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. IPR2016-01360
`
`NY 829946v.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. IPR2016-01360
`
`NY 829946v.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,” Ex. 1009)
`
`(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`toner cartridge 30 could be withdrawn from the Matsuoka copier with the copier’s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 the subject Third
`
`Petition which seeks inter partes review of claims 1, and 7-9 under §103 as being
`
`obvious over Yoshiki
`
`(Ex. 1006) and Koide (Ex. 1007),
`
`in view of Kato
`
`(Ex. 1008), Matsuoka (Ex. 1009) and Ikesue (Ex. 1010) (Ground 1), and claim 29
`
`as being obvious over Yosiki and Koide, in view of just Ikesue (Ground 2).
`
`Because the Third Petition was timely filed, Patent Owner has not been unduly
`
`prejudiced.
`
`See Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00449,
`
`NY 829946v.1
`
`- 1 -
`
`
`
`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 Patent Owner from prejudice resulting from serial attacks
`
`by the same Petitioner.”).
`
`II.
`
`THE THIRD 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 Third Petition. See
`
`Preliminary Response (Paper 5) at pp. 4-11. 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).
`
`NY 829946v.1
`
`- 2 -
`
`
`
`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
`
`or substantially the same prior art or arguments previously were presented to the
`
`Office” in an earlier filed petition.
`
`A.
`
`The Third Petition Does Not Present The Same Or Substantially
`The Same Prior Art Or Arguments As The First Petition
`
`The first Petition relied upon Matsuoka (Ex. 1009) as the principal reference.
`
`The subject Third Petition, on the other hand, relies upon Yoshiki (Ex. 1006) and
`
`Koide (Ex. 1007) as the principal references. Thus, the first Petition and the Third
`
`Petition present different prior art. See Third Petition (Paper 2) at pp. 2-3. As
`
`pointed out in the Third Petition, this ground was not considered by the Examiner
`
`during prosecution of the ‘820 patent. Id. at p. 21.
`
`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 Third Petition, Petitioner
`
`relies upon just the toner cartridges disclosed in Yoshiki and Koide, without resort
`
`to correlating any copier component with a limitation recited in a challenged claim
`
`as part of its invalidity arguments. In Ground 1 of the Third Petition, Matsuoka is
`
`used only to evidence a motivation to combine, not as a principal reference. See
`
`Third Petition at pp. 33-34. Thus, the Third Petition does not present the same or
`
`NY 829946v.1
`
`- 3 -
`
`
`
`substantially the same prior art or arguments as the first Petition. See 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). Moreover, Matsuoka is not used at all in
`
`Ground 2 of the Third Petition.
`
`For this reason alone, the Third 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 petition, alone,
`
`does not immunize Patent Owner from challenges raised in a second properly filed
`
`petition.”). Moreover, each of Yoshiki (Ex. 1006) and Koide (Ex. 1007) differ
`
`significantly from Matsuoka (Ex. 1009) such that the institution decision on the
`
`first Petition cannot be used as a “roadmap” for the Third Petition. See Id. at p. 9;
`
`Atlas Copco, IPR2015-01421, Decision (Paper 8) at pp. 7-8.
`
`B.
`
`As Of The Filing Of The First Petition, Petitioner Was Unaware
`Of Koide
`
`NVIDIA Factors (4) and (6) cut against a denial of the Third 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. 1012, Hsieh Decl. at ¶¶3-4.
`
`NY 829946v.1
`
`- 4 -
`
`
`
`Koide was not considered during the prosecution of the ‘820 patent. See
`
`Ex. 1001 at pp. 2-3; Preliminary Response at pp. 7-9. Petitioner first found Koide
`
`on May 4, 2016 and transmitted a copy thereof to its IPR counsel on May 6, 2016.
`
`See Id. at ¶¶5 & 8. On July 1, 2016, a certified English translation of Koide was
`
`obtained. See Ex. 1007 at p. 8. The inclusion of one newly uncovered prior art
`
`reference as part of the §103 combination of references is sufficient to avert a
`
`denial of
`
`the
`
`subsequent petition under §325(d).
`
`See Atlas Copco,
`
`IPR2015-01421, Decision (Paper 8) at pp. 7-8 (three of the four prior art references
`
`relied upon in the later Petition were asserted in the earlier Petition).
`
`Patent Owner contends that Koide teaches nothing beyond Yoshiki. See
`
`Preliminary Response at pp. 8-9.
`
`Patent Owner is simply wrong. Yoshiki
`
`expressly discloses that the chuck 10 can move the cap 5 in an axial direction
`
`relative to the bottle body 2. See Third Petition at p. 26. Koide, on the other hand,
`
`expressly discloses that the collect chuck 3 can both axially move and rotate the
`
`cap 2. See Third Petition at pp. 27-29, 48-49, & 66-67.
`
`III. CONCLUSION
`For the foregoing reasons, the Third 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 829946v.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 829946v.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 829946v.1
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