U.S. Patent No. 8,894,066
`Notice of Identification of Improper New Material
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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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`RUBICON COMMUNICATIONS, LP
`Petitioner,
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`v.
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`LEGO A/S
`Patent Owner.
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`Case IPR2016-01187
`Patent 8,894,066
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`NOTICE OF IDENTIFICATION OF
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`IMPROPER NEW MATERIAL
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`Notice of Identification of Improper New Material
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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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`RUBICON COMMUNICATIONS, LP
`Petitioner,
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`v.
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`LEGO A/S
`Patent Owner.
`____________
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`Case IPR2016-01187
`Patent 8,894,066
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`NOTICE OF IDENTIFICATION OF
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`IMPROPER NEW MATERIAL
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`37 C.F.R. § 42.23(b) limits a reply to “only respond to arguments raised in
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`the corresponding opposition . . . .” “‘Respond’ in the context of 37 C.F.R.
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`§ 42.23(b) does not mean embark in a new direction with a new approach as
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`compared to the position originally taken in the Petition.” Duk San Neolux Co. v.
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`Idemitsu Kosan Co., Case IPR2016-00148, slip op. at 20 (PTAB March 29, 2017)
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`(Paper 35). The Board has emphasized that it “will not attempt to sort proper from
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`improper portions of the reply. Examples of indications that a new issue has been
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`raised in a reply include new evidence necessary to make out a prima facie case for
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`the . . . unpatentability of an original . . . claim, and new evidence that could have
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`been presented in a prior filing.” Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,767 (Aug. 14, 2012). See also Intelligent Bio-Systems, Inc. v. Illumina
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`Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“Unlike district court
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`litigation . . . the expedited nature of IPRs bring with it an obligation for petitioners
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`to make their case in their petition to institute.”); Wasica Fin. GmbH v. Cont'l
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`Auto. Sys., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Rather than explaining how its
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`original petition was correct, [petitioner’s] subsequent arguments amount to an
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`entirely new theory of prima facie obviousness absent from the petition.”).
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`Patent Owner identifies the following new arguments and evidence in
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`Petitioner’s Reply (Paper 72):
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`Petitioner raises new arguments regarding contextual or “inherent” features
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`or requirements of the cited references. See, e.g., Reply at 7–8 (casing), 9–10
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`(casing), 15–16 (hand grip section), 23–24 (exterior shell), 28–29 (tactile
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`manipulation). Petitioner did not make arguments based on context or inherency in
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`the Petition. Petitioner relies on new evidence not cited or discussed in the
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`Petition, offered by way of Kesan Decl. (Ex. 1036), to raise these new arguments.
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`See Kesan Decl. ¶¶ 43–44, 57–58, 71–72, 78; see also Ex. 1044.
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`•
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`Petitioner raises new arguments regarding “predictable results” of
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`combining Philo, Building Robots, and a cellular telephone. Compare Reply at 19,
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`with Petition at 31. Petitioner relies on the following evidence not cited or
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`discussed in the Petition. See Kesan Decl. ¶¶ 65, 67.
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`•
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`Petitioner raises new arguments regarding the “premise” of the ’066 Patent
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`and Claim 7 and the role of a cellular telephone. Compare Reply at 18–19, with
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`Petition at 31. Petitioner relies on the following evidence not cited or discussed in
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`the Petition. See Kesan Decl. ¶¶ 61–65; Ex. 1041; Ex. 1042; Ex. 1043.
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`•
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`Petitioner raises new arguments regarding what elements in Philo are
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`“configured to conformably fit around a portion of a controller.” Compare Reply
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`at 10–11, with Petition at 8–9, 26. Petitioner relies on the following evidence not
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`cited or discussed in the Petition: Ex. 1017 at 12–13; Kesan Decl. ¶¶ 43–47.
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`•
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`Petitioner raises new arguments regarding “changes in response to the user’s
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`keypress to select a difficulty level.” Compare Reply at 13–14, with Petition at
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`25–26. Petitioner relies on the following evidence not cited or discussed in the
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`Petition: Ex. 1017 at 12–13; Kesan Decl. ¶ 53.
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`•
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`Petitioner raises new arguments regarding Claim 5 and “hand grip section.”
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`Compare Reply at 15–16, with Petition at 29. Petitioner relies on the following
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`evidence not cited or discussed in the Petition. See Kesan Decl. ¶¶ 56–58.
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`•
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`Petitioner raises new arguments regarding “tactile manipulation.” Compare
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`Reply at 27–29, with Petition at 43. Petitioner relies on paragraph [0019] and
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`FIGs. 1 and 2 of Anderson, not cited or discussed in the Petition with respect to
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`Claim 4. See also Kesan Decl. ¶ 78.
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`•
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`Petitioner raises new arguments regarding the structural relationship
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`between the putative “controller” and “casing” in Anderson. Compare Reply at
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`22–26, with Petition at 40. Petitioner relies on FIGs. 4 and 6 of Anderson,
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`previously not discussed in the Petition. See also Kesan Decl. ¶¶ 70–73, 75–76.
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`•
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`Petitioner raises new arguments regarding construction of terms not
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`discussed in the Petition, including at least “a portion” and “tactile.” See Reply at
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`12, 14, 26. Petitioner relies on the following evidence not cited or discussed in the
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`Petition. See Kesan Decl. ¶¶ 35–37, 47, 55, 77; Ex. 1038; Ex. 1039; Ex. 1040.
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` Respectfully submitted,
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`Dated: September 22, 2017
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`/Andrew M. Riddles/
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` Andrew M. Riddles (Reg. No. 31,657)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
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`22, 2017, a true and correct copy of the foregoing, via UPS Overnight, was served
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`on the following counsel of record:
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`Anthony M. Petro
`Dean M. Munyon
`Ryan T. Beard
`Geoffrey W. Heaven
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
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`/ Andrew M. Riddles /
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`Andrew M. Riddles
`Registration No. 31,657
`ariddles@daypitney.com
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`Elizabeth A. Alquist
`Admitted Pro Hac Vice
`eaalquist@daypitney.com
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`Day Pitney LLP
`7 Times Square
`New York, NY 10036
`Tel: (212) 297-5855
`Fax: (203) 202-3896
`Counsel for Patent Owner
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