UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER ACCOMMODATING CONTAINER
`AND IMAGING FORMING APPARATUS
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §108(c)
`
`Case No. IPR2016-01359
`
`NY 829943v.1
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER ACCOMMODATING CONTAINER
`AND IMAGING FORMING APPARATUS
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §108(c)
`
`Case No. IPR2016-01359
`
`NY 829943v.1
`
`
`
`I.
`
`INTRODUCTION
`
`On September 25, 2015, Petitioner General Plastic filed its first Petition
`
`seeking inter partes review of claims 1, 8, 9, 11, 17, 18, 28 and 38 of U.S. Patent
`
`No. 8,909,094 (“the ‘094 patent,” Ex. 1001) under 35 U.S.C. §102(b) as being
`
`anticipated by Matsuoka U.S. Patent No. 5,903,806 (“Matsuoka”) (Ground 1) and
`
`claims 1, 7-9, 11, 16-18, 29 and 38 under §103 as being obvious over Matsuoka
`
`(Ground 2). Under Ground 1, Petitioner correlated the recited sealing member
`
`with Matsuoka toner cartridge’s fixed cover 32 and the copier’s rotary power
`
`transmitting member 44 that become engaged only when the toner cartridge 30 is
`
`inserted into the copier. For Ground 2, Petitioner argued that the toner cartridge 30
`
`could be withdrawn from the Matsuoka copier with the copier’s power transmitting
`
`member 44 still attached to the toner cartridge’s fixed cover 32. The Board denied
`
`institution on both Grounds 1 and 2 of the first Petition.
`
`On July 8, 2016, Petitioner General Plastic timely filed its Second Petition
`
`which seeks inter partes review of claims 1, 7-9 and 29 under §103 as being
`
`obvious over Suzuki (Ex. 1006) and Ikesue (Ex. 1007). Because the Second
`
`Petition was timely filed, Patent Owner has not been unduly prejudiced. See
`
`Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00449, Decision (Paper 9) at
`
`p. 8 (P.T.A.B. July 27, 2016) (“the one year statutory time bar for filing a petition
`
`imposed by 35 U.S.C. §315(b) provides a self-limiting mechanism that protects
`
`NY 829943v.1
`
`- 1 -
`
`
`
`Patent Owner
`
`from prejudice resulting from serial attacks by the same
`
`Petitioner.”).
`
`II.
`
`THE SECOND PETITION SHOULD NOT BE DENIED FOR
`REASONS WITHIN THE BOARD’S DISCRETION
`
`Patent Owner Canon seeks to have the Board exercise the discretion
`
`accorded to it under just 35 U.S.C. §314(a) to deny the subject Second Petition.
`
`See Preliminary Response (Paper 5) at pp. 4-10. However, in all of the cases cited
`
`by Patent Owner, the Board exercised its discretion to deny institution under
`
`§§314(a)/324(a) and §325(d).
`
`See NVIDIA Corp. v. Samsung Elec. Co.,
`
`IPR2016-00134, Decision (Paper 9) at pp. 6-14 (P.T.A.B. May 4, 2016); Great
`
`West Cas. Co. v.
`
`Intellectual Ventures II LLC,
`
`IPR2016-00453, Decision
`
`(Paper 12) at pp. 5-14 (P.T.A.B. June 9, 2016); Conopco, Inc. v. Procter & Gamble
`
`Co., IPR2014-00506, Decision (Paper 25) at pp. 4-5 (P.T.A.B. Dec. 10, 2014);
`
`Travelocity.com L.P. v. Cronos Techs., LLC, CBM2015-00047, Decision (Paper 7)
`
`at pp. 6-7 & 10-13 (P.T.A.B. June 15, 2015); Samsung Elecs. Co. v. Rembrandt
`
`Wireless Techs, LP, IPR2015-00118, Decision (Paper 14) at pp. 4-7 (P.T.A.B.
`
`Jan. 28, 2015); Roche Molecular Sys., Inc. v. Illumina, Inc., IPR2015-01091,
`
`Decision (Paper 18) at pp. 12-14 (P.T.A.B. Oct. 30, 2015).
`
`Patent Owner has not pointed to any Board decision denying a petition
`
`solely under §314(a)/ §324(a), without a finding pursuant to §325(d) that “the same
`
`NY 829943v.1
`
`- 2 -
`
`
`
`or substantially the same prior art or arguments previously were presented to the
`
`Office” in an earlier filed petition.
`
`A.
`
`The Second Petition Does Not Present The Same Or Substantially
`The Same Prior Art Or Arguments As The First Petition
`
`The first Petition relied upon Matsuoka. The subject Second Petition, on the
`
`other hand, relies upon Suzuki (Ex. 1006) and Ikesue (Ex. 1007). Thus, the first
`
`Petition and the Second Petition present different prior art. See Second Petition
`
`(Paper 2) at pp. 2-3. As pointed out in the Second Petition, Suzuki was not
`
`considered by the Examiner during prosecution of the ‘094 patent. Id. at p. 20.
`
`In the first Petition, Petitioner correlated a structural element of Matsuoka’s
`
`copier (i.e., rotary power transmitting member 44) with limitations recited in the
`
`challenged claims. See General Plastic v. Canon, IPR2015-01954, Decision
`
`(Paper 9) at pp. 14-26 (P.T.A.B. Mar. 9, 2016). In the Second Petition, Petitioner
`
`relies upon just the toner cartridges disclosed in Suzuki and Ikesue, without resort
`
`to any copier components as part of its invalidity arguments. Thus, the Second
`
`petition does not present the same or substantially the same prior art or arguments
`
`as the first Petition.
`
`For this reason alone, the Second Petition should not be denied under
`
`§314(a) or §325(d). See Microsoft, IPR2016-00449, Decision (Paper 9) at p. 8
`
`(“Whether Petitioner initially failed to locate references that, in combination,
`
`disclose the claimed features or failed to argue them successfully in its first
`
`NY 829943v.1
`
`- 3 -
`
`
`
`petition, alone, does not immunize Patent Owner from challenges raised in a
`
`second properly filed petition.”). Moreover, each of Suzuki and Ikesue differ
`
`significantly from Matsuoka such that the institution decision on the first Petition
`
`cannot be used as a “roadmap” for the Second Petition. See Id. at p. 9; Atlas
`
`Copco Airpower N.V. v. Kaeser Kompressoren SE, IPR2015-01421, Decision
`
`(Paper 8) at pp. 7-8 (P.T.A.B. Dec. 28, 2015).
`
`B.
`
`As Of The Filing Of The First Petition, Petitioner Was Unaware
`Of Suzuki
`
`NVIDIA Factors (4) and (6) cut against a denial of the Second Petition under
`
`§314(d). On September 25, 2015, Petitioner filed its first Petition. On March 9,
`
`2016,
`
`the Board denied institution on the first Petition. On April 8, 2016,
`
`Petitioner filed a request for rehearing. On or about April 11, 2016, Petitioner
`
`initiated two new prior art searches. See Ex. 1009, Hsieh Decl. at ¶¶3-4.
`
`Petitioner first found Suzuki on May 3, 2016 and transmitted a copy thereof
`
`to its IPR counsel on June 3, 2016. See Id. at ¶¶7-8. On July 1, 2016, a certified
`
`English translation of Suzuki was obtained. See Ex. 1006 at p. 12. Patent Owner
`
`contends that Suzuki teaches nothing beyond Ikesue. See Preliminary Response at
`
`p. 8. Patent Owner is simply wrong.
`
`In Suzuki, when the inner cap 3 is pulled
`
`away from the container main unit 2, a rotational force applied to the inner cap’s
`
`protruding portion 13 will rotate the container main unit 2. See Second Petition at
`
`pp. 27-28. Patent Owner has not shown that the rotation of Ikesue’s lid 15 would
`
`NY 829943v.1
`
`- 4 -
`
`
`
`rotate the toner container so as to be duplicative of Suzuki. Cf. Second Petition at
`
`pp. 31-35.
`
`Slightly more than two months after Suzuki was first found on May 3, 2016,
`
`Petitioner timely filed its Second Petition on July 8, 2016, including the expert
`
`declaration of Dr. Springett which addresses Suzuki (see Ex. 1008 at ¶¶30-51).
`
`Contrary to NVIDIA Factor (3), the Second Petition challenges only claims 1, 7-9
`
`and 29 of the ‘094 patent, which are a subset of the claims challenged in the first
`
`Petition. Patent Owner asserted those claims of the ‘094 patent against Petitioner
`
`in the ITC Investigation. See Ex. 2002 at p. 1.
`
`III. CONCLUSION
`For the foregoing reasons, the Second Petition should not be denied solely
`
`because Petitioner filed a first Petition on September 25, 2015.
`
`Dated: September 21, 2016
`
`Respectfully submitted,
`
`/s/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
`
`NY 829943v.1
`
`- 5 -
`
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. §§42.6(e)(4) and 42.105(a), the undersigned hereby
`certifies
`that on September 21, 2016 a complete copy of
`the foregoing
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE was served in its entirety via electronic mail, as follows:
`
`Canon094IPR@fchs.com
`
`and
`
`Justin J. Oliver, Esq.
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`(212) 218-2000
`joliver@fchs.com
`
`and
`
`Edmund J. Haughey, Esq.
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`(212) 218-2000
`ehaughey@fchs.com
`
`and
`
`Michael Sandonato, Esq.
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`(212) 218-2000
`msandonato@fchs.com
`
`NY 829943v.1
`
`
`
`Dated: September 21, 2016
`
`/s/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
`LOCKE LORD LLP
`Brookfield Place
`200 Vesey Street, 20th Floor
`New York, New York 10281-2101
`Attorneys for Petitioner
`General Plastic Industrial Co., Ltd.
`
`NY 829943v.1
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