throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Duk San Neolux Co., Ltd.,
`Petitioner,
`
`v.
`
`Idemitsu Kosan Co., Ltd.,
`Patent Owner
`
`CASE IPR2016-00148
`
`Patent No. 9,056,870
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S ASSERTION OF
`NEW ARGUMENTS AND EVIDENCE IN PETITIONER’S REPLY
`
`Date: December 16, 2016
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark
`Office P. O. Box 1450
`Alexandria, VA 22313-1450
`
`Idemitsu Ex. 2006, pg. 1
`IPR2017-00197
`DukSan v Idemitsu
`
`

`

`Responsive to Patent Owner’s (“POs”) assertion that Petitioner’s Reply
`
`included arguments and evidence alleged to be improper under 37 C.F.R. § 42.23(b)
`
`relative to the original arguments and evidence in the Petition (Paper 1, “Pet.”),
`
`Petitioner provides herein prior basis for the arguments and evidence presented in
`
`Petitioner’s reply.
`
`Response to Alleged First New Argument and Evidence:
`
`Regarding the alleged first new argument, basis can be found, e.g., in the
`
`Petition at p. 48 1st full ¶ 1 – pp. 49 and 50 at the bridging ¶, as well as in Ex. 1003
`
`at ¶¶ 29 and 53. Alleged new argument is also responsive to PO Response (Paper
`
`13), e.g., at p. 25 first full ¶ - page 27, asserting that Kawaguchi does not
`
`demonstrate a link between oxidative resistance/stability “because DBBDF
`
`(symmetrical O/O heteroatoms) has greater oxidative stability than Ar-BFCs (O/N
`
`heteroatoms), which in turn have greater oxidative stability than DPh-IC (N/N
`
`heteroatoms).”
`
`Selection of appropriate side chains to mitigate π –stacking was raised by PO
`
`in submitting Moorthy as Ex. 2002.
`
`Anthony was originally cited by PO in Ex. 2023 (Dr. Anthony’s CV) at
`
`page 6, reference 63. Petitioner cites Anthony responsive to PO’s assertions
`
`regarding π-stacking raised by PO in the Preliminary Response (Paper 5), e.g.,
`
`last ¶, and PO Response, e.g., throughout pp. 40-49.
`
`- 1 -
`
`Idemitsu Ex. 2006, pg. 2
`IPR2017-00197
`DukSan v Idemitsu
`
`

`

`Toray and Hu were cited responsive to PO’s assertions that POSITA
`
`would not look to compounds that may be used in OFETs in developing
`
`compounds that may be used OLEDs. For example, please see ¶¶ 32-34 of Dr.
`
`Anthony’s Declaration (Ex. 2007) asserting that compounds for OLED and
`
`OFET are not related art and criticizing Dr. Schwartz for indicating that
`
`Kawaguchi relates to a transport or luminescent material for an OLED device.
`
`Please also see PO Response, e.g., throughout pp. 37-48 and p. 63.
`
`Response to Alleged Second New Argument: With regard to the alleged
`
`second new argument, the Petition cites Heil formulas (2a) and (4a), e.g., at p. 50,
`
`1st full ¶. Compound 4 is a species of formula (2a). “Heil depicts both cis and trans
`
`configurations; see Heil
`
`formulas (2a) and (4a)
`
`(DSN-1015-9:21-33). These
`
`formulas are stated to be particular preferences.” See Pet., e.g., at p. 50, 1st full ¶.
`
`As cited in the paragraphs alleged to be new evidence by PO in Ex. 1033,
`
`Dr. Schwartz’s comments are further and responsive to, e.g., statements made
`
`by Dr. Anthony in his deposition (See, e.g., Ex. 1027, 53:11-12 and 57:2-3), as
`
`well as statements made by Dr. Anthony in his declaration (See e.g., Ex. 2007,
`
`¶78).
`
`Response to Alleged Third New Argument: Regarding the third alleged new
`
`argument, the lead compound analysis and alleged new evidence were raised by
`
`- 2 -
`
`Idemitsu Ex. 2006, pg. 3
`IPR2017-00197
`DukSan v Idemitsu
`
`

`

`PO in PO Response, e.g., at p. 15, 1st full ¶, p. 19, last ¶ – p. 22. Petitioner’s reply
`
`addresses these remarks.
`
`Response to Alleged Fourth New Argument: With regard to the third
`
`alleged new argument, PO initially asserted a lead compound analysis based on Kai
`
`in view of Kawaguchi in PO Response, e.g., p. 56 1st full ¶ - p. 61 last full ¶,
`
`including discussion of compound 3 of Kai. Petitioner’s remarks and evidence are
`
`responsive to arguments presented by PO therein.
`
`Response to Alleged Fifth New Argument: Regarding the fifth alleged new
`
`argument, PO Response, e.g., at p. 48 ¶ 2, asserts that charge balance would be
`
`upset by “higher hole mobility provided by increased π-stacking interactions.”
`
`Petitioner’s remarks and evidence are responsive to arguments presented by PO
`
`therein.
`
`Date: December 16, 2016
`
`Respectfully submitted,
`
`VORYS, SATER, SEYMOUR AND PEASE LLP
`
`William H. Oldach III
`Attorney for Petitioner
`DUK SAN NEOLUX CO., LTD.
`Registration No. 42,048
`
`VORYS, SATER, SEYMOUR AND PEASE LLP
`1909 K Street NW, Ninth Floor
`Washington, D.C. 20006-1152
`Tel: 202-467-8800 / Fax: 202-533-9187
`
`- 3 -
`
`Idemitsu Ex. 2006, pg. 4
`IPR2017-00197
`DukSan v Idemitsu
`
`

`

`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies service of PETITIONER’S RESPONSE TO
`PO’S ASSERTION OF NEW ARGUMENTS AND EVIDENCE IN
`PETITIONER’S REPLY on counsel of record for the PO by filing this document
`through the Patent Review Processing System as well as delivering a copy via
`electronic mail to the following address:
`
`RICHARD D. KELLY
`OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
`1940 DUKE STREET
`ALEXANDRIA VA 22314
`TEL: 703-413-3000 / 703-412-6463
`EMAIL: CPDocketRKelly@oblon.com
`EMAIL: CPDocketDoughty@oblon.com
`EMAIL: CPDocketSK@oblon.com
`EMAIL: CPDocketBurton@oblon.com
`
`Respectfully submitted,
`
`VORYS, SATER, SEYMOUR AND PEASE LLP
`
`Date: December 16, 2016
`
`William H. Oldach III
`Attorney for Petitioner
`DUK SAN NEOLUX CO., LTD.
`Registration No. 42,048
`
`VORYS, SATER, SEYMOUR AND PEASE LLP
`1909 K Street NW, Ninth Floor
`Washington, D.C. 20006-1152
`Tel: 202-467-8800 / Fax: 202-533-9187
`
`- 4 -
`
`Idemitsu Ex. 2006, pg. 5
`IPR2017-00197
`DukSan v Idemitsu
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket