UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Sony Corporation,
`Petitioner,
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`v.
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`One-E-Way, Inc.
`Patent Owner.
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`
`
`IPR2016-01638
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`Patent No. 9,282,396
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`Issue Date: March 8, 2016
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`Title: Wireless Digital Audio Music System
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE TO PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 9,282,396
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Sony Corporation,
`Petitioner,
`
`v.
`
`One-E-Way, Inc.
`Patent Owner.
`
`
`
`IPR2016-01638
`
`Patent No. 9,282,396
`
`Issue Date: March 8, 2016
`
`Title: Wireless Digital Audio Music System
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE TO PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 9,282,396
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`IPR2016-01638
`Patent No. 9,282,396
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`TABLE OF CONTENTS
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`Page
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`The Holding of In re Reiffin Does Not Support Patent Owner. ............................ 2
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`Litton and Harari are Inapplicable to the Facts Here. ............................................. 4
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`Petitioner Cited Precedent that Patent Owner Failed to Address. ....................... 5
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`A.
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`B.
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`C.
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`i
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`Cases
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`IPR2016-01638
`Patent No. 9,282,396
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`TABLE OF AUTHORITIES
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`Page(s)
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`Anascape, Ltd. v. Nintendo of Am., Inc.,
` 601 F.3d 1333 (Fed. Cir. 2010) ...................................................................................... 5, 6
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`Harari v. Hollmer,
`602 F.3d 1348 (Fed. Cir. 2010) ....................................................................................... 4, 5
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`In re Reiffin,
`340 Fed. Appx. 651 (Fed. Cir. July 27, 2009) .......................................................... passim
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`Litton v. Whirlpool,
`728 F.2d 1423 (Fed. Cir. 1984) ....................................................................................... 4, 5
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`Zenon Environmental, Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) ....................................................................................... 5, 6
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`Statutes
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`35 U.S.C. § 112 ........................................................................................................................... 6
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`35 U.S.C. § 120 ........................................................................................................................... 5
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`35 U.S.C. § 132 ........................................................................................................................... 2
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`Rules
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`Fed. Cir. R. 32.1 ......................................................................................................................... 3
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`Other Authorities
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`MPEP 201.06(c)(IV) ................................................................................................................. 6
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`ii
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`IPR2016-01638
`Patent No. 9,282,396
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`Petitioner Sony Corporation hereby submits a reply to Patent Owner’s
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`Preliminary Response to Sony’s Petition for inter partes review of U.S. Patent No.
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`9,282,396, as authorized by the Board’s Order of February 1, 2017 (Paper 10).
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`As discussed in Sony’s Petition, the ’396 patent claims are not entitled to a 2001
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`priority date because one of the applications in the chain, the 2003 application, broke
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`the continuity of disclosure. The 2003 application, the second in a chain of seven
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`applications that eventually led to the ’396 patent, was filed as a continuation-in-part
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`(CIP) and was directed to an invention different from the one disclosed in the 2001
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`application. (Pet. at 11–15). The 2003 application did not include certain subject
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`matter disclosed in the 2001 application; the 2003 application also did not include an
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`incorporation-by-reference of the 2001 application. See, e.g., Petitioner’s Ex. 1008.
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`The 2001 application was abandoned immediately following the filing of the 2003
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`application. Only three years later, long after the 2001 application was abandoned
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`(and had been published), did the applicant amend the specification of the 2003
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`application in an attempt to reclaim the subject matter that had been abandoned with
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`the 2001 application. (Pet. at 16–18).
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`Patent Owner does not contest that the as-filed 2003 application did not
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`include certain material from the 2001 application. (Paper 9 at 2–3). Patent Owner
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`also does not dispute that claiming priority as a CIP (or continuation or divisional) of
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`a parent application is not an incorporation by reference of the prior application.
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`IPR2016-01638
`Patent No. 9,282,396
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`Instead, Patent Owner argues that its failure to include certain subject matter
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`from the 2001 application in the 2003 application at the time of filing, either expressly
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`or through an incorporation-by-reference statement, is excusable, because it added
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`back such material while the 2003 application was still pending. Patent Owner
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`acknowledges that a general prohibition exists under 35 U.S.C. § 132 against adding
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`new matter to a pending application, but claims that a narrow exception allows it to
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`add, through an amendment, matter from the parent application without violating this
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`prohibition. Patent Owner’s interpretation of section 132 is incorrect, and the cases it
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`cites (Paper 9 at 6–11) do not support it.
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`A. The Holding of In re Reiffin Does Not Support Patent Owner
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`Patent Owner relies primarily on In re Reiffin, 340 Fed. Appx. 651 (Fed. Cir. July
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`27, 2009) (unpublished) to support its incorrect interpretation of section 132. In
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`Reiffin, a patentee attempted to add material from a prior application during
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`reexamination. The patent at issue, U.S. Patent No. 5,694,604 (“the ’604 patent”), had
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`been filed in 1994 as a continuation of a prior application filed in 1990. Id. at 653.
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`However, the specification of the ’604 patent did not include certain subject matter
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`from the disclosure of the 1990 application that was necessary to support some of the
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`’604 claims. Id. at 658. The Court rejected patentee’s attempt to add that material to
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`the ’604 patent during reexamination, thus canceling the claims for failure to comply
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`with the written description requirement. Id. at 660.
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`2
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`IPR2016-01638
`Patent No. 9,282,396
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`This is the holding of Reiffin, and it does not support Patent Owner’s argument.
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`The Court in Reiffin remarked about what the patentee hypothetically could have done
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`during prosecution of the ’604 patent that would have changed the outcome. Patent
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`Owner relies on these remarks to support its alleged exception to section 132 (Paper 9
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`at 7), but the remarks are dicta because they were unnecessary for the outcome of
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`Reiffin. Furthermore, the Federal Circuit designated Reiffin as nonprecedential, which
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`Patent Owner failed to mention in its Preliminary Response. Thus, in addition to
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`being dicta, the Reiffin statements Patent Owner relies on are not binding precedent.
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`Fed. Cir. R. 32.1 (“The court may refer to a nonprecedential disposition in an opinion
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`or order and may look to a nonprecedential disposition for guidance or persuasive
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`reasoning, but will not give one of its own nonprecedential dispositions the effect of binding
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`precedent” (emphasis added)).
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`Finally, while the remarks in Reiffin may make sense when considered within the
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`specific facts of that case, they do not fit the facts presented here. In particular, the 1990
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`and 1994 Reiffin applications, even though filed four years apart, were co-pending
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`throughout the prosecution of the 1994 application and issued on the same day—as
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`consecutive U.S. Patent Nos. 5,694,603 and 5,694,604. 340 Fed. Appx. at 653. Hence,
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`it is conceivable that the patentee could have amended the 1994 application to include
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`material from the 1990 application during the prosecution of the 1994 application
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`3
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`because he could also have filed a new continuation application including any or all of
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`IPR2016-01638
`Patent No. 9,282,396
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`the material from the 1990 application, since the 1990 application was still pending.
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`In contrast, Patent Owner abandoned the 2001 application the day after the
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`2003 application was filed, and the 2001 application was not co-pending (indeed, had
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`been abandoned for several years) at the time the applicant amended the 2003
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`application to add the incorporation by reference statement and material from the
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`2001 application.1 While in Reiffin the disclosure of the 1990 application was “alive”
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`and co-pending throughout the 1994 application’s prosecution, here no new
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`continuation applications of the 2001 application could have been filed at the time the
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`applicant was amending the 2003 application.
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`B. Litton and Harari are Inapplicable to the Facts Here
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`The alleged “rule” in Reiffin comes from Litton v. Whirlpool, 728 F.2d 1423 (Fed.
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`Cir. 1984). See Reiffin, 340 Fed. Appx. at 658 (citing Litton). Reiffin relies on the
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`following statement in Litton:
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`New matter in a C–I–P application has the filing date of that C–I–P
`application. The earlier filing date of the parent application pertains to
`material in the C–I–P application also disclosed in the prior application.
`If matter added through amendment to a C–I–P application is deemed
`inherent in whatever the original parent application discloses, however,
`that matter also is entitled to the filing date of the original, parent
`application.
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`Beyond the one day co-pendency with the 2003 application, no other
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`application in the chain was ever co-pending with the 2001 application.
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`IPR2016-01638
`Patent No. 9,282,396
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`728 F.2d at 1438 (citing 35 U.S.C. § 120). Patent Owner now tries to do the same.
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`(Paper 9 at 8-10). But, while the applicant in Litton was adding matter in its CIP
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`application, it had kept the entire prior disclosure from the parent application. Id. at
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`1435. So the question before the Court was whether the new matter was “inherent” in
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`the disclosure of the pending (and the original) application, not whether it was proper
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`to add material from a prior abandoned application that was omitted from the CIP as-
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`filed. Ultimately, the Federal Circuit did not address the inherency question, because it
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`held the patentee conceded it was adding new matter. Litton does not apply to the
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`factual scenario presented here.
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`Nor does Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010), which Patent
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`Owner also cites to support its argument. (Paper 9 at 10). Harari dealt with the clarity
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`of incorporation by reference statements made in a chain of continuation applications,
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`not CIPs. Unlike here, the incorporation by reference in Harari was made in a
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`preliminary amendment filed on the same date with the application, not 3 years later.
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`Patent Owner does not rely on any other case to support its argument.
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`C.
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`Petitioner Cited Precedent that Patent Owner Failed to Address
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`Patent Owner also does not attempt to distinguish the precedential cases cited
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`by Petitioner, i.e., Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333 (Fed. Cir. 2010)
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`and Zenon Environmental, Inc. v. U.S. Filter Corp., 506 F.3d 1370 (Fed. Cir. 2007). (Pet. at
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`9–11, 15–17). For example, Patent Owner does not even attempt to explain how the
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`5
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`nonprecedential dicta of Reiffin comports with Anascape’s discussion of analyzing the
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`IPR2016-01638
`Patent No. 9,282,396
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`specification as originally filed, not as amended, and Zenon’s statement that each
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`application must comply with the written description requirement of 35 U.S.C. § 112.
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`Anascape, 601 F.3d at 1337; Zenon, 506 F.3d at 1378–82 (citations omitted).
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`The only authority cited by Petitioner that Patent Owner chose to address is
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`MPEP 201.06(c)(IV), summarily dismissing it because, allegedly, the citation to 35
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`U.S.C. 132 shows that “this sentence merely reflects the general prohibition against
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`new matter” contained in section 132. (Paper 9 at 12). But this subsection specifically
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`deals with benefit claims and adding incorporation by reference statements after an
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`application’s filing date. See MPEP 201.06(c)(IV). The subsection does not mention
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`Patent Owner’s alleged “exception” for CIP applications, because none exists.
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`Patent Owner filed the 2003 application directed to a different invention than
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`that of the 2001 application; its attempt to reclaim the abandoned subject matter of
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`the 2001 application through a late incorporation by reference was clearly new matter
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`to the 2003 application. The 2003 application thus broke continuity of disclosure, and
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`as a result the ’396 patent claims cannot claim priority to the 2001 application.
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`For the foregoing reasons, Petitioner respectfully requests that the Board find
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`that the ’396 patent is not entitled to the filing date of the 2001 application, institute
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`inter partes review of the ’396 patent, and cancel all challenged claims.
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`IPR2016-01638
`Patent No. 9,282,396
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`Respectfully submitted,
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`/John Flock/
`
`John Flock (Reg. No. 39,670)
`Lead Counsel for Petitioner
`Andrews Kurth Kenyon LLP
`One Broadway,
`New York, NY 10004
`Telephone: 212-425-7200
`Fax: 212-425-5288
`Email: johnflock@andrewskurthkenyon.com
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`Paul T. Qualey (Reg. No. 45,027)
`Backup Counsel for Petitioner
`Andrews Kurth Kenyon LLP
`1350 I Street, NW, Suite 1100
`Washington, DC 20005
`Telephone: 202-662-3057
`Fax: 202-662-2739
`Email: paulqualey@andrewskurthkenyon.com
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`7
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`Dated: February 8, 2017
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`IPR2016-01638
`Patent No. 9,282,396
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`TO PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
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`9,282,396, was served on the Patent Owner’s attorneys of record via email and
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`Federal Express, a means at least as fast and reliable as Priority Mail Express ®, on
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`February 8, 2017 at the following addresses:
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`Megan E. Lyman
`Registration No. 57,054
`Lyman Patent Services
`1816 Silver Mist Ct.
`Raleigh, NC 27613
`melyman@lymanpatents.com
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`
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`Dated: February 8, 2017
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`
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`Jim Passe
`Registration No. 29,966
`Passe Intellectual Property, LLC
`1717 Brassfield Rd.
`Raleigh, NC 27614
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`/John Flock/
`John Flock (Reg. No. 39,670)
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`Lead Counsel for Petitioner,
`Sony Corporation
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`8
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