Filed on behalf of: Canon Kabushiki Kaisha
`
`Paper No. ____
`Filed: September 28, 2016
`
`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.
`________________
`
`Case IPR2016-01361
`U.S. Patent 8,909,094
`________________
`
`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Paper No. ____
`Filed: September 28, 2016
`
`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.
`________________
`
`Case IPR2016-01361
`U.S. Patent 8,909,094
`________________
`
`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`DISCRETIONARY DENIAL IS WARRANTED PURSUANT
`
`DISCRETIONARY DENIAL IS WARRANTED PURSUANT
`TO 35 U.S.C. § 314(a).....................................................................................1
`TO 35 U.S.C. § 314(a) ................................................................................... ..1
`
`PETITIONER’S BELATED PRIOR ART SEARCHES DO
`
`PETITIONER’S BELATED PRIOR ART SEARCHES DO
`NOT JUSTIFY ITS SERIAL FILINGS..........................................................2
`
`NOT JUSTIFY ITS SERIAL FILINGS ........................................................ ..2
`
`PATENT OWNER IS PREJUDICED BY PETITIONER’S
`
`PATENT OWNER IS PREJUDICED BY PETITIONER’S
`ACTIONS ........................................................................................................4
`
`ACTIONS ...................................................................................................... ..4
`
`I.
`
`II.
`
`III.
`
`III.
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`Statutes
`
`35 U.S.C. § 314(a) .....................................................................................................1
`
`35 U.S.C. § 315(b) .....................................................................................................4
`
`35 U.S.C. § 325(d) .....................................................................................................1
`
`P.T.A.B.
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00506, Paper 25 (P.T.A.B. Dec. 10, 2014)......................................2
`
`Great West Cas. Co. v. Intellectual Ventures II LLC,
`IPR2016-00453, Paper 12 (P.T.A.B. June 9, 2016) ........................................1
`
`Microsoft Corp. v. Bradium Techs. LLC,
`IPR2016-00449, Paper 9 (P.T.A.B. July 27, 2016).........................................1
`
`NVIDIA Corp. v. Samsung Elecs. Co.,
`IPR2016-00134, Paper 9 (P.T.A.B. May 4, 2016) ......................................1, 2
`
`Toyota Motor Corp. v. Cellport Sys., Inc.,
`IPR2015-01423, Paper 7 (P.T.A.B. Oct. 28, 2015).........................................2
`
`Legislative History
`
`157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) ........................................................2
`
`iii
`
`
`
`Case IPR2016-01361
`U.S. Patent No. 8,909,094
`
`I.
`
`DISCRETIONARY DENIAL IS WARRANTED
`PURSUANT TO 35 U.S.C. § 314(a)
`
`Petitioner’s focus on 35 U.S.C. § 325(d) is a red herring. Here, Patent
`
`Owner relies on 35 U.S.C. § 314(a), which is separate and independent from
`
`§325(d), and affords the Board discretion to deny institution based on factors
`
`beyond the “same or substantially the same prior art or arguments” basis. Pursuant
`
`to § 314(a), and independent from § 325(d), the factors outlined in NVIDIA Corp.
`
`v. Samsung Elecs. Co., IPR2016-00134, Paper 9 (P.T.A.B. May 4, 2016) can
`
`warrant denying institution of a follow-on petition.
`
`See id. at 6-14 (denying
`
`institution on two “alternative” grounds, § 314(a) and § 325(d), each supported by
`
`“[s]eparate [r]easoning”); Great West Cas. Co. v. Intellectual Ventures II LLC,
`
`IPR2016-00453, Paper 12, at 5-14 (P.T.A.B. June 9, 2016) (same).
`
`Patent
`
`Owner’s preliminary response provides ample reason why the Board should deny
`
`institution based on the NVIDIA factors (all of which cut against Petitioner here),
`
`and Patent Owner was not required to make a separate showing under § 325(d).1
`
`See Paper 5, at 5-9.
`
`1 The decision in Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00449, Paper
`
`9 (P.T.A.B. July 27, 2016) upon which Petitioner relies declined to deny
`
`institution under § 325(d), and did not address the NVIDIA factors.
`
`1
`
`
`
`Case IPR2016-01361
`U.S. Patent No. 8,909,094
`
`II.
`
`PETITIONER’S BELATED PRIOR ART SEARCHES
`DO NOT JUSTIFY ITS SERIAL FILINGS
`Contrary to Petitioner’s argument, the NVIDIA factors weigh in favor of, not
`
`against, denying institution. Petitioner asserts it did not know about Yasuda until
`
`May 2016, but fails to address whether it “should have known about” that
`
`reference earlier. See NVIDIA, IPR2016-00134, Paper 9, at 7 (“(4) whether at the
`
`time of filing of the first petition the petitioner knew of the prior art asserted in the
`
`second petition or should have known about it”) (emphasis added). Decisions
`
`giving rise to NVIDIA factor 4 establish that the “should have known about”
`
`language relates to the “availability” of the reference and is akin to the estoppel
`
`standard (“reasonably could have raised”). See NVIDIA, IPR2016-00134, Paper 9,
`
`at 7, n.3; Conopco, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper 25, at 4-
`
`5 (P.T.A.B. Dec. 10, 2014) (discussing “known or available” and relationship to
`
`the estoppel standard); Toyota Motor Corp. v. Cellport Sys., Inc., IPR2015-01423,
`
`Paper 7, at 8 (P.T.A.B. Oct. 28, 2015) (“known or available”). Thus, NVIDIA
`
`relates to prior art that a “skilled searcher conducting a diligent search reasonably
`
`could have been expected to discover.” 157 Cong. Rec. S1375 (daily ed. Mar. 8,
`
`2011) (statement of Sen. Kyl).
`
`Yet Petitioner has not explained what steps, if any, it took to identify prior
`
`art before filing its first petition or why the applied reference was not available
`
`2
`
`
`
`Case IPR2016-01361
`U.S. Patent No. 8,909,094
`
`sooner. Petitioner also has not explained why it waited more than a month after
`
`the Board denied institution in prior IPR2015-01954 to conduct the search that
`
`identified Yasuda.
`
`In light of prior proceedings between the parties, Petitioner
`
`“should have” conducted any necessary searches before filing its first petition, and
`
`certainly before April 2016. Petitioner was sued for infringement of related U.S.
`
`Patent No. 7,647,012 in March 2012 (Ex. 2204), and in that case Petitioner’s
`
`declarant, Dr. Springett, submitted expert reports unsuccessfully attacking that
`
`patent’s validity in May and June 2014 (Ex. 2205; Ex. 2206). Petitioner was
`
`served with an ITC complaint alleging infringement of the presently challenged
`
`U.S. Patent No. 8,909,094 (“the ’094 patent”) claims in July 2015 (Ex. 2207) (and
`
`was provided with a courtesy copy of the ITC complaint a month earlier, see Ex.
`
`2208). Petitioner was also made aware of the deficiencies in its first petition on
`
`December 22, 2015 when it received Patent Owner’s preliminary response in
`
`IPR2015-01954, and learned that trial would not be instituted based on that petition
`
`on March 9, 2016. Under these circumstances, Petitioner has no excuse for
`
`waiting until April 11, 2016 to start the relied upon prior art searches.
`
`Moreover, new searches were unnecessary to identify Yasuda. Yasuda is
`
`cited on the face of Matsuoka, the reference Petitioner asserted in IPR2015-01954.
`
`Ex. 2203 at 1 (item 56). And in a May 2014 report, Dr. Springett describes a
`
`3
`
`
`
`Case IPR2016-01361
`U.S. Patent No. 8,909,094
`
`search that returns Yasuda. See Ex. 2205 at ¶ 66 (search terms “toner container
`
`AND detachable”); Ex. 2209 at 22 (item 362); see also Ex. 2210 at 8 (item 129).
`
`III. PATENT OWNER IS PREJUDICED BY PETITIONER’S ACTIONS
`
`Lastly, Petitioner’s argument that Patent Owner would not be prejudiced
`
`because the time bar of 35 U.S.C. § 315(b) provides a self-limiting mechanism that
`
`protects Patent Owner ignores Petitioner’s actions and representations in the very
`
`ITC proceeding from which it asserts the one-year time bar is measured. As set
`
`forth in the preliminary response, upon the institution of the ITC investigation,
`
`Petitioner voluntary agreed not to challenge the validity of the ’094 patent in the
`
`ITC, and acquiesced to a consent order prohibiting it from infringement. Ex. 2201;
`
`Ex. 2202. Petitioner did so with the stated purposes of conserving its resources,
`
`the resources of Patent Owner, and the resources of the ITC. Ex. 2201 at 2, 7-8.
`
`Based upon those representations, Patent Owner had every reason to expect that its
`
`patent would be free from attacks by Petitioner in other forums, and certainly had
`
`no reason to believe that it would be subject to serial attacks before the Board. In
`
`spite of its representations, Petitioner continues to tax the resources of Patent
`
`Owner and the Board with repeated petitions. These actions prejudice Patent
`
`Owner greatly, by forcing Patent Owner to expend time and money to defend its
`
`patent against multiple attacks, where it reasonably would have expected none.
`
`Petitioner passed on its chance to contest validity in the ITC and failed in its
`
`4
`
`
`
`Case IPR2016-01361
`U.S. Patent No. 8,909,094
`
`previous bid to challenge validity before the Board, and should not be given yet
`
`another chance here.
`
`September 28, 2016
`
`Respectfully submitted,
`
`/Edmund J. Haughey/
`Edmund J. Haughey (Reg. No. 44,749)
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER & SCINTO
`Tel: (202) 530-1010
`
`Back-up Counsel:
`
`Michael P. Sandonato (Reg. No. 35,345)
`FITZPATRICK, CELLA, HARPER & SCINTO
`Tel: (212) 218-2100
`
`Justin J. Oliver (Reg. No. 44,986)
`FITZPATRICK, CELLA, HARPER & SCINTO
`Tel: (202) 530-1010
`
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`Fax: (212) 218-2200
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on this date, a
`
`true and correct copy of the foregoing PATENT OWNER’S SUR-REPLY TO
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`was electronically served on the Petitioner at the following email address:
`
`smeyer@lockelord.com
`
`September 28, 2016
`
`/Edmund J. Haughey/
`Edmund J. Haughey (Reg. No. 44,749)
`Lead Counsel for Patent Owner
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