UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ANCESTRY.COM DNA, LLC
`Petitioner
`
`v.
`
`DNA GENOTEK, INC.
`Patent Owner
`
`
`
`Patent No. 8,221,381 B2
`
`_______________
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`Inter Partes Review No. IPR2016-01152
`____________________________________________________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2016-01152
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`Docket No. 604140000013
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`TABLE OF CONTENTS
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`Page
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`I.
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`Introduction ..................................................................................................... 1
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`II.
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`Claim construction .......................................................................................... 6
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`III. The Board should exercise its discretion under Section 325(d) to deny
`the Second Petition ......................................................................................... 6
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`A. Ground 1 presents prior art presented in the First Petition .................. 8
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`B. Ground 1 presents substantially the same argument presented in
`the First Petition ................................................................................... 9
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`C.
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`Petitioner’s serial petition strategy is unjustified ............................... 14
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`1.
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`2.
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`3.
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`Petitioner cannot, and does not attempt to, explain its
`failure to present the O’Donovan/Birnboim combination
`in the First Petition ................................................................... 15
`
`Instituting a second inter partes review would not
`“secure the just, speedy, and inexpensive resolution of
`every proceeding” .................................................................... 21
`
`Chelles and Clarkson are substantially the same as prior
`art presented in the First Petition and Petitioner provides
`no explanation as to why Chelles and Clarkson were not
`presented in the First Petition .................................................. 25
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`IV. The Board should deny the Second Petition because Petitioner fails to
`establish a reasonable likelihood of invalidating any challenged claim
`as obvious ..................................................................................................... 27
`
`A.
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`Petitioner impermissibly relies on the ’381 Patent’s inventors’
`insights ................................................................................................ 29
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`B.
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`Petitioner misunderstands or mischaracterizes Birnboim .................. 32
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`TABLE OF CONTENTS
`(continued)
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`Page
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`C.
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`Petitioner fails to provide an articulated reasoning with some
`rational underpinning to support the legal conclusion of
`obviousness ........................................................................................ 35
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`1.
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`2.
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`Petitioner does not explain why one of skill in the art
`would have considered it obvious to combine or modify
`elements of Birnboim with elements of O’Donovan, or
`obvious to modify the teachings of Birnboim in view of
`the teachings of O’Donovan, to arrive at the claimed
`invention ................................................................................... 36
`
`Petitioner concedes that one of skill in the art would
`recognize that O’Donovan’s piercing members are
`inappropriate for threaded engagements, like Birnboim’s
`engagements ............................................................................. 40
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`3.
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`Chelles and Clarkson do not remedy the deficiencies of
`Petitioner’s analysis of Birnboim and O’Donovan .................. 42
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`V.
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`Conclusion .................................................................................................... 43
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`IPR2016-01152
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`Docket No. 604140000013
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Case name,
`KSR, Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ................... 5, 35, 36, 38, 39
`
`Unilever, Inc. v. The Procter & Gamble Co., IPR2014-00506, Paper 17
`(Informative) ........................................................................ 7-9, 16, 17, 20, 25-26
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`SAS Institute, Inc. v. Complement Soft LLC, IPR2013-00581, Paper 15
`(Informative) .......................................................................................... 17, 20- 22
`
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations, LLC, IPR2014-
`01080, Paper 17 ................................................................................ 17-20, 22, 23
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`Jaiwei Tech, Ltd. v. Richmond, IPR2015-00580, Paper 22 .................... 19, 20, 23
`
`Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 U.S.P.Q.
`543, 547 (Fed. Cir. 1985) .................................................................................... 30
`
`In re Shuman, 361 F.2d 1008, 1012 (C.C.P.A. 1966) ........................................ 30
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`Grain Processing Corp. v. Am. Maize-Prods. Corp., 840 F.2d 902, 907 .......... 30
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`Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012, 217
`U.S.P.Q. 193, 197 (Fed. Cir. 1983) ................................................................... 30
`
`Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570, 38 U.S.P.Q. 2d
`1551, 1554 (Fed. Cir. 1996) .......................................................................... 30-31
`
`In re L.R. Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ......................................... 36
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`Askeladden LLC v. Sean I. McGhie and Brian K. Buchheit, IPR2015-
`00137, Paper 31 .................................................................................................. 38
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`IPR2016-01152
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`STATUTES
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`Docket No. 604140000013
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`35 U.S.C.
`§ 102 ...................................................................................................................... 1
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` 103 ...................................................................................................................... 1
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` 325(d) ........................................................................................................passim
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` §
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` §
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`OTHER AUTHORITIES
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`37 C.F.R.
`§ 42.23 ................................................................................................................... 1
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` 42.1(b) ............................................................................................ 14, 15, 21-25
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` §
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`IPR2016-01152
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`Docket No. 604140000013
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`Patent Owner’s Exhibit List for Inter Partes Review of
`U.S. Patent No. 8,221,381 B2
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`Exhibit Description
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`Exhibit #
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`Resubmitted Petition, IPR2016-00060, Paper 5
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`Petition, IPR2013-00505, Paper 3
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`Petition, IPR2014-00506, Paper 2
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`
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`2001
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`2002
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`2003
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`IPR2016-01152
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`Docket No. 604140000013
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`Patent Owner provides this Preliminary Response under 37 C.F.R. § 42.23
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`and requests relief through denial of institution of inter partes review of all
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`challenged claims of U.S. Patent No. 8,122,381 B2 (“the ’381 Patent”; Ex. 1001).
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`I.
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`Introduction
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`On October 20, 2015, Petitioner filed a petition challenging claims of the
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`’381 Patent on four grounds: (1) claims 1, 2, 4, 5, 8, 15-17, 20, 41, 44, and 49 are
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`anticipated under 35 U.S.C. § 102(e)(2) by U.S. Patent 7,645,424 (“O’Donovan”);
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`(2) claims 1, 7, and 14 are unpatentable under 35 U.S.C. § 103(a) (“Section
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`103(a)”) over O’Donovan in view of WO 98/03265 (“KCCL”); (3) claims 1, 2, 4,
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`5, 11-13, and 15-19 are unpatentable under Section 103(a) as obvious over U.S.
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`Patent No. 6,152,296 (“Shih”) in view of KCCL; and (4) claims 3, 6, 8-10, 20,
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`39-41, 43-47, and 49 are unpatentable under Section 103(a) over Shih in view of
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`WO 2003/104251 (“Birnboim”). (IPR2016-00060, Paper 5, Ex. 2001 (“First
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`Petition”), Table of Contents.) The Board instituted inter partes review on Ground
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`11 and partially (claim 7 only) on Ground 2; the Board denied institution on
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`Grounds 3 and 4. (Decision, IPR2016-00060, Paper 19, p. 21.)
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`1 The claims challenged under Ground 1 in the First Petition’s Table of Contents
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`do not match the instituted claims. The discrepancy follows from Petitioner listing
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`claims 1, 2, 4, 5, 8, 15-17, 20, 41, 44, and 49 under Ground 1 in the First Petition’s
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`Docket No. 604140000013
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`In the instant petition, Petitioner offers three grounds to challenge claims
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`included in the First Petition but denied by the Board: (1) claims 3, 6, 9, 10, 39, 40,
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`43, and 45-47 are obvious over Birnboim in view of O’Donovan; (2) claims 18 and
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`19 are obvious over Birnboim in view of O’Donovan and further in view of U.S.
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`Patent Publication No. 2003/0089627 (“Chelles”); and (3) claims 13 and 14 are
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`obvious over Birnboim in view of O’Donovan and further in view of WO
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`2005/023667 (“Clarkson”). (Paper 1 (“Second Petition” or “Petition”), Table of
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`Contents.) Petitioner does not challenge claim 1 in the Second Petition (because
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`the Board instituted review of claim 1 in the First Petition), but Petitioner
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`necessarily analyzes claim 1 to challenge dependent claims 3, 6, 9, 10, 13, 14, 18,
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`19, 39, 40, 43, and 45-47. (Id., pp. 37-38.)
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`The Board should exercise its discretion under 35 U.S.C. § 325(d)
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`(“Section 325(d)”) to deny Ground 1 because Petitioner presents prior art presented
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`in the First Petition. In the First Petition, Petitioner presented O’Donovan for
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`Table of Contents and in the First Petition’s headings (First Petition, Table of
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`Contents & p. 18), but including claims 1, 2, 4, 5, 8, 11, 12, 15-17, 20, 41, 44, and
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`49 in the First Petition’s claim chart for Ground 1 (First Petition, pp. 21-27). The
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`Board instituted inter partes review on the claims analyzed in the First Petition’s
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`claim chart for Ground 1. (Decision, IPR2016-00060, Paper 19, p. 5.)
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`claim 1 and combined Birnboim with another reference for claim 1. In the Second
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`Petition, Petitioner presents the same prior art—Birnboim and O’Donovan—for
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`claim 1.2
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`The Board should deny Ground 1 under Section 325(d) because Petitioner
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`presents substantially the same argument as one presented in the First Petition,
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`namely, that one of skill in the art would combine Birnboim with another reference
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`to arrive at claim 1, and that Birnboim teaches the additional limitations in each of
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`dependent claims 3, 6, 9, 10, 39, 40, 43, and 45-47.
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`Likewise, the Board should deny all grounds under Section 325(d) because
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`Petitioner’s serial petition strategy is unjustified: (1) Petitioner cannot, and does
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`not attempt to, explain its failure to present the current argument in the First
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`Petition (Petitioner used both Birnboim and O’Donovan—the primary combination
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`in the Second Petition—in the First Petition); (2) instituting a second inter partes
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`review would not “secure the just, speedy, and inexpensive resolution of every
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`proceeding” (37 C.F.R. § 42.1(b)); and (3) Chelles and Clarkson are substantially
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`the same as the Shih reference presented in the First Petition (each relates to
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`2 Petitioner does not challenge claim 1 in the Second Petition but Petitioner
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`necessarily analyzes claim 1 to challenge each dependent claim. (Second Petition,
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`pp. 37-38.)
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`releasing substances from a lid into a beverage container), and Petitioner provides
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`no explanation as to why Chelles and Clarkson were not presented in the First
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`Petition.
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`Separate from exercising its discretion under Section 325(d), the Board
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`should also deny the Second Petition because Petitioner fails to establish a
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`reasonable likelihood of invalidating any challenged claim as obvious. Petitioner’s
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`obviousness argument impermissibly relies on the inventors’ insights.
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`Specifically, Petitioner bases its motivation to combine Birnboim and O’Donovan
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`on improvements identified by the ’381 Patent’s inventors and documented in the
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`’381 Patent.
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`Petitioner further fails to establish a reasonable likelihood of invalidating
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`any challenged claim as obvious because Petitioner relies on a misunderstanding or
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`mischaracterization of Birnboim to combine Birnboim and O’Donovan.
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`Specifically, Petitioner erroneously argues that Birnboim identifies a problem with
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`Birnboim’s design and that Birnboim’s alternative embodiments are so incomplete
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`that one of skill in the art would need to look to other references to enable
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`Birnboim’s embodiments.
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`Petitioner fails to establish a reasonable likelihood of invalidating any
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`challenged claim as obvious because Petitioner fails to provide an articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness, just as it did in the First Petition: (1) Petitioner does not explain why
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`one of skill in the art would have considered it (a) obvious to combine or modify
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`elements of Birnboim with elements of O’Donovan, or (b) obvious to modify the
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`teachings of Birnboim in view of the teachings of O’Donovan, to arrive at the
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`claimed invention (Petitioner simply argues that each element of the claims was
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`known in the art and offers soundbites from KSR); (2) Petitioner concedes that one
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`of skill in the art would recognize that O’Donovan’s piercing members are
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`inappropriate for threaded engagements, like the Birnboim engagements
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`(Petitioner’s expert declares that O’Donovan’s piercing member is designed to be
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`transmitted perpendicular to the pierceable member and so would not suffice for
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`rotational movement like in Birnboim’s screw cap); and (3) Chelles and Clarkson
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`do not remedy the deficiencies of Petitioner’s analysis of Birnboim and
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`O’Donovan (Petitioner does not offer Chelles and Clarkson to remedy the
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`deficiencies of combining Birnboim and O’Donovan).
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`Patent Owner respectfully requests denial of institution of all challenged
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`claims of the ’381 Patent because the Board should exercise its discretion to deny
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`the Second Petition and because Petitioner has failed to show a reasonable
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`likelihood of invalidating any challenged claim.
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`Docket No. 604140000013
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`II. Claim construction
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`“Petitioner advances interpretations of only a subset of claim terms that
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`Petitioner believes may be relevant to the present IPR.” (Second Petition, p. 15.)
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`Petitioner devotes 12 pages of the Second Petition (Second Petition, pp. 14-26) to
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`claim construction and Petitioner’s expert, Dr. Terry Layton, devotes one quarter
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`of his supportive declaration (Ex. 1003, pp. 20-54) to claim construction. Neither
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`Petitioner nor Dr. Layton explain why the Board should construe any claim terms.
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`The Board does not need to construe any claim terms to resolve the Second
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`Petition. As explained below, the Board should exercise its discretion under
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`Section 325(d) to deny the Second Petition, and the Board should deny institution
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`because Petitioner fails to establish a reasonable likelihood of invalidating any
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`challenged claim as obvious. Neither conclusion requires construing any claims of
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`the ’381 Patent.
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`III. The Board should exercise its discretion under Section 325(d) to deny
`the Second Petition
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`As set forth in Section 325(d), the Board has broad discretion to deny a
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`petition that raises substantially the same prior art or arguments previously
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`presented to the Office:
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`In determining whether to institute or order a proceeding
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`under this chapter, chapter 30, or chapter 31, the Director
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`may take into account whether, and reject the petition or
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`IPR2016-01152
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`Docket No. 604140000013
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`request because, the same or substantially the same prior
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`art or arguments previously were presented to the Office.
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`(Id.; see also Unilever, Inc. v. The Procter & Gamble Co. (IPR2014-00506, Paper
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`17 (Informative), p. 6 (“As set forth in 35 U.S.C. Section 325(d), the Director, and
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`by extension the Board, has broad discretion to deny a petition that raises
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`substantially the same prior art or arguments previously presented to the Office.”).)
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`Petitioner relies on Birnboim and O’Donovan to teach the elements of
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`claim 1 and all challenged claims in the Second Petition depend from claim 1. The
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`Board should exercise its discretion to deny Ground 1 because Birnboim and
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`O’Donovan were previously presented in the First Petition.
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`The Second Petition argues that one of skill in the art would combine
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`Birnboim with another reference (O’Donovan) to arrive at claim 1, and that
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`Birnboim teaches the additional limitations in each of claims 3, 6, 9, 10, 39, 40, 43,
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`and 45-47. The Board should exercise its discretion to deny Ground 1 because
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`Petitioner presented substantially the same argument in the First Petition: one of
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`skill in the art would combine Birnboim with another reference (Shih) to arrive at
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`claim 1, and that Birnboim teaches the additional limitations in each of claims 3, 6,
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`9, 10, 39, 40, 43, and 45-47.
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`The Second Petition does not attempt to explain why the First Petition
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`omitted the combination of Birnboim and O’Donovan for claims 3, 6, 9, 10, 39, 40,
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`Docket No. 604140000013
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`43, and 45-47. There is no explanation—both references were available to
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`Petitioner and were included in the First Petition. Petitioner simply uses the
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`Board’s denial to have a second chance at the denied claims. For claims 13, 14,
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`18, and 19, Petitioner newly presents Chelles and Clarkson but does not explain
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`why it did not present those references before. The Board should exercise its
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`discretion to deny all challenged claims in the Second Petition because Petitioner
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`fails to provide a justification for failing to previously present the grounds now
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`presented in the Second Petition.
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`A. Ground 1 presents prior art presented in the First Petition
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`In the First Petition, Petitioner challenged claim 1 as anticipated by
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`O’Donovan and challenged claims 3, 6, 8-10, 20, 39-41, 43-47, and 49 as obvious
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`over Birnboim combined with another reference. (First Petition, pp. 50-58.) In
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`this Petition, Petitioner challenges claims 3, 6, 9, 10, 39, 40, 43, and 45-47 as
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`obvious over Birnboim in view of O’Donovan. (Second Petition, pp. 25-51).
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`Thus, Petitioner previously presented the prior art of the Second Petition—
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`O’Donovan and Birnboim—in the First Petition.
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`The Board faced a similar situation when denying institution in Unilever.
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`There, the petitioner filed a serial petition with six references that were cited in the
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`original petition. (IPR2014-00506, Paper 17 (Informative), p. 6.) Three of those
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`references were used as the sole basis for one ground in the serial petition but were
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`Docket No. 604140000013
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`not presented as a combination in the original petition. The Board rejected that
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`ground because the petitioner presented “the same or substantially the same prior
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`art” in the original petition. (Id. (“A ninth ground is based on Reid, Sime, and
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`Cardin, references previously presented in the 505 Petition. On this record, we
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`exercise our discretion and ‘reject the petition’ because ‘the same or substantially
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`the same prior art’ previously was ‘presented to the Office’ in the 505
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`proceeding.”) (internal citations omitted).)
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`The Board should exercise its discretion and deny institution of the
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`challenged claims in the Second Petition because the same prior art, Birnboim and
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`O’Donovan, was previously presented in the First Petition.
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`B. Ground 1 presents substantially the same argument presented in
`the First Petition
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`In the First Petition, Petitioner challenged claims 3, 6, 8-10, 20, 39-41,
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`43-47, and 49 as obvious over Shih in view of Birnboim. Because each of these
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`claims depend from claim 1, Petitioner argued that Shih in view of Birnboim
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`teaches all the limitations of claim 1 and one of skill in the art would be motivated
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`to combine Shih and Birnboim to reach claim 1. For dependent claims 3, 6, 8-10,
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`20, 39-41, 43-47, and 49, Petitioner argued that Birnboim teaches each additional
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`limitation. Petitioner did not challenge claim 1 as obvious over Shih and Birnboim.
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`In the Second Petition, Petitioner similarly does not challenge claim 1 as
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`obvious over Birnboim and O’Donovan but does, like in the First Petition, argue
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`Docket No. 604140000013
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`that O’Donovan and Birnboim teach all the limitations of claim 1 and that one of
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`skill in the art would be motivated to combine O’Donovan and Birnboim. Like in
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`the First Petition, Petitioner challenges that Birnboim teaches each additional
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`limitation of claims 3, 6, 9, 10, 39, 40, 43, and 45-47.
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`The arguments are substantially the same. First, all the limitations of
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`claim 1 are taught by a combination of Birnboim and another reference: in the First
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`Petition, Petitioner presented Birnboim and Shih; in the Second Petition, Petitioner
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`presents Birnboim and O’Donovan.
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`Second, Petitioner argues in both petitions that one of skill in the art would
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`combine Birnboim and another reference to reach claim 1 because there are a lot of
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`options available in this field: in the First Petition, Petitioner argues that one of
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`skill in the art “would have been motivated to combine elements from Shih with
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`Birnboim because both references are directed to container systems for releasably
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`storing a substance” and because both references are similarly classified (First
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`Petition, p. 52); in the Second Petition, Petitioner argues that Birnboim has a
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`problem and there is a large body of references (including O’Donovan) to solve
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`that problem (Second Petition, pp. 36-37).
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`Third, Petitioner argues in both petitions that Birnboim teaches each
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`additional element of the challenged claims. The only difference in the First and
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`Second Petitions is some additional citations to Birnboim and/or explicit
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`Docket No. 604140000013
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`quotations from already-cited portions of Birnboim. The following compares
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`Petitioner’s analysis for claims 3, 6, 9, 10, 39, 40, 43, and 45-47 in the First and
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`Second Petitions.3
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`Claim
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`Comparison of Analysis in First and Second Petitions
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`3
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`Birnboim discloses that about 2 ml of preservative composition, about
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`equal in volume to the volume of saliva sample, should be added. “When
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`the required amount of saliva is collected, it is mixed with 2 ml of a
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`nucleic acid-preserving composition.” (Ex. 1008 at 25:11-13.) “In the
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`examples, the composition is mixed with an equal volume of saliva.” (Ex.
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`1008, 26:5-6; see also Ex. 1008 at 19:23-20:1 23:20-22; 25:6-8; 25:11-13;
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`26:5-6; Ex. 1003 ¶ 240 133.)
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`6
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`Birnboim discloses that the barrier (pierceable membrane; see Birnboim
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`for element [1.8]) “can be press fit, glued, or heat fit into place.” (Ex.
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`1008 at 24:7; see also Ex. 1008 at 25:7; Ex. 1003 ¶ 241 134.)
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`9
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`Birnboim discloses that the container should be configured to receive
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`about 1-2 ml of sample. (See Ex. 1008 at 23:19-22; see also Ex. 1003
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`¶ 243 135.)
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`10
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`Birnboim discloses that the container should be configured to receive
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`about 1-2 ml of sample. (See Ex. 1008 at 23:19-22; see also Ex. 1003
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`¶ 243 135.)
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`3 Deletions identified with strikethrough; additions identified with underline.
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`IPR2016-01152
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`Docket No. 604140000013
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`Claim
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`Comparison of Analysis in First and Second Petitions
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`39
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`See Reasons Shih discloses claim 1 in Ground 3 above, and Reasons Shih
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`and Birnboim disclose claim 1 in Ground 4 above.
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`Birnboim discloses a composition for the stabilization and recovery of a
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`nucleic acid from a biological sample. “The present inventors have
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`developed compositions that render sputum as a viable option to the use
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`of blood as a source of nucleic acids. The compositions provide the
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`advantageous properties of chemical stabilization of nucleic acids and the
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`inhibition of nucleases, including deoxyribonucleases, and microbial
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`growth. Chemical stabilization of the nucleic acids in a saliva sample is
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`achieved through the use of buffers to maintain an appropriate pH, as well
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`as the use of chelating agents to prevent the phenomenon of metal redox
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`cycling or the binding of metal ions to the phosphate backbone of nucleic
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`acids.” (Ex. 1008 at14:2-9; Ex. 1008 at 14:1-18:15; see also Ex. 1003
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`¶ 245 141.)
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`40
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`See Reasons Shih and Birnboim discloses claim 39 in Ground 4 above.
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`Birnboim discloses that the nucleic acid to be recovered and stabilized can
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`be DNA or RNA. “4. The method of claim 1, wherein said nucleic acid is
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`DNA or RNA.” (Ex. 1008 at 30:13; see also Ex. 1008 at 14:1-18:15; Ex.
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`1003 ¶ 246 86, 141.)
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`sd-686210
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`

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`IPR2016-01152
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`Docket No. 604140000013
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`Claim
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`Comparison of Analysis in First and Second Petitions
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`43
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`See Reasons Shih and Birnboim disclose claim 41 in Ground 4 above.
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`Birnboim discloses a nucleic acid preserving substance. “Accordingly, a
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`first aspect of the invention features a composition for preserving nucleic
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`acids that includes a chelating agent, and a denaturing agent, where the
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`pH of the composition is greater than 5.0.” (Ex. 1008 at 5:12-14; Ex.
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`1008 at 1 (Abstract), 7:2-4, 8:13-16, 14:1-18:15; see also Ex. 1003 ¶ 249
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`141.)
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`45
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`See Reasons Shih and Birnboim disclose claim 41 in Ground 4 above.
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`Birnboim discloses prolonged storage of the sample. (See Ex. 1008 at
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`26:13-14; 19: Table 1; see also Ex. 1008 at 18:30-19:7; Ex. 1003 ¶ 251
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`48.)
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`46
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`See Reasons Shih discloses claim 1 in Ground 3 above, and Reasons Shih
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`and Birnboim disclose claim 1 in Ground 4 above.
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`Birnboim further discloses kits for performing the methods of its
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`invention with instructions. (See Ex. 1008 at 24:25-30; see also Ex. 1003
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`¶¶ 168-199, 252 68, 149.)
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`Birnboim further discloses kits for performing the methods of its
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`invention with instructions for using the kits. (See Ex. 1008 at 24:25-30;
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`Ex. 1003 ¶¶ 168-199, 252 68, 149.)
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`47
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`See Reasons Shih discloses claim 1 in Ground 3 above, and Reasons Shih
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`and Birnboim disclose claim 1 in Ground 4 above.
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`Both Shih and Birnboim discloses liquids, e.g., an aqueous solution. See
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`Ex. 1009, 1:12 14; (Ex. 1008 at 5:14-15; see also 8:3-9, 26-28; 10:3-8;
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`11:25-26 26:1-9; Ex. 1003 ¶ 168-199, 253 150.)
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`IPR2016-01152
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`Docket No. 604140000013
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`The Board should exercise its discretion to deny institution of claims
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`challenged in the Second Petition because substantially the same arguments were
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`previously presented in the First Petition.
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`C.
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`Petitioner’s serial petition strategy is unjustified
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`Petitioner cannot explain its failure to present the combination of Birnboim
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`and O’Donovan for claim 1 in the First Petition: Petitioner presented both
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`references in the First Petition, Petitioner presented both references in
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`combinations challenging claim 1, and Petitioner presented Birnboim as
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`challenging the limitations of the dependent claims. Unsurprisingly, Petitioner
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`makes no attempt to explain its failure to include this combination in the First
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`Petition and makes no argument why Petitioner merits a second chance at the
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`denied claims. Because a second chance is not merited, the Board should deny
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`institution of inter partes review on all grounds of the Second Petition.
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`Further, instituting a second inter partes review would not “secure the just,
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`speedy, and inexpensive resolution of every proceeding.” The Board has relied on
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`37 C.F.R. § 42.1(b) (“Section 42.1(b)”) in numerous instances where a petitioner
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`files a serial petition requesting a second chance at denied claims. Here, a second
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`inter partes review on the denied claims of the ’381 Patent would severely
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`prejudice Patent Owner. The Board should deny institution of inter partes review
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`IPR2016-01152
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`Docket No. 604140000013
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`on all grounds of the Second Petition to comply with the Board’s mandate under
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`Section 42.1(b).
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`Finally, the Board should deny institution of inter partes review on
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`Grounds 2 and 3 of the Second Petition because Chelles and Clarkson are
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`substantially the same as prior art presented in the First Petition and Petitioner
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`provides no explanation as to why Chelles and Clarkson were not presented in the
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`First Petition.
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`1.
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`Petitioner cannot, and does not attempt to, explain its
`failure to present the O’Donovan/Birnboim combination in
`the First Petition
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`In the First Petition, Petitioner argued that O’Donovan combined with
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`another reference rendered claim 1 obvious, that Birnboim combined with another
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`reference renders claim 1 obvious, and Birnboim teaches all the limitations of
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`dependent claims 3, 6, 9, 10, 39, 40, 43, and 45-47.
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`The Second Petition merely states:
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`The grounds presented in this [Second] Petition challenge
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`certain dependent claims for which trial was not
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`instituted in the first IPR, on grounds different from those
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`advanced in the first IPR. Each ground addresses a
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`non-overlapping subset of the remaining claims, using
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`combinations of art that best show the features of the
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`dependent claims.
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`(Second Petition, p. 73.)
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`IPR2016-01152
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`Docket No. 604140000013
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`Petitioner cannot say that it was unaware of the prior art it now presents for
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`claims 3, 6, 8-10, 20, 39-41, 43-47, and 49: Petitioner unquestionably had
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`O’Donovan and Birnboim at its disposal. Petitioner cannot now say that the
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`argument for claims 3, 6, 8-10, 20, 39-41, 43-47, and 49 is new: Petitioner
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`unquestionably combined O’Donovan and Birnboim with other references to argue
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`claim 1 is obvious and argued that Birnboim teaches all the limitations of claims 3,
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`6, 8-10, 20, 39-41, 43-47, and 49. Under Section 325(b), Petitioner does not
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`warrant a second chance at the claims denied in the First Petition.
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`In Unilever, Inc. v. Procter & Gamble Co., the petitioner filed a serial
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`petition with six references that were cited in the original petition. (IPR2014-
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`00506, Paper 17 (Informative), p. 6.) In the original petition, the Unilever
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`petitioner offered two references (Reid and Cardin) as a combination for one
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`ground and discussed the other reference (Sime) as an example of the state of the
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`art for a completely different ground. (IPR2013-00505, Paper 3 (Ex. 2002), pp. 7,
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`23.) In the serial petition, the petitioner offered the three references (Reid, Cardin,
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`and Sime) as a new combination. (IPR2014-00506 (Ex. 2003), Paper 2, p. 10.)
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`The Board rejected that new ground under Section 325(b) because the petitioner
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`presented “the same or substantially the same prior art” in the original petition.
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`(IPR2014-00506, Paper 17 (Informative), p. 6 (“A ninth ground is based on Reid,
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`Sime, and Cardin, references previously presented in the 505 Petition. On this
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`IPR2016-01152
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`Docket No. 604140000013
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`record, we exercise our discretion and ‘reject the petition’ because ‘the same or
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`substantially the same prior art’ previously was ‘presented to the Office’ in the 505
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`proceeding.”) (internal citations omitted).) Petitioner does the same here: both of
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`O’Donovan and Birnboim were presented in the First Petition, albeit not in the
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`same combination. As in Unilever, the Board should reject all grounds in the
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`Second Petition because Petitioner presents the same or substantially the same
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`prior ar.
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`In SAS Institute, Inc. v. Complement Soft LLC, the petitioner filed a serial
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`petition with a number of references that were used in the original petition, asking
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`for a second chance at the claims denied in the original petition. (IPR2013-00581,
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`Paper 15 (Informative).) In denying review, the Board observed that “SAS does
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`not explain why, even though both Oracle Primer and Oracle8 Primer were
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`included in the first petition, these newly presented combinations were not raised
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`in the prior petition.” (Id., p. 22.) So too here, Petitioner makes no attempt to
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`explain why, even though both Birnboim and O’Donovan were included in the
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`First Petition, the newly presented combination of Birnboim and O’Donovan was
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`not raised in the First Petition.
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`In Zimmer Holdings, Inc. v. Bonutti Skele