UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`RUBICON COMMUNICATIONS, LP
`Petitioner,
`
`v.
`
`LEGO A/S
`Patent Owner.
`____________
`
`Case IPR2016-01187
`Patent 8,894,066
`____________
`
`
`
`
`
`PETITIONER’S RESPONSE TO NOTICE OF IDENTIFICATION
`OF IMPROPER NEW MATERIAL
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`RUBICON COMMUNICATIONS, LP
`Petitioner,
`
`v.
`
`LEGO A/S
`Patent Owner.
`____________
`
`Case IPR2016-01187
`Patent 8,894,066
`____________
`
`
`
`
`
`PETITIONER’S RESPONSE TO NOTICE OF IDENTIFICATION
`OF IMPROPER NEW MATERIAL
`
`
`
`
`
`The Board has rejected the contention that “Petitioner cannot submit
`
`additional, belated evidence in its Reply that supports its Petition if it could have
`
`been presented in a prior filing.” The Toro Co. v. MTD Products Inc., IPR2016-
`
`00219, Paper 38 at 7 (May 10, 2017) (concluding that “[t]his statement of the law
`
`is wrong”). The Board clarified:
`
`Our Rule instead states that “[a] reply may only respond to arguments
`raised in the corresponding . . . patent owner response.” 37 C.F.R. §
`42.23. The mere fact that a Reply presents evidence that was not in
`the record previously does not make that evidence improper. See
`Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d
`1360, 1367 (Fed. Cir. 2016) (“The purpose of the trial in an inter
`partes review proceeding is to give the parties an opportunity to build
`a record by introducing evidence—not simply to weigh evidence of
`which the Board is already aware.”). Patent Owner blurs “belated
`evidence” with reply evidence; not all evidence first submitted in a
`reply is belated.
`
`Toro at 7-8. Moreover, the Board has held that when a Patent Owner’s Response
`
`contains “affirmative contentions” that the cited art fails to disclose claim
`
`limitations, “[s]uch contentions differ from mere argument that Petitioner has
`
`failed to offer adequate evidence in its Petition,” and a Petitioner may properly
`
`present new rebuttal evidence and argument in response. Nintendo of America,
`
`Inc. v. iLife Technologies, Inc., IPR2015-00112, Paper 39 at 72-73 (April 28, 2016)
`
`(stating that “[t]he very nature of a reply is to rebut the patent owner’s response”).
`
`1
`
`
`
`
`
`Petitioner notes that for each of the allegedly improper arguments identified
`
`by Patent Owner, the Reply contains pinpoint citations to Patent Owner’s
`
`Response identifying the issue in the Response to which Petitioner responds.
`
`These citations are summarized below.
`
`• Petitioner’s discussion of “casing” at 7-8 is responsive to Patent Owner’s
`
`assertions regarding the Petition’s demonstration of this feature. Response
`
`at 15-16.
`
`• Petitioner’s discussion of “casing” at 9-10, “hand grip section” at 15-16,
`
`“exterior shell” at 23-24, and “tactile manipulation” at 28-29, along with
`
`supporting evidence, are responsive
`
`to Patent Owner’s affirmative
`
`contentions that neither Philo nor Anderson “disclose[s] each and every
`
`limitation” of the claims in question. Response at 14 (generally asserting
`
`Philo does not disclose all limitations), 18-19 (casing), 23 (hand grip
`
`section), 28 (generally asserting Anderson does not disclose all limitations),
`
`28-29 (casing/housing), 30-31 (conformably fit), 31 (tactile manipulation).
`
`• Petitioner’s discussion of what is within “common knowledge” to obtain
`
`“predictable results” and the “premise” of the ’066 Patent at 18-19, along
`
`with supporting evidence, are responsive to Patent Owner’s citation of
`
`Arendi, which requires an assessment of these factors in order to distinguish
`
`it. Response at 25-26.
`
`2
`
`
`
`• Petitioner’s discussion regarding Philo’s “casing” at 10-11 and Philo’s
`
`“manipulating” of symbols at 13-14, along with supporting evidence, is
`
`responsive to Patent Owner’s affirmative contentions that Philo does not
`
`disclose these limitations. Response at 14, 18-19, 20.
`
`• Petitioner’s discussion regarding claim 5 and Philo’s “hand grip section” at
`
`15-16, along with supporting evidence, is responsive to Patent Owner’s
`
`affirmative contentions that Philo does not disclose these limitations.
`
`Response at 14, 23.
`
`• Petitioner’s discussion regarding Anderson’s “tactile manipulation” at 27-29
`
`and Anderson’s “controller” and “casing” at 22-26, along with supporting
`
`evidence, is responsive to Patent Owner’s affirmative contentions that
`
`Anderson does not disclose these limitations. Response at 28-29, 30-31.
`
`• Petitioner’s discussion of the claim terms “a portion” and “tactile” at 12, 14,
`
`and 26, along with supporting evidence, is responsive to Patent Owner’s
`
`affirmative contentions that these limitations are not met by Philo or
`
`Anderson, along with Patent Owner’s failure to propose constructions of
`
`these terms. Response at 18, 22, 30-31.
`
`Date: September 29, 2017
`
`
`
`Respectfully submitted,
`
`/ Anthony M. Petro /
`Anthony M. Petro (Reg. No. 59,391)
`
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
`29, 2017 a complete and entire copy of Petitioner’s Response To Notice Of
`Identification Of Improper New Material was provided via Federal Express
`Standard Overnight, to the Patent Owner by serving the correspondence address of
`record as follows:
`
`Andrew M. Riddles
`Elizabeth A. Alquist
`Howard Grossman
`Day Pitney LLP
`7 Times Square
`New York, NY 10036
`
`
`
`
`
`
`
`
`
`
`
`
`
`/ Anthony M. Petro /
`Anthony M. Petro
`Reg. No. 59,391
`tpetro@intprop.com
`MEYERTONS, HOOD,
`KIVLIN, KOWERT &
`GOETZEL
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`(512) 853-8883
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
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