Paper No.____
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`
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`Filed on behalf of:
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`GEP Power Products, Inc.
`
`By: Michael T. Griggs, Eric J. Lalor, Sarah M. Wong
`BOYLE FREDRICKSON, S.C.
`840 North Plankinton Avenue
`Milwaukee, Wisconsin 53203
`414-225-9755
`mtg@boylefred.com, ejl@boylefred.com, smw@boylefred.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`-------------------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`-------------------------
`
`GEP Power Products, Inc.
`Petitioner
`
`v.
`
`Arctic Cat Inc.
`Patent Owner
`
`-------------------------
`
`Case IPR2016-01385
`Patent 7,072,188
`
`-------------------------
`
`PETITIONER’S REPLY
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`{01109286.DOCX / }
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`
`
`Filed on behalf of:
`
`GEP Power Products, Inc.
`
`By: Michael T. Griggs, Eric J. Lalor, Sarah M. Wong
`BOYLE FREDRICKSON, S.C.
`840 North Plankinton Avenue
`Milwaukee, Wisconsin 53203
`414-225-9755
`mtg@boylefred.com, ejl@boylefred.com, smw@boylefred.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`-------------------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`-------------------------
`
`GEP Power Products, Inc.
`Petitioner
`
`v.
`
`Arctic Cat Inc.
`Patent Owner
`
`-------------------------
`
`Case IPR2016-01385
`Patent 7,072,188
`
`-------------------------
`
`PETITIONER’S REPLY
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`{01109286.DOCX / }
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`I.
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`Grounds A and B
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`As set forth in the Institution Decision, the Board instituted review based
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`upon Grounds A and B (which correspond to Grounds 1 and 2 as presented in the
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`Petition) as follows:
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`A. Anticipation of claims 1–6, 11, 19, 22, and 23 by Boyd; and
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`B. Obviousness of claims 12–18 over Boyd, Svette, and Caveney.
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`Claims 1-6, 11-19, 22, and 23 should be found unpatentable under both of these
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`grounds.
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`A.
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`Patent Owner does not substantively dispute Grounds A
`and B
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`
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`Patent Owner’s only challenge to Grounds A and B is that Boyd does not
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`qualify as prior art under 35 U.S.C. § 102(e). Patent Owner does not substantively
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`dispute Grounds A and B. On the contrary, Petitioner’s primary fact witness,
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`Darrel Janisch, the named inventor of the ‘188 patent, includes a section in his
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`declaration entitled “DOCUMENTARY EVIDENCE THAT THE BOYD
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`PATENT DISCLOSES MY INVENTION,” Janisch Decl. (Ex. 2002), pg. 22. Mr.
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`Janisch then explains that Boyd discloses the invention of the ‘188 patent. See
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`also, Patent Owner Response, pp. 35-46. Accordingly, if the Board finds that
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`Boyd is applicable prior art – which it is – then claims 1-6, 11-19, 22, and 23
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`should be found unpatentable under Grounds A and B.
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`{01109286.DOCX / }
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`1
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`B. Most of Patent Owner’s evidence relating to diligence
`should be excluded, or at the very least accorded no weight
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`Petitioner is submitting a motion to exclude evidence in accordance with the
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`Scheduling Order because many of Patent Owner’s exhibits have not been properly
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`authenticated and also contain hearsay.
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`However, even if the Board does not exclude the challenged exhibits, Mr.
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`Janisch cannot authenticate Tyco documents for purposes of corroboration. See
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`Microsoft Corp., Petitioner, PATENT 6,724,403, 2014 WL 5337868, at *10 (Oct.
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`14, 2014) (“Inventor testimony is not sufficient to authenticate a document offered
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`to corroborate the inventor’s testimony… A document authenticated by only an
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`inventor does not achieve that purpose because it is not sufficiently independent.”).
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`Since Patent Owner failed to submit any independent testimony from Tyco to
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`authenticate and explain Tyco documents, to the extent the Board considers Tyco
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`documents, they should be accorded no weight.
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`C. Mr. Janisch is not a credible witness and his testimony
`should be accorded no weight
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`
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`Mr. Janisch is an Arctic Cat employee and named inventor of the ‘188
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`patent, in other words, an interested witness. The Federal Circuit has warned that
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`the oral testimony of interested witnesses is unreliable. “[T]here is a very heavy
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`burden to be met by one challenging validity when the only evidence is the oral
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`testimony of interested persons and their friends, particularly as to long-past
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`{01109286.DOCX / }
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`2
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`
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`events.” Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed.
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`Cir. 1998). This rationale applies equally to defending patentability, as Mr.
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`Janisch is doing here.
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`Further, Mr. Janisch’s deposition testimony is inconsistent with his
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`declaration testimony, rendering him an unreliable witness. In his declaration (Ex.
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`2002), Mr. Janisch states that so-called inventor notes (Ex. 2012) were “[p]repared
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`before April 1, 2002.” Janisch Decl. (Ex. 2002), pp. 5-18. He repeats this
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`allegation in his supplemental declaration (Ex. 2036), stating that “Patent Owner’s
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`Exhibit 2012 is a true and correct copy of notes reflecting my PDM design that
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`existed at least as early as April 2, 2002.” Janisch Supplemental Decl. (Ex. 2036),
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`pg. 3, ¶ 10.
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`When questioned about Exhibit 2012 during his deposition, however, Mr.
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`Janisch stated that he did not know when the inventor notes were created. See
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`Janisch Transcript (Ex. 1009), 41:7-9 (Q: Again, you don’t – Do you know when
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`the notes were made? A: No, I do not.). This inconsistency draws Mr. Janisch’s
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`credibility into question.
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`D. Even if Patent Owner’s evidence is admissible, it does not
`demonstrate diligence
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`
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`When Petitioner identified Boyd as prior art under § 102(e), the burden of
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`production shifted to Patent Owner to come forth with evidence corroborating
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`{01109286.DOCX / }
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`3
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`
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`Patent Owner’s claim that Mr. Janisch invented the subject matter of the ‘188
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`patent before Boyd’s effective priority date of April 1, 2002.
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`Patent Owner relies upon the October 29, 2002 filing date of the application
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`for the ‘188 patent as the date of the patentee’s constructive reduction to practice.
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`Patent Owner does not claim actual reduction to practice before the application
`
`filing date. Since Boyd was filed nearly seven months prior to the application for
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`the ‘188 patent, Patent Owner must show that the patentee worked diligently in
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`reducing the invention to practice between April 1, 2002 and October 29, 2002.
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`While Petitioner provided the following law in the Petition, it bears
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`repeating here since the diligence issue is dispositive as to Grounds A and B.
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`During the period in which reasonable diligence must be shown, there must be
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`continuous exercise of reasonable diligence. In re McIntosh, 230 F.2d 615, 619
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`(CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591 (CCPA 1949) (referring
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`to “reasonably continuous activity”). A party alleging diligence must account for
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`the entire critical period. Griffith v. Kanamuru, 816 F.2d 624, 626 (Fed. Cir.
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`1987); Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966). Even a short period
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`of unexplained inactivity is sufficient to defeat a claim of diligence. Morway v.
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`Bondi, 203 F.2d 742, 749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99-100
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`(CCPA 1938). In In re Mulder, 716 F.2d 1542, 1542-46 (Fed. Cir. 1983), for
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`{01109286.DOCX / }
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`4
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`example, the Federal Circuit affirmed a determination of lack of reasonable
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`diligence, where the evidence of record was lacking for a two-day critical period.
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`Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was
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`no showing of diligence where no activity was shown during the first thirteen days
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`of the critical period. A party alleging diligence must provide corroboration with
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`evidence that is specific both as to facts and dates. Gould, 363 F.2d at 920;
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`Kendall v. Searles, 173 F.2d 986, 993 (CCPA 1949). The rule of reason does not
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`dispense with the need for corroboration of diligence that is specific as to dates and
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`facts. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see also Coleman v.
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`Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
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`Here, the Petition identifies numerous gaps in the diligence timeline,
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`including gaps of 28, 18, 34, 51, and 73 days based upon the Janisch declarations
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`submitted during prosecution. The Board has found a lack of diligence under
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`circumstances involving gaps of far less magnitude. See, e.g., Microsoft Corp.,
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`Petitioner, PATENT 6,724,403, 2014 WL 5337868, at *12 (Oct. 14, 2014)
`
`(finding a lack of diligence where patentee where no activity performed “on June
`
`29-30, July 1, July 6-8, August 5-6, August 9-10, August 20, August 23, August
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`25-27, September 6-10, September 15, September 20-21, September 24, September
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`28, October 1, October 11, October 14-15, October 20, and October 27.”).
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`{01109286.DOCX / }
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`5
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`
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`Patent Owner attempts to fill in the gaps in its diligence timeline, relying
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`primarily upon the uncorroborated testimony of Mr. Janisch, an employee of Arctic
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`Cat and an interested witness, which is insufficient to establish diligence. See
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`Microsoft at *8-9 (testimony alone is insufficient to establish corroboration;
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`evidence of independent corroboration is required); see also Medichem, S.A. v.
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`Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006) (“[t]he requirement of
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`independent knowledge remains key to the corroboration inquiry”).
`
`1.
`
`The 28-day gap
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`
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`For the first gap of 28 days – between April 1, 2002 and April 29, 2002 –
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`Mr. Janisch asserts two bases for diligence. First, he conclusorily asserts that
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`“further testing was conducted” on the PDM during this 28-day gap. Janisch Decl.
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`(Ex. 2002), pg. 19. While Petitioner and Mr. Janisch refer to two emails that
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`bookend this 28-day gap, they offer no evidence corroborating Mr. Janisch’s
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`assertion that testing occurred during this 28-day gap. Further, assuming arguendo
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`that some testing occurred, there is no evidence of the testing schedule to
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`determine whether testing was conducted in a diligent manner, e.g., whether testing
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`occurred continuously throughout the 28-day period, as would be required to
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`demonstrate diligence. Further, Mr. Janisch confirmed during his deposition that
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`Tyco conducted its testing at a lab in North Carolina, and that he never visited the
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`lab and did not oversee any of Tyco’s testing. Janisch Transcript (Ex. 1009), 46:5-
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`{01109286.DOCX / }
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`6
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`47-15. Thus, he has no personal knowledge of Tyco’s testing and cannot speak to
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`Tyco’s testing activities or schedule.
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`Second, Mr. Janisch asserts that “I continued to work on developing the
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`PDM both internally and with Tyco.” Janisch Decl. (Ex. 2002), pg. 19. However,
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`Petitioner does not offer any independent evidence to corroborate Mr. Janisch’s
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`assertion that he was “developing” the PDM during this 28-day gap. See Microsoft
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`and Medichem. Mr. Janisch points to what purports to be a drawing from Tyco
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`(Ex. 2014), but this drawing (which purports to be dated April 2, 2002), even if
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`accepted as admissible evidence, does not demonstrate diligent development over
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`the course of 28 days.
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`Mr. Janisch’s testimony that he “continued to work on developing the PDM”
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`during the 28 days, without offering any specific details as to what he was doing or
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`any corroborating evidence, falls far short of the evidence required to establish
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`diligence. See Gould, 363 F.2d at 920 (“Gould’s testimony taken as a whole does
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`not set forth adequate facts to support a finding of that continuity of activity which
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`constitutes reasonable diligence. Merely stating that there were no weeks or
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`months that he ‘did not work on the laser’ is not enough, absent supporting facts
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`showing specifically what that ‘work’ consisted of and when it was performed.”).
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`{01109286.DOCX / }
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`7
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`2.
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`The 18-day gap
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`The next gap in the diligence timeline is a gap of 18 days between April 29,
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`2002 and May 17, 2002. Patent Owner again relies upon two emails that bookend
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`this 18-day gap and offers the conclusory, uncorroborated testimony of Mr. Janisch
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`that “Tyco had been diligently testing the PDM” and that “TYCO continued to test
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`and refine various aspects of the PDM at my request at least through May 17,
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`2002.” Janisch Decl. (Ex. 2002), pg. 19. However, Patent Owner offers no
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`independent evidence to corroborate Mr. Janisch’s claim that Tyco was diligently
`
`testing the PDM over the 18 days between the emails.
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`Mr. Janisch further asserts that “I continued to work diligently on
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`developing the PDM both internally and with Tyco.” Janisch Decl. (Ex. 2002), pp.
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`19-20. But Patent Owner has not submitted any independent evidence
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`corroborating Mr. Janisch’s claim that he “diligently” developed the PDM between
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`April 29, 2002 and May 17, 2002, or any explanation as to what Mr. Janisch was
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`doing during that time frame. Mr. Janisch’s claim of “diligent” development
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`during this period should be disregarded. See Gould.
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`3.
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`The 34-day gap
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`
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`The Petition identifies a 34-day gap between May 17, 2002 and June 24,
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`2002 (again between two bookend emails (Exhibits 2016 and 2017)). Patent
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`Owner has attempted to close the gap by identifying a May 21, 2000 email (Ex.
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`{01109286.DOCX / }
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`8
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`2018), which splits the gap into a 3-day gap and a 29-day gap. As before, Mr.
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`Janisch conclusorily asserts that “Tyco continued to test and refine aspects of the
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`PDM” during this gap, Janisch Decl. (Ex. 2002), pg. 20, but Patent Owner submits
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`no independent evidence to corroborate this claim. Mr. Janisch similarly asserts
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`that “Tyco and Arctic Cat continued to diligently test and refine aspects of the
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`PDM from May 21, 2002 through June 24, 2002,” Id., but there is no evidence to
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`corroborate Mr. Janisch’s claim of “diligent” testing and development during this
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`period.
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`
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`4.
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`The 51-day gap
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`The Petition identifies a 51-day gap between June 26, 2002 and August 16,
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`2002. As before, Patent Owner has attempted to close the gap by submitting an
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`email dated June 26, 2002 (Ex. 2020) that divides the 51-day gap into gaps of one
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`day and 48 days. Mr. Janisch repeats his conclusory assertion that “Tyco and
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`Arctic Cat continued to diligently test and refine aspects of the PDM from June 26,
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`2002 through August 16, 2002.” However, Patent Owner fails to provide any
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`independent corroborating evidence detailing the purported testing and
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`development that occurred over those 49 days, let alone evidence indicating that
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`the Arctic Cat and Tyco were working diligently throughout that entire time frame.
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`Thus, Mr. Janisch’s assertion of diligence should be disregarded. See Microsoft
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`and Medichem.
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`{01109286.DOCX / }
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`9
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`5.
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`The 73-day gap
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`The Petition identifies a 73-day gap between August 16, 2002 and October
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`28, 2002. Patent Owner attempts to close the gap by pointing to an email dated
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`October 18, 2002, which splits the 73-day gap into a 62-day gap and a 9-day gap.
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`With respect to the 62-day gap, Mr. Janisch again asserts that “Tyco diligently
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`performed testing on PDMs.” Janisch Decl. (Ex. 2002), pg. 21. But, there is no
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`independent evidence to corroborate this claim. Mr. Janisch also asserts that “I
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`continued to integrate the PDM design into our vehicle harness design” over the
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`course of those 62 days. Id. Similarly, Patent Owner fails to offer any evidence
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`whatsoever to corroborate Mr. Janisch’s claim of diligence, which should be
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`disregarded. See Microsoft and Medichem.
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`E.
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`Even if Petitioner’s evidence of diligence is considered in its
`entirety, Petitioner has not specifically tied its evidence of
`diligence to the claims
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`
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`One requirement of demonstrating diligence is that Patent Owner must
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`specifically tie its proffered evidence of diligence to the claims. Sandisk Corp.
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`Requester, Respondent, APPEAL 2015-001443, 2015 WL 5092840, at *9 (Aug.
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`21, 2015) (rejecting a patent owner’s evidence of diligence because “Patent Owner
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`has not provided persuasive, corroborated evidence of record showing the required
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`diligence for the entire critical period and such evidence was not specifically tied
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`to the claims”).
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`{01109286.DOCX / }
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`10
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`Here, Mr. Janisch’s testimony – which is not corroborated by independent
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`evidence – vaguely refers to “testing” and “developing” the “PDM” over the
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`course of nearly seven months. Neither Patent Owner nor Mr. Janisch identify any
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`evidence suggesting that the purported “testing” and “development” related to the
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`invention as claimed. Accordingly, even if Mr. Janisch’s testimony was
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`sufficiently supported by independent corroborating evidence – which it is not –
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`his general statements as to “testing” and “development” are not tied to the claims
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`and must be accorded no weight.
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`F.
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`Patent Owner has not submitted any evidence
`corroborating Mr. Janisch’s claim of conception
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`
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`Arctic Cat has not submitted any documents showing that the design of the
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`PDM disclosed and claimed in the ‘188 patent originated with Mr. Janisch. There
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`are no design drawings, notebooks, memos, or other documents indicating that Mr.
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`Janisch conceived of the claimed PDM before engaging Tyco to assist with the
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`design.
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`Instead, the earliest dated document is a May 30, 2001 email indicating that
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`the collaborative process between Arctic Cat and Tyco had already begun. See
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`Janisch email (Ex. 2004). There is no record evidence attributing all claimed
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`aspects of the PDM to Mr. Janisch prior to Arctic Cat’s engagement of Tyco.
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`{01109286.DOCX / }
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`11
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`Moreover, the record evidence contradicts Mr. Janisch’s conception claim,
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`indicating that Tyco personnel contributed to the development of various aspects of
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`the PDM. For example, Mr. Janisch points to an email chain between himself and
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`Jerry Dawidziuk of Tyco (Ex. 2007) as purported evidence of Mr. Janisch’s
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`conception of the housing, component attachment portion, removable cover,
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`receptacle openings, distribution harness, outer wall, fastener, and component
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`arrangement guide, among other aspects of the design. Janisch Decl. (Ex. 2002),
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`pp. 5-14.
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`However, the emails in the chain indicate that various design aspects did not
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`originate with Mr. Janisch. In the first email in the chain from Mr. Janisch to Mr.
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`Dawidziuk, Mr. Janisch says “[t]hank you for the e-mailed design proposals for the
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`ATV PCM,” Email chain (Ex. 2007), pg. 2, indicating that Tyco contributed to at
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`least some aspects of the design of the PDM. Accordingly, Petitioner’s reliance
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`upon this email chain (Ex. 2007) as evidence of Mr. Janisch’s conception is
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`misplaced.
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`In another example, Mr. Janisch relies upon Tyco design drawings (Exs.
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`2010 and 2011) as evidence of his conception. See Janisch Decl. (Ex. 2002), pp. 5-
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`14. But these Tyco drawings are not evidence that Mr. Janisch created the design
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`of the PDM – on the contrary, the drawings were created by Tyco. Moreover,
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`{01109286.DOCX / }
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`12
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`Patent Owner has submitted no evidence to corroborate Mr. Janisch’s claim that he
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`is solely and entirely responsible for the PDM shown in Tyco’s drawings.
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`Finally, the Boyd patent itself is countervailing evidence to Mr. Janisch’s
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`claim of conception. Tyco’s application for the Boyd patent leads to the
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`presumption that Tyco and Mr. Boyd believed that Mr. Boyd conceived of the
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`PDM disclosed and claimed in the Boyd patent, which Mr. Janisch concedes is the
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`same PDM disclosed and claimed in his patent. Indeed, Mr. Boyd was required to
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`submit an oath and declaration swearing that Mr. Boyd was the sole inventor of the
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`subject matter disclosed and claimed in the Boyd patent. This is consistent with
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`the evidence of record, including emails indicating that Tyco was responsible for at
`
`least some aspects of the PDM design.
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`G. The declarations of Mr. Christianson and Mr. Kalsnes
`should be accorded no weight
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`
`
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`Patent Owner has submitted the declarations of two longtime Arctic Cat
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`employees, Del Christianson (Ex. 2003) and Kenneth Kalsnes (Ex. 2034), in an
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`attempt to corroborate Mr. Janisch’s claim of inventorship. Like Mr. Janisch, Mr.
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`Christianson and Mr. Kalsnes are interested witnesses, raising serious questions as
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`to the reliability of their testimony. See Woodland Trust.
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`Further, their testimony regarding Mr. Janisch’s purported development is
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`general and vague, and it is not supported by any specific facts or documentary
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`{01109286.DOCX / }
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`13
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`
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`evidence. Gould, 363 F.2d at 920 (“Gould’s testimony taken as a whole does not
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`set forth adequate facts to support a finding of that continuity of activity which
`
`constitutes reasonable diligence. Merely stating that there were no weeks or
`
`months that he ‘did not work on the laser’ is not enough, absent supporting facts
`
`showing specifically what that ‘work’ consisted of and when it was performed.”).
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`For example, Mr. Kalsnes states that “I observed Darrel and his team
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`diligently work on the PDM [from before April 1, 2002 through October 29,
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`2002,” Kalsnes Decl. (Ex. 2034), pg. 2, ¶ 9, without providing any specific facts or
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`explanations as to what was being done during that seven month period. Mr.
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`Christianson makes an equally vague statement in his declaration. Christianson
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`Decl. (Ex. 2003), pg. 3, ¶ 14.
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`Even if their testimony is considered, it is ambiguous and equivocal. For
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`example, Mr. Christianson testifies that “[i]n the 2000-2001 timeframe, I observed
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`early drawings of Darrel’s PDM showing a housing with a removable cover, cover
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`latch, and matrix of receptacle openings.” Christianson Decl. (Ex. 2003), pg. 3, ¶
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`11. However, Mr. Christianson does not state that Mr. Janisch created the
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`drawings, nor does he specifically identify the drawings to which he refers. The
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`only drawings of record from the 2000-2001 timeframe are those created by Tyco
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`(Ex. 2014). Testimony of this nature, from interested witnesses, does not
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`corroborate Mr. Janisch’s claim of inventorship.
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`{01109286.DOCX / }
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`14
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`
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`H.
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`Patent Owner’s attempt to disqualify Boyd as prior art
`under the “by another” clause of § 102(e) is misplaced
`
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` Patent Owner argues that Boyd is not prior art because the subject matter
`
`disclosed in Boyd is Janisch’s invention. Setting aside the lack of reliable record
`
`evidence to support this claim, the “by another” clause is tied to the legal status of
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`the inventive entities listed in the prior art reference and the challenged patent. In
`
`re Kaplan, 789 F.2d 1574, 1575 (Fed. Cir. 1986) (noting that “a sole inventor and
`
`joint inventors including the sole inventor are separate ‘legal entities,’ a legal
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`proposition from which certain legal consequences flow”).
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`Thus, a challenge to the availability of prior art under § 102(e) based upon
`
`the “by another” clause only arises where the prior art and the challenged patent
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`share at least one common inventor. Applied Materials, Inc. v. Gemini Research
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`Corp., 835 F.2d 279, 281 (Fed. Cir. 1987), as modified on reh'g (Mar. 14, 1988)
`
`(“Even though an application and a patent have been conceived by different
`
`inventive entities, if they share one or more persons as joint inventors, the 35
`
`U.S.C. § 102(e) exclusion for a patent granted to “another” is not necessarily
`
`satisfied.”) [emphasis added].
`
`
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`Here, the legal inventive entity of the Boyd patent is Kenneth Boyd. The
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`legal inventive entity of the ‘188 patent is Darrel Janisch. The “by another” clause
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`{01109286.DOCX / }
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`15
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`of § 102(e) is satisfied because there is no overlap between the legal inventive
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`entities of the two patents.
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`At best, Patent Owner may have an equitable claim regarding the
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`inventorship of the Boyd patent, but even if such a claim does exist, it does not
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`affect the current legal status of the inventive entity of Boyd. An analogous
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`situation arises in patent infringement actions regarding standing to sue, which
`
`requires legal title to a patent. Where a plaintiff has only an un-adjudicated
`
`equitable claim to patent ownership, that equitable claim is insufficient to establish
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`legal title to the patent, and thus, standing to sue. See Arachnid, Inc. v. Merit
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`Indus., Inc., 939 F.2d 1574, 1578 (Fed. Cir. 1991) (discussing the differences
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`between legal title to a patent and an equitable claim to title, where the former is
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`required for standing to sue for infringement and the latter is insufficient to
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`establish standing).
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`Thus, Mr. Janisch’s un-adjudicated equitable claim that he invented Boyd’s
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`subject matter does not disturb the current legal inventive entity of Boyd. Boyd
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`satisfies the “by another” clause of § 102(e).
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`II. Ground C
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`The final ground upon which the Board instituted review is Ground C:
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`Obviousness of claims 1–12 and 19–23 over Svette. These claims should be found
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`unpatentable in accordance with Ground C.
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`{01109286.DOCX / }
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`16
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`
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`A. The Petition sufficiently states grounds for unpatentability
`of claims 1-12 and 19-23 over Svette under § 103
`
`Patent Owner takes issue with the Petition’s reliance on prior art references
`
`(other than Svette) to show the state of the art of the ‘188 patent. The Institution
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`Decision previously rejected Patent Owner’s argument that other prior art
`
`references cannot be used to show the state of the art, recognizing that “[a]rt can
`
`legitimately serve to document the knowledge that skilled artisans would bring to
`
`bear in reading the prior art identified as producing obviousness.” Institution
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`Decision, pg. 21 [citation omitted]. Patent Owner’s argument should again be
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`rejected.
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`B.
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`Boyd is available to show the state of the art
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`
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`As discussed above, Boyd is applicable prior art because Patent Owner has
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`failed to submit sufficient evidence to swear behind it. However, even if Boyd is
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`eliminated as prior art, Patent Owner overstates the impact of such elimination on
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`Ground C. See Patent Owner Response, pg. 49 (“Boyd is not prior art under §
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`102(e)… Accordingly, Ground 3 is improper and claims 1-12 and 19-23 are
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`patentable over Svette.”).
`
`As explained in the Petition, Boyd is referenced as an example of a
`
`conventional PDM cover design – as would be known by a person having ordinary
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`{01109286.DOCX / }
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`17
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`
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`skill in the art – that could be used with the Svette PDM. The Petition identifies
`
`two other conventional designs – Matsuoka and Davis – that similarly could be
`
`used. Thus, even if Boyd is not applicable prior art, Matsuoka and Davis provide
`
`examples of conventional cover designs that were known to a person having
`
`ordinary skill in the art. Petition, pg. 39. In the same vein, the Petition identifies
`
`both Boyd and Matsuoka as disclosing the desirability of a waterproof cover.
`
`Petition, pg. 41.
`
`
`
`The Petition also refers to Boyd as disclosing a conventional distribution
`
`harness. However, as above, the Petition also identifies Matsuoka for disclosure of
`
`a conventional distribution harness. Petition, pg. 40. Thus, elimination of Boyd as
`
`a prior art reference is not fatal to Ground C.
`
`C. Claim construction of “distribution harness”
`
`
`
`In the Institution Decision, the Board commented on the term “distribution
`
`harness,” stating that “the recited ‘distribution harness’ does not encompass the
`
`wires (i.e., the recited ‘conductor cables’) standing alone.” Institution Decision,
`
`pg. 7. The Board did not offer any further construction of the term.
`
`Patent Owner argues that “distribution harness” should be construed as an
`
`“apparatus that holds wires together,” arguing primarily that the limitation
`
`“distribution harness” would be rendered superfluous claim language if interpreted
`
`as a “bundle of wires” without requiring some additional structure. On the
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`{01109286.DOCX / }
`
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`18
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`
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`contrary, a “plurality of electrical conductors” (as claimed in independent claims 1,
`
`11 and 19) is broader than a “bundle of wires,” which imparts a particular
`
`configuration upon the plurality of conductors, i.e., that they are bundled together.
`
`Thus, the “wire harness” limitation imparts additional meaning to the claim beyond
`
`a “plurality of electrical conductors.” For example, a plurality of conductors that
`
`are not bundled together would not constitute a wire harness.
`
`The specification supports Petitioner’s proposed construction, explaining
`
`that “[t]he distribution harness 260 includes a plurality of electrical conductors
`
`262, which optionally can be housed within a sheath 269 to keep the conductors
`
`262 in a bundle.” The ‘188 patent (Ex. 1001), 5:13-15 [emphasis added]. Thus,
`
`the specification explains that an additional structure, such as a sheath, is an
`
`optional feature that may be used to help keep the wires in a bundled configuration.
`
`As set forth in the specification, a “distribution harness” is a bundle of wires that
`
`does not require an additional “apparatus,” which is consistent with Petitioner’s
`
`proposed construction.
`
`While Petitioner submits that “distribution harness” should be construed as
`
`“a bundle of wires,” it may be a distinction without a difference. Even if Patent
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`Owner’s narrower construction is accepted, Patent Owner’s expert Dr. Ralph
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`Wilhelm admitted that structures for securing wires were known long before the
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`filing of the ‘188 patent:
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`{01109286.DOCX / }
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`19
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`
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`Q Was it also known within the field of this technology to
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`tape wires together in a configuration or when they’re
`
`extending below as we were just talking about with
`
`respect to Svette?
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`[Patent Owner counsel objection to form, foundation and scope]
`
`A
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`I – in the roughly 1994 time frame of this patent, this
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`Svette patent, lots of things were known, including cable
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`ties, including cable harnesses of various sorts, including
`
`wiring harnesses of various sorts, so it’s – there’s lots of
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`different options that could be used.
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`Wilhelm Transcript (Ex. 1010), 50:19-51:7.
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`Mr. Janisch did not invent a “distribution harness,” whether construed as a
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`“bundle of wires” or as an “apparatus that holds wires together.” As described in
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`Boyd and Matsuoka, and as conceded by Dr. Wilhelm, there were many methods
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`and devices for bundling wires in a vehicle prior to the filing of the ‘188 patent.
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`Further, Dr. Wilhelm agreed that a person having ordinary skill in the art would
`
`have been motivated to bundle wires together:
`
`Q
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`And would a person having ordinary skill in the art have
`
`understood that using a wire harness can help prevent
`
`fraying and can help organize the wires prior to the ‘188
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`and ‘822 patents?
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`[Patent Owner counsel objection to form, foundation and scope]
`
`A
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`I think irrespective of the timeline of the ‘188 or ‘822
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`{01109286.DOCX / }
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`patents, you’re talking about very fundamental
`20
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`
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`engineering principles in terms of bundling wires,
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`preventing fraying, lengthening the life – lifespan of the
`
`wires, reducing the likelihood of frayed wires. Those are
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`all good things to do.
`
`Q
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`And a person having ordinary skill in the art would have
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`understood that before the filing of the application for the
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`‘188 patent, correct?
`
`A
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`In general, they would, yes.
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`Wilhelm Transcript (Ex. 1010), 59:4-24. Dr. Wilhelm’s testimony is consistent
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`with the testimony of Petitioner’s expert, Mr. Happ. See Happ Decl. (Ex. 1007), ¶
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`75. A person having ordinary skill in the art would have been motivated to bundle
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`the wires of Svette together in accordance with the conventional practice.
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`D. Waterproof cover
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`
`
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`Patent Owner argues that the Petition does not provide sufficient rationale
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`for incorporating a waterproof cover into Svette. However, Patent Owner does not
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`dispute that the PDM of Svette is designed to be used with a cover including a seal,
`
`as those features are explicitly disclosed in Svette. Svette, 3:66-4:2; 2:54-56.
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`Patent Owner further does not dispute that Matsuoka discloses a water proof cover.
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`Matsuoka, 1:16-40. Thus, Patent Owner cannot credibly claim that Mr. Janisch
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`invented waterproof covers for PDMs.
`
`Moreover, Dr. Wilhelm conceded that protecting PDMs from the
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`environment, which would include water, was a concern “for eons” before the
`{01109286.DOCX / }
`21
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`
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`
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`filing of the ‘188 patent. Wilhelm Transcript (Ex. 1010), 68:7-15; see also Happ
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`Decl. (Ex. 1007), ¶ 79 (explaining that a person having ordinary skill in the art
`
`would recognize the desirability of incorporating a waterproof cover into Svette).
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`Given the disclosure of Svette and Matsuoka, as well as the general understanding
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`of a person having ordinary skill in the art, it would have been obvious to
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`incorporate a waterproof cover into the PDM design of Svette.
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`E.
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`Preamble relating to a “personal recreational vehicle”
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`
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`The Institution Decision rejected Patent Owner’s argument that the preamble
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`of claims 1-12, which recite a “power distribution module for personal recreational
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`vehicle,” are limiting. The Board reasoned that the claim bodies describe
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`structurally complete inventions, and that the preamble merely recited an intended
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`use. Institution Decision, pp. 7-8, citing Catalina Marketing Int’l, Inc. v.
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`Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 20
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