`___________________________
`
`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. IPR2016-01361
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`NY 829947v.1
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`I.
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`INTRODUCTION
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`On September 25, 2015, Petitioner General Plastic filed its first Petition
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`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
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`anticipated by Matsuoka U.S. Patent No. 5,903,806 (“Matsuoka,” Ex. 2203)
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`(Ground 1) and claims 1, 7-9, 11, 16-18, 29 and 38 under §103 as being obvious
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`over Matsuoka (Ground 2). Under Ground 1, Petitioner correlated the recited
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`sealing member with Matsuoka toner cartridge’s fixed cover 32 and the copier’s
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`rotary power transmitting member 44 that become engaged only when the toner
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`cartridge 30 is inserted into the copier. For Ground 2, Petitioner argued that the
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`toner cartridge 30 could be withdrawn from the Matsuoka copier with the copier’s
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`power transmitting member 44 still attached to the toner cartridge’s fixed cover 32.
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`The Board denied institution on both Grounds 1 and 2 of the first Petition.
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`On July 8, 2016, Petitioner General Plastic timely filed the subject Fourth
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`Petition which seeks inter partes review of claims 1, 7-9, 11, 16-18, 29 and 38
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`under §103 as being obvious over Yasuda (Ex. 1006). Because the Fourth Petition
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`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
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`imposed by 35 U.S.C. §315(b) provides a self-limiting mechanism that protects
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`NY 829947v.1
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`Patent Owner
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`from prejudice resulting from serial attacks by the same
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`Petitioner.”).
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`II.
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`THE FOURTH PETITION SHOULD NOT BE DENIED FOR
`REASONS WITHIN THE BOARD’S DISCRETION
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`Patent Owner Canon seeks to have the Board exercise the discretion
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`accorded to it under just 35 U.S.C. §314(a) to deny the subject Fourth Petition.
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`See Preliminary Response (Paper 5) at pp. 5-9. However, in all of the cases cited
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`by Patent Owner, the Board exercised its discretion to deny institution under
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`§§314(a)/324(a) and §325(d).
`
`See NVIDIA Corp. v. Samsung Elec. Co.,
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`IPR2016-00134, Decision (Paper 9) at pp. 6-14 (P.T.A.B. May 4, 2016); Great
`
`West Cas. Co. v.
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`Intellectual Ventures II LLC,
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`IPR2016-00453, Decision
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`(Paper 12) at pp. 5-14 (P.T.A.B. June 9, 2016); Conopco, Inc. v. Procter & Gamble
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`Co., IPR2014-00506, Decision (Paper 25) at pp. 4-5 (P.T.A.B. Dec. 10, 2014);
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`Travelocity.com L.P. v. Cronos Techs., LLC, CBM2015-00047, Decision (Paper 7)
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`at pp. 6-7 & 10-13 (P.T.A.B. June 15, 2015); Samsung Elecs. Co. v. Rembrandt
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`Wireless Techs, LP, IPR2015-00118, Decision (Paper 14) at pp. 4-7 (P.T.A.B.
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`Jan. 28, 2015); Roche Molecular Sys., Inc. v. Illumina, Inc., IPR2015-01091,
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`Decision (Paper 18) at pp. 12-14 (P.T.A.B. Oct. 30, 2015).
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`Patent Owner has not pointed to any Board decision denying a petition
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`solely under §314(a)/ §324(a), without a finding pursuant to §325(d) that “the same
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`NY 829947v.1
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`or substantially the same prior art or arguments previously were presented to the
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`Office” in an earlier filed petition.
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`A.
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`The Fourth Petition Does Not Present The Same Or Substantially
`The Same Prior Art Or Arguments As The First Petition
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`The first Petition relied upon Matsuoka (Ex. 2203). The subject Fourth
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`Petition, on the other hand, relies upon Yasuda (Ex. 1006). Thus, the first Petition
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`and the Fourth Petition present different prior art. See Fourth Petition (Paper 2) at
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`pp. 2-3. As pointed out in the Fourth Petition, Yasuda was not considered by the
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`Examiner during prosecution of the ‘094 patent. Id. at p. 20.
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`In the first Petition, Petitioner correlated a structural element of Matsuoka’s
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`copier (i.e., rotary power transmitting member 44) with limitations recited in the
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`challenged claims. See General Plastic v. Canon, IPR2015-01954, Decision
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`(Paper 9) at pp. 14-26 (P.T.A.B. Mar. 9, 2016).
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`In the Fourth Petition, Petitioner
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`relies upon just
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`the toner cartridge disclosed in Yasuda, without resort
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`to
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`correlating any copier component with a limitation recited in a challenged claim as
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`part of its invalidity arguments. Thus, the Fourth Petition does not present the
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`same or substantially the same prior art or arguments as the first Petition.
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`For this reason alone, the Fourth Petition should not be denied under §314(a)
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`or §325(d). See Microsoft, IPR2016-00449, Decision (Paper 9) at p. 8 (“Whether
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`Petitioner initially failed to locate references that, in combination, disclose the
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`claimed features or failed to argue them successfully in its first petition, alone,
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`NY 829947v.1
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`does not immunize Patent Owner from challenges raised in a second properly filed
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`petition.”). Moreover, Yasuda (Ex. 1006) differs significantly from Matsuoka
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`(Ex. 2203) such that the institution decision on the first Petition cannot be used as a
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`“roadmap” for the Fourth 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.
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`Dec. 28, 2015).
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`B.
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`As Of The Filing Of The First Petition, Petitioner Was Unaware
`Of Yasuda
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`NVIDIA Factors (4) and (6) cut against a denial of the Fourth Petition under
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`§314(d). On September 25, 2015, Petitioner filed its first Petition. On March 9,
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`2016,
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`the Board denied institution on the first Petition. On April 8, 2016,
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`Petitioner filed a request for rehearing. On or about April 11, 2016, Petitioner
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`initiated two new prior art searches. See Ex. 1008, Hsieh Decl. at ¶¶3-4.
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`On May 9, 2016, Petitioner’s outside search firm first located Yasuda, which
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`was transmitted to Petitioner’s IPR counsel on that same day. See Ex. 1008, Hsieh
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`Decl. at ¶¶6 & 8. Patent Owner contends that Petitioner should be charged with
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`earlier knowledge of Yasuda because Yasuda is listed on the face of Matsuoka.
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`See Preliminary Response at pp. 7-8. However, while Patent Owner cited
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`Matsuoka during prosecution of the ‘094 patent, it did not cite Yasuda. See
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`Ex. 1001 at p. 2. Petitioner should not be held to a higher standard than Patent
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`Owner. See 37 C.F.R. §1.56; Cf. Ex. 1008 at ¶8.
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`NY 829947v.1
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`Less than two months after Yasuda was first found on May 9, 2016,
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`Petitioner timely filed its Fourth Petition on July 8, 2016, including the expert
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`declaration of Dr. Springett which addresses Yasuda (see Ex. 1007 at ¶¶32-91).
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`The first Petition and Fourth Petition both challenged claims 1, 7-9, 11, 16-18, 29
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`and 38 of the ‘094 patent because Patent Owner asserted only those claims of the
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`‘094 patent against Petitioner in the ITC Investigation. See Ex. 2202 at p. 1.
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`III. CONCLUSION
`For the foregoing reasons, the Fourth Petition should not be denied solely
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`because Petitioner filed a first Petition on September 25, 2015.
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`Dated: September 21, 2016
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`Respectfully submitted,
`
`/s/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
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`NY 829947v.1
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`Certificate of Service
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`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
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`NY 829947v.1
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`
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`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.
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`NY 829947v.1