................................................................... 1
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`35 U.S.C. §314(a) ................................................................................................ 9, 11
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`35 U.S.C. § 325(d) ................................................................................................. 1, 9
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`Other Authorities
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`37 C.F.R. § 42.108(a) ........................................................................................... 1, 11
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`iii
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`IPR2016-00739
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`Raytheon Company (“Patent Owner”), respectfully submits this Preliminary
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`Response to the Petition seeking inter partes review of U.S. Patent No. 5,591,678
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`(the “’678 Patent”). This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. §
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`42.107, because it is within three months of the March 21, 2016 date of the Notice
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`granting the Petition a filing date. IPR2016-00739, Paper 4.
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`I.
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`INTRODUCTION
`Patent Owner respectfully submits that the Board should deny inter partes
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`review of the ’678 Patent under 35 U.S.C. §§ 314(a) and 325(d) and 37 C.F.R. §
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`42.108(a). In two different proceedings, the Board has already instituted inter
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`partes review of claims 1-18 of the ’678 patent – the same claims challenged in the
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`present proceeding – based on fourteen (14) separate grounds. Petitioner has not
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`explained how the present Petition does not include substantially the same
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`arguments as those contained in the already-pending IPRs. Rather a review of the
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`Petition shows it raises the same arguments that are being reviewed in the
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`instituted IPRs, including arguments that will be rendered moot by the pending
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`IPRs. The present Petition is yet another part of a serial IPR filing strategy being
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`employed by Petitioner and other parties accused of infringing the ’678 Patent.
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`By filing this Petition almost ten months after the first of numerous petitions
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`filed by cooperating defendants, Petitioner and the three other co-defendants are
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`relying upon this redundant petition to gain a tactical advantage in extending a stay
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`1
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`IPR2016-00739
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`of the underlying litigation for an indeterminate time beyond the December 2016
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`final decision date already set for the first IPR.
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`Patent Owner should not be subject to this serial petition strategy. Rather,
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`given that Petitioner has (1) failed to distinguish the teachings of the references it
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`relies on from those relied on for the two instituted IPRs, and (2) filed its Petition
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`after the decision granting institution in the first IPR, thereby receiving the benefit
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`of the Board’s institution decision, the Board should exercise its discretion to deny
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`this third Petition. Petitioner and the other codefendants should not be allowed to
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`misuse the IPR process in an attempt to gain a tactical advantage in the underlying
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`litigation.
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`II.
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`’678 PATENT BACKGROUND
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`The ’678 Patent, titled “Process of Manufacturing a Microelectronic Device
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`Using a Removable Support Substrate and Etch-Stop,” relates to a method for
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`making a semiconductor developed by engineers at Hughes Corporation (later
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`acquired by Raytheon). Ex. 1001.
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`The inventors of the ’678 Patent, working to improve semiconductors for
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`navigation and national defense applications, realized that enabling access to the
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`back side of a micro-circuit could improve the detection of radiation and light rays,
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`and provide a foundation for stacking other micro-circuits. But gaining access to
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`the back side without destroying the fragile and expensive thin micro-circuits was
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`IPR2016-00739
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`a problem. Their solution was to create a novel fabrication method that would
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`transfer the thin and fragile micro-circuit and wafer from one support to another
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`and then remove the back-side support through the use of an etch stop. Their
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`patented method permits, inter alia, the fabrication of high resolution image
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`sensors known as back-side illuminated sensors. Raytheon has used the invention
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`in the ’678 Patent to make high-resolution image sensors for defense and space
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`applications. Many years after the invention, manufacturers of cameras,
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`computers, and smart phones, in an effort to improve the resolution of cameras in
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`their devices, began using sensors made by the inventive process claimed in the
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`’678 Patent.
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`III. RELEVANT RELATED MATTERS
`A. District Court Litigation
`Patent Owner asserted the ’678 Patent against Petitioner and several other
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`defendants in Raytheon Company v. Sony Corporation, et al., C.A. No. 2:15-cv-
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`342, (E.D. Tex.) and Raytheon Company v. Samsung Electronics Co., Ltd. et al.,
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`C.A. No. 2-15-cv-00341 (E.D. Tex.) (collectively referred to as the “Litigation”).
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`Both cases were filed March 6, 2015 and remain pending. Despite Patent Owner’s
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`opposition, the Litigation was stayed pending resolution of IPR2015-01201, the
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`first of the serial IPRs filed by the defendants. Ex. 1002.
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`3
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`IPR2016-00739
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`The defendants in the Litigation, including Petitioner, are coordinating with
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`respect to defenses, and submitted joint invalidity contentions asserting that the
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`’678 Patent is invalid as anticipated and/or obvious in light of eighty (80) alleged
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`prior art references. Ex. 2001.
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`IPR 2015-01201
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`B.
`On May 14, 2015, Sony (one of the cooperating defendants) filed a petition
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`for inter partes review of claims 1-18 of the ’678 Patent, alleging six separate
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`grounds based on eleven different references. IPR2015-01201, Paper 2, at pp. 2,
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`36. All of the references relied on by Sony were cited in the joint invalidity
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`contentions served in the Litigation. Compare Ex. 2001 Defendants’ Joint
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`Invalidity Contentions, pp. 7-9 (relevant portions highlighted). On December 3,
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`2015, the Board instituted review of claims 1-18 based on six grounds and
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`numerous references. IPR2015-01201, Paper 6, at pp. 23-24 (referred to herein as
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`the “1201 IPR”).
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`Patent Owner filed its Response in the 1201 IPR on March 11, 2016.
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`IPR2015-01201, Paper 22. With its Response, Patent Owner submitted evidence
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`to establish that it conceived of, and reduced to practice, the inventions of the ’678
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`Patent prior to the effective date of Bertin, a 35 U.S.C. § 102(e) reference that had
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`been relied upon by Sony as a primary reference. IPR2015-01201, Paper 22, p. 2.
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`IPR2016-00739
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`C.
`IPR2016-00209
`On November 18, 2015, Sony filed a petition for inter partes review of
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`claims 1-18 of the ’678 Patent, alleging eight separate grounds based on seven
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`references. IPR2016-00209, Paper 2 at pp. 2-3 (referred to herein as the “0209
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`IPR”). All of the references supporting the grounds in the Petition were cited
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`either in the joint invalidity contentions served in the Litigation on October 2, 2015
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`or the ’678 Patent’s file wrapper, served on July 16, 2015. See Ex. 2001, pp. 7-8;
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`see also IPR2016-00209, Exs. 1009, 1011 at p. 5.1 Patent Owner opposed
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`institution because, inter alia, Sony had failed to establish that the validity
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`challenges were not redundant of those in the 1201 IPR. IPR2016-00209, Paper 10
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`at 1. In its decision instituting the IPR, the Board explained that institution was
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`appropriate because (1) the principal reference in the 1201 IPR was 102(e) prior art
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`whereas the principal reference in the 0209 IPR was 102(b) prior art, and (2)
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`Petitioner did not have the benefit of the institution decision in the 1201 IPR in
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`preparing its Petition. IPR2016-00209, Paper 12 at 8-9. As explained more fully
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`below, neither scenario is present here.
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`1 U.S. Patent No. 4,169,000 (“Riseman II”) cited in the ’678 Patent’s file
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`wrapper is a division of Ex. 1009 (“Riseman”) and contains the same disclosures.
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`5
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`IPR2016-00739
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`Accordingly, the ’678 Patent is currently under review, based on fourteen
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`separate grounds and numerous prior art references, in the 1201 and 0209 IPRs.
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`IPR2016-00739
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`D.
`On March 10, 2016, almost ten months after the filing of the 1201 IPR
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`petition, and over three months after the decision instituting the 1201 IPR,
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`Petitioners filed the present IPR Petition. IPR2016-00739, Paper 1. The Petition
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`seeks review of claims 1-18 of the ’678 Patent – the same claims already under
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`review in the two previous IPRs – based on seven separate grounds and numerous
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`prior art references. Id. at pp. 4-5. The primary references relied on by Petitioner,
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`Takahashi and Cade, were cited in the joint invalidity contentions served in the
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`Litigation. Compare Ex. 2001 at pp. 7, 9, Ex. 1005, and Ex.1006. While the
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`Petition contains an assertion that the grounds in its Petition are not redundant of
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`each other, it contains no assertion or explanation on how its validity challenges
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`are not redundant of the grounds pending in the 1201 and 0209 IPRs. Paper 1 at
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`59. Petitioner gives no explanation as to any specific differences between the
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`arguments advanced in its Petition or between the teachings of the references
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`supporting the validity challenges in the present Petition versus the references at
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`issue in the already-pending IPRs.
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`Further, one of the primary references relied on by Petitioner is Takahashi,
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`which Petitioner alleges is prior art under 102(e). Paper 1 at 4-55. The effective
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`IPR2016-00739
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`date of Takahashi, however, is after the effective date of Bertin, the primary 102(e)
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`reference from the 1201 IPR. Compare Paper 1 at 4. (identifying November 13,
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`1991 as the filing date for Takahashi) with IPR2015-01201, Ex. 1017 (Bertin filing
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`date: September 13, 1991).2 Accordingly, the 102(e) issues in the present Petition
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`are redundant of, and will be rendered moot by, the 102(e) issues in the 1201 IPR.
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`In addition, Petitioner asserts that its other primary reference, Cade, is prior
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`art under 102(b). Paper 1 at 4. But Petitioner provides no explanation for how its
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`assertions regarding Cade are not substantially the same as the grounds pending
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`under, for example, Morimoto (in the 1201 IPR) or Liu (in the 0209 IPR), both of
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`which are alleged to be 102(b) references. IPR2015-01201, Paper 2 at 8; IPR2016-
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`00209, Paper 2 at 10. Indeed, Petitioner does not identify any alleged distinction
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`between Cade and the prior art of record in the pending IPRs.
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`2 The face of Takahashi lists foreign priority documents but the effective
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`date under 102(e) of a U.S. Patent is its filing date in the United States, not its
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`foreign priority date. See In re Giacomini, 612 F.3d 1380, 1384 (Fed. Cir. 2010),
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`citing In re Hilmer, 359 F.2d 859 (1966).
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`7
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`IPR2016-00739
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`As explained herein, the Board should deny the present Petition because it is
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`a serial IPR filing3 that presents the same or substantially the same arguments that
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`are already pending in previously instituted IPRs.
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`Petitioners Are Attempting to Frustrate the Litigation
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`E.
`The serial petitions show that the IPR procedure is being used to gain a
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`tactical advantage in the Litigation. The underlying Litigation was stayed pending
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`the 1201 IPR, which is set for a hearing on October 13, 2016. IPR2015-01201,
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`Paper 35. Patent Owner believes that Petitioner filed the present IPR as a tactical
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`measure to extend the stay and frustrate Patent Owner’s efforts to enforce the ’678
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`patent. As previously explained, the primary references cited in the present
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`petition were known to Petitioner no later, and likely much earlier, than October 2,
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`2015. See Exhibit 2002 pp. 7-9. Petitioner offers no reason why it waited almost
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`10 months from the filing of the 1201 IPR, and over 5 months from the service of
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`the invalidity contentions, to file the present Petition. Petitioner makes no
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`allegation that any of the prior art references supporting its contentions were
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`3 Consistent with the defendants’ strategy, on April 28, 2016, Petitioners
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`filed another IPR Petition, the fourth attack on the ’678 Patent. See IPR2016-
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`00962.
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`recently found. Petitioner offers no explanation for why it could not have filed
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`earlier.
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`IV. THE BOARD SHOULD DENY INSTITUTION
`The Board has discretion on whether to institute an IPR. Intelligent Bio-
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`Systems, Inc. v. Illumina Cambridge Limited, IPR2013-00324, Paper 19, at 4
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`(PTAB November 21, 2013) (“Congress made institution discretionary.”); see also
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`35 U.S.C. §314(a). In determining whether to institute, the Board may deny
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`institution on some or all grounds for unpatentability, and may deny institution for
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`some or all challenged claims. Id. Further, the Board can reject a petition where
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`the same or substantially the same arguments were previously presented. Id.
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`(citing 35 U.S.C. § 325(d)).
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`The Board has routinely denied petitions where the Petitioner has failed to
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`establish that the arguments in a second petition are not substantially the same as,
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`or cumulative to, arguments made in a first petition. See, e.g., LG Electronics, Inc.
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`v. ATI Technologies ULC, IPR2015-00327, Paper 15, at 2-4 (PTAB September 2,
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`2015); Unilever, Inc. v. Procter Gamble Co., IPR2014-00506, Paper 17, at 6
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`(PTAB July 7, 2014); IPR2013-00324, Paper 19, at 5-6. The Board has noted the
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`impropriety of allowing petitioners to present serial challenges against Patent
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`Owners. See Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2014-00581,
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`Paper 8, at 13 (PTAB October 14, 2014) (“Allowing similar serial challenges to the
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`IPR2016-00739
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`same patent, by the same petitioner, risks harassment of patent owners and
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`frustration of Congress’s intent in enacting the Leahy-Smith America Invents
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`Act.”)
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`As previously explained, the present Petition challenges the same claims of
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`the ’678 Patent as those that are already at issue in the 1201 and 0209 IPRs that
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`was instituted on multiple grounds and numerous references. Petitioner made no
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`effort to distinguish the teachings of the references relied on in the present Petition
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`from those that support the grounds in the 1201 and 0209 IPRs.
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`The Petition contains a short paragraph addressing redundancy, but
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`Petitioner merely alleges that the grounds within the petition are not redundant of
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`each other. Paper 1 at 59. The Petition, however, makes no showing that the
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`alleged grounds are not substantially similar to those already pending in the 1201
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`and 0209 IPRs. See, e.g., Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Paper
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`8 at 6 (PTAB September 11, 2014) (“While Petitioner argues that the grounds are
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`not redundant to those instituted on in the ‘506 Proceeding, Petitioner does not
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`provide any specific reasoning to support that argument….”). More specifically,
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`the Petition makes no showing that the grounds alleged under Takahashi under
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`102(e) are not substantially similar to the grounds alleged under Bertin under
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`102(e) in the 1201 IPR. Indeed, as explained above, the grounds under Takahashi
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`are redundant of, and rendered moot by, the grounds under Bertin because Patent
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`10
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`IPR2016-00739
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`Owner has submitted evidence in the 1201 IPR to predate Bertin, which has an
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`earlier effective date than Takahashi. Petitioner also has made no showing that its
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`allegations regarding Cade are not substantially the same as the allegations pending
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`with respect to other 102(b) art before the Board in the 1201 and 0209 IPRs,
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`including Liu and Morimoto.
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`In addition, Petitioner has not established that its alleged grounds are
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`substantially different merely because it relies on different prior art references than
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`are at issue in the 1201 and 0209 IPRs. A petitioner cannot establish that its
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`challenges are not redundant simply by relying on a different primary reference.
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`See, e.g., IPR2015-00327, Paper 15, at 2 (“Notwithstanding Petitioner’s
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`application of different primary references, in view of the overlapping arguments
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`and our institution of inter partes review of the same claims in the Companion
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`Case, we exercised our discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
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`(a) and declined to institute against the same claims in this proceeding.”);
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`IPR2014-00487, Paper 8 at 6 (“While Petitioner argues that the grounds are not
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`redundant to those instituted on in the ‘506 Proceeding, Petitioner does not provide
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`any specific reasoning to support that argument, other than to state that the
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`grounds are based on different prior art references.”) (emphasis added ).
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`In IPR2013-00324, the Board denied institution of a second IPR, where --
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`like the scenario here -- the second Petition was based on a different primary
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`11
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`IPR2016-00739
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`reference as a first IPR that had been instituted, and Petitioner had not adequately
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`distinguished the primary reference of the second petition from those involved in
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`the first IPR. IPR2013-00324, Paper 19, at 4-6. Specifically, the Board stated the
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`following:
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`Furthermore, we note that IBS [Petitioner] has not provided any
`justification for filing the instant petition, other than its representation
`that it became aware of the relevance of Odedra after the filing of the
`128 Petition. Pet. 2. IBS does not distinguish any teaching present
`in Odedra that is lacking from Ju, Tsien, or any of the other
`references cited in the 128 Petition. We therefore conclude that the
`128 Petition presented the same, or substantially the same, prior art
`and arguments to the Office as those in the instant petition.
`Id., at 6-7 (emphasis added).
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`Similarly, in the present Petition, Petitioner has made no effort to distinguish
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`the teachings of Takahashi or Cade from Bertin, Liu, Morimoto, or any of the other
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`many references cited in the petitions in the 1201 and 0209 IPRs. Thus, as in
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`IPR2013-00324, the Board should also deny the Petition in this proceeding.
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`In addition, the present Petition was filed several months after institution of
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`the 1201 IPR. Accordingly, Petitioners had the benefit of the institution decision,
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`and the Board has denied serial IPR Petitions that have come after the benefit of
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`institution decisions. IPR2014-00581, Paper 8 at 12-13 (denying institution where
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`Petitioner was able to use a prior institution decision as a roadmap); IPR2014-
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`12
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`IPR2016-00739
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`00506, Paper 17 at 8 (same). As previously explained, Petitioner could have filed
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`its Petition many months ago, and offered no explanation for why it did not do so.
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`Patent Owner should not be subjected to a late-filed serial petition that is not
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`substantially different from the fourteen other grounds from other already-pending
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`IPRs.
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`V. CONCLUSION
`The Petition is a strategic third bite at the apple that is intended to burden
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`Patent Owner and/or lengthen a stay in the underlying Litigation. Petitioner has
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`not adequately distinguished the arguments or teachings in the references in the
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`Petition from those already at issue in the 1201 and 0209 IPRs, in which all claims
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`of the ’678 patent are under review on multiple grounds. Accordingly, the Board
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`should deny institution of the present Petition.
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`13
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`IPR2016-00739
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`Respectfully submitted,
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`/Thomas J. Filarski Reg No 31612/
`Thomas J. Filarski
`Reg. No. 31,612
`tfilarski@steptoe.com
`John L. Abramic
`Reg. No. 51,031
`jabramic@steptoe.com
`Daniel S. Stringfield
`Reg. No. 68,677
`dstringfield@steptoe.com
`Brian Fahrenbach
`Reg. No. 72,603
`bfahrenbach@steptoe.com
`STEPTOE & JOHNSON, LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Telephone: 312-577-1300
`Facsimile: 312-577-1370
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`Counsel for Raytheon Company
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`Date: June 21, 2016
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`Customer Number: 27890
`STEPTOE & JOHNSON LLP
`115 S. LaSalle St.
`Chicago, IL 60603
`Telephone: (312) 577-1252
`Facsimile: (312) 577-1370
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`IPR2016-00739
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that a copy of the foregoing
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`PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
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`REVIEW OF U.S. PATENT NO. 5,591,678, was served in its entirety on June
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`21, 2016 by filing this document through the Patent Review Processing System as
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`well as by delivering a copy via electronic email to the attorneys of record for the
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` Heath J. Briggs (Reg. No. 54,919)
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Email: briggsh@gtlaw.com
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`Patrick J. McCarthy (Reg. No. 62,762)
`Greenberg Traurig, LLP
`2101 L Street NW, Ste. 1000
`Washington, DC 20037
`Email: mccarthyp@gtlaw.com
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`By:
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`/Thomas J. Filarski, Reg No. 31612/
`Thomas J. Filarski
`Registration No. 31,612
`Steptoe & Johnson LLP
`115 S. LaSalle St.
`Chicago, IL 60603
`Telephone: 312-577-1252
`Facsimile:
`312-577-1370
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`Counsel for Raytheon Company
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`Patent Owner’s as follows:
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`Date: June 21, 2016