Paper No. __
` Date: April 4, 2017
`
`
`
`By: Cary Kappel, Lead Counsel
`William Gehris, Backup Counsel
`David Petroff, Backup Counsel
`Davidson, Davidson & Kappel, LLC
`589 8th Avenue, 16th Floor
` New York, NY 10018
`Telephone: (212) 736-1257
` (212) 736-2015
` (212) 736-1940
`Facsimile: (212) 736-2427
`Email: ckappel@ddkpatent.com
` wgehris@ddkpatent.com
` dpetroff@ddkpatent.com
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _______________
`
`VALEO NORTH AMERICA, INC. and VALEO EMBRAYAGES,
`
`Petitioner,
`v.
`
`SCHAEFFLER TECHNOLOGIES AG & CO. KG,
`
`Patent Owner.
`_______________
`
`Case: IPR2017-00442
`Patent 8,573,374 B2
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
` Date: April 4, 2017
`
`
`
`By: Cary Kappel, Lead Counsel
`William Gehris, Backup Counsel
`David Petroff, Backup Counsel
`Davidson, Davidson & Kappel, LLC
`589 8th Avenue, 16th Floor
` New York, NY 10018
`Telephone: (212) 736-1257
` (212) 736-2015
` (212) 736-1940
`Facsimile: (212) 736-2427
`Email: ckappel@ddkpatent.com
` wgehris@ddkpatent.com
` dpetroff@ddkpatent.com
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _______________
`
`VALEO NORTH AMERICA, INC. and VALEO EMBRAYAGES,
`
`Petitioner,
`v.
`
`SCHAEFFLER TECHNOLOGIES AG & CO. KG,
`
`Patent Owner.
`_______________
`
`Case: IPR2017-00442
`Patent 8,573,374 B2
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction .......................................................................................................................... 1
`
`The '374 Patent, Degler, Reik, Chart Of Timeline And Inventors .................................. 4
`
` A. '374 Patent ..................................................................................................................... 4
`
`
`
`
`
`
`
`B. Degler Publication ....................................................................................................... 5
`
`C. Reik Publication ............................................................................................................ 5
`
`D. Chart Of Timeline And Inventors ............................................................................... 6
`
`III. Overview of The Relevant Provisions of 35 U.S.C. §119 ............................................... 6
`
`IV. Petitioner's Analysis Under 35 U.S.C. §119 Is Fatally Flawed and Cannot Establish
`
`that Either Degler or Reik is Prior Art ............................................................................... 8
`
`A. Petitioner's Argument Fails Because it Ignores That the Right to Priority is
`
`Personal To The Inventors Of The '374 Patent ............................................................... 11
`
`B. Petitioner Fails To Establish that the '374 Patent And The Degler Priority
`
`
`
`
`
`Application Are For The Same Invention ....................................................................... 16
`
`V.
`
`Conclusion .......................................................................................................................... 18
`
`
`
`
`
`
`
`
`
`i
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`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Boston Scientific Scimed, Inc. v Medtronic Vascular, Inc. 497 F.3d 1293
`
`(Fed. Cir. 2007) ..................................................................................................................... passim
`
`In re Gosteli, 872 F.2d 1008 (Fed. Cir. 1989) .................................................................. 7, 10, 17
`
`South Corp. v. United States, 690 F.2d 1368 (Fed. Cir. 1982) ................................................. 13
`
`Vogel v. Jones, 486 F.2d 1068 (CCPA 1973) ..................................................................... passim
`
`Yasuko Kawai v. Metlesics, 480 F.2d 880 (CCPA 1973) ............................................................ 7
`
`STATUTES
`
`35 U.S.C. §102(a) ............................................................................................................................ 1
`
`35 U.S.C. §112, ¶ 1 ............................................................................................................. 7, 16, 17
`
`35 U.S.C. §119 ....................................................................................................................... passim
`
`35 U.S.C. §313 ............................................................................................................................... 1
`
`35 U.S.C. §314(a) .......................................................................................................................... 18
`
`RULES
`
`37 C.F.R. §42.107 ............................................................................................................................ 1
`
`OTHER AUTHORITIES
`
`Manual of Patent Examining Procedure, Ninth Edition, March 2014, Latest Revision
`
`Nov. 2015 (MPEP) 213.02(II) .............................................................................................7, 14
`
`
`
`
`
`ii
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`
`
`I.
`
`Introduction
`
` Case IPR2017-00442
`Patent 8,573,374
`
`
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107, Schaeffler Technologies AG
`
`& Co. KG ("Patent Owner"), submits the following Patent Owner's Preliminary Response
`
`in response to a Petition for inter partes review filed by Valeo North America, Inc. and
`
`Valeo Embrayages ("Petitioner") concerning claims 1, 3-5, 8, 10 and 14-16 of U.S. Patent
`
`No. 8,573,374 ("the '374 patent") (Ex. 1101).
`
`Petitioner asserts two grounds of unpatentability: that claims 1, 3-5, 8, 10 and 14-16
`
`are anticipated under 35 U.S.C. §102(a) by Degler International application, PCT Pub No.
`
`WO 2009/06798 (Ex. 1103) ("the Degler publication"); and that claims 1, 3-5, 8, 10 and
`
`14-16 are anticipated under 35 U.S.C. §102(a) by W. Reik, The Centrifugal Pendulum
`
`Absorber Calming Down the Drivetrain (“Reik publication”) (Ex. 1106/Ex. 1105).
`
`The '374 patent names Magerkurth, Huegel, and Meissner as inventors (and
`
`applicants), is a 371 National Phase of PCT/DE2009/000819, and claims priority under 35
`
`U.S.C. §119 to DE 10 2008 031 431 having a priority date of July 4, 2008 and DE 10 2008
`
`037 808 having a priority date of August 14, 2008. (Ex. 1101) (the '374 Priority
`
`Applications).
`
`Petitioner's sole basis for alleging that the Degler and Reik publications are prior art
`
`to the '374 patent is its allegation that neither of the '374 Priority Applications is the "first
`
`filed" application under 35 U.S.C. § 119 (a, c), and accordingly, the '374 patent is not
`
`
`
`1
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`
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`entitled to any priority under 35 U.S.C. § 119.
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` Case IPR2017-00442
`Patent 8,573,374
`
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`In particular, Petitioner contends that DE 10 2007 057 448.9, which names Degler,
`
`Krause, Schenck, Werner, and Englemann as inventors ("the Degler Priority Application")
`
`(Ex. 1104), and which was filed earlier than the '374 Priority Applications, qualifies as the
`
`"first filed" application under 35 U.S.C. § 119 (a, c), and that accordingly, under 35 U.S.C.
`
`§119 (c), the '374 patent is not entitled to rely on any priority under 35 U.S.C. §119.
`
`Petitioner ignores the express language of 35 U.S.C. §119 and the controlling
`
`precedent in alleging that the Degler Priority Application, which shares no common
`
`inventors with the '374 patent, could have been the "first filed" application under 35 U.S.C.
`
`§119.
`
`The law is clear. In order for a foreign-filed patent application to serve as the basis
`
`for a priority claim under 35 U.S.C. §119, the foreign-filed application must have been
`
`filed by or on behalf of one or more of the inventors of the U.S. patent application. As the
`
`Federal Circuit has explained, citing Vogel v. Jones, 486 F.2d 1068 (CCPA 1973) as
`
`binding authority:
`
`"§119 gives rise to a right of priority that is personal to the United States
`applicant."
` * **
`Vogel clearly held that the above-quoted passage "means that an applicant for
`a United States patent can rely for priority on the 'first filed' application by an
`assignee on his behalf." Id. Moreover, "the existence of an application made
`2
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` Case IPR2017-00442
`Patent 8,573,374
`
`
`by [the inventor's] assignee in a foreign country on behalf of one other than
`the United States inventor is irrelevant to his right of priority based on
`applications made on his behalf." (Emphasis and brackets in original).
`
`Boston Scientific Scimed, Inc. v Medtronic Vascular, Inc. 497 F.3d 1293, 1297-99 (Fed.
`
`Cir. 2007), quoting Vogel v. Jones, 486 F.2d 1068 (CCPA 1973).
`
`Vogel involved essentially the same facts at issue here. In Vogel, an inventor Jones
`
`filed a U.S. application assigned to ICI claiming priority to two British provisional
`
`applications. Vogel argued that Jones should not be entitled to claim priority to the two
`
`British applications because of an earlier filed patent application by different inventors (the
`
`Dewey application) that was also assigned to ICI and that later published. The CCPA
`
`rejected this argument, finding that the right to priority under § 119 was personal to Jones,
`
`and that the existence of the earlier filed Dewing application was "irrelevant to [Jones']
`
`right of priority based on applications made on his behalf. " Vogel v. Jones, 486 F.2d 1068,
`
`1072 (CCPA 1973).
`
` The Degler priority application, though owned by the same assignee as '374 patent,
`
`shares no common inventors with the '374 patent, and is therefore irrelevant to the
`
`inventors' right to claim priority under 35 U.S.C. §119 for the '374 patent. The fact that the
`
`Degler priority application shares no common inventors with the '374 patent is dispositive,
`
`and alone requires denial of the Petition.
`
`Further, the Petitioner fails to show that the '374 patent and the Degler priority
`3
`
`
`
`
`
`application are directed to the "same invention" as required under 35 U.S.C. §119.
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` Case IPR2017-00442
`Patent 8,573,374
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`Accordingly, Petitioner cannot establish that '374 patent is not entitled to the benefit
`
`of its two priority applications, the Degler and Reik publications are not prior art to the '374
`
`patent, and the Petition should be denied in its entirety.
`
`In its Preliminary Response, the Patent Owner addresses only the Petitioner's
`
`improper interpretation and application of 35 U.S.C. §119 as its basis for qualifying what
`
`would otherwise be non-prior art as prior art. Accordingly, the fact that this Preliminary
`
`Response does not address other aspects of the Petition is not an indication that the Patent
`
`Owner concedes any fact or issue. To the contrary, the Patent Owner expressly reserves its
`
`rights to contest any ground of patentability for which review is instituted.
`
`II. The '374 Patent, Degler, Reik, Chart Of Timeline And Inventors
`'374 Patent
`A.
`The '374 patent was granted the priority under 35 U.S.C. §119 of two German
`
`applications with the earliest application (DE 10 2008 031 431) having a priority date of
`
`July 4, 2008 and the later application (DE 10 2008 037 808) having a priority date of
`
`August 14, 2008. (Ex. 1101). Relying on 35 U.S.C. §119, the patent owner filed an
`
`International application on June 12, 2009 with the PCT receiving Office designating the
`
`United States as a national filing, within 12 months from the earliest priority date of July 4,
`
`2008. The inventors and applicants of the '374 patent are: Magerkurth, Huegel, Meissner.
`
`(Ex. 1101).
`
`
`
`4
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`
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`B. Degler Publication
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` Case IPR2017-00442
`Patent 8,573,374
`
`
`Degler International application PCT/DE/2008/00900 was filed on behalf of
`
`inventors Degler, Krause, Schenck, Werner and Engelmann on November 17, 2008, and
`
`claimed priority to DE 10 2007 057 448.9, filed on November 29, 2007, which was prior to
`
`the '374 patent's earliest priority date. (Ex. 1104, p. 3). It was published on June 4, 2009 as
`
`PCT Pub No. WO 2009/06798) (Ex. 1103) which is after the '374 Priority Application
`
`filing dates of July 4, 2008 and August 14, 2008 and before the '374 patent's PCT
`
`International application filing date of June 12, 2009. (Ex. 1114).
`
`C. Reik Publication
`
`Reik is a publication that was allegedly distributed December 2008 and May 2009,
`
`which was after the '374 Priority Application filing dates of July 4, 2008 and August 14,
`
`2008, but before the '374 patent's PCT International application filing date of June 12,
`
`2009. (Petition, p. 3) (Ex. 1106, Ex.1105).
`
`
`
`
`
`
`
`5
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`
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`D. Chart Of Timeline And Inventors
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` Case IPR2017-00442
`Patent 8,573,374
`
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`Notably, the Degler PCT filing date, Degler PCT publication date and alleged Reik
`
`
`
`
`
`publication dates are all after the priority dates of the '374 patent. Further, the '374 patent
`
`and the Degler priority application have no common inventors.
`
`III. Overview of The Relevant Provisions of 35 U.S.C. §119
`
`Section (a) of 35 U.S.C. § 119 provides "[a]n application for patent for an invention
`
`filed in this country by any person who has, or whose legal representatives or assigns
`
`have, previously regularly filed an application for a patent for the same invention in a
`
`foreign country which affords similar privileges in the case of applications filed in the
`
`
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`6
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` Case IPR2017-00442
`Patent 8,573,374
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`United States or to citizens of the United States, or in a WTO member country, shall have
`
`the same effect as the same application would have if filed in this country on the date on
`
`which the application for patent for the same invention was first filed in such foreign
`
`country, if the application in this country is filed within 12 months from the earliest date on
`
`which such foreign application was filed." (Emphasis added).
`
`The phrase "by any person who has, or whose legal representatives or assigns
`
`have" has been held to require that the "legal representative or assigns" filed the priority
`
`application on behalf of the inventors of the U.S. Patent Application. In this regard, the
`
`right to priority is said to be personal to the inventors. See Boston Scientific Scimed, Inc. v
`
`Medtronic Vascular, Inc. 497 F.3d 1293, 1297-99 (Fed. Cir. 2007); Vogel v. Jones, 486
`
`F.2d 1068, 1072 (CCPA 1973); Manual of Patent Examining Procedure, Ninth Edition,
`
`March 2014, Latest Revision Nov. 2015 (MPEP) 213.02(II).
`
`The phrase "the same invention" has been held to require that the priority
`
`application satisfies the written description and enablement requirements of 35 U.S.C.
`
`§112, ¶ 1 for the claims of the later filed U.S. application at issue. See In re Gosteli, 872
`
`F.2d 1008, 1011 (Fed. Cir. 1989); Yasuko Kawai v. Metlesics, 480 F.2d 880, 885 (CCPA
`
`1973).
`
`The phrase "first filed" requires that the U.S. application must have been filed within
`
`12 months of the first such foreign application filed for the invention by or on behalf of the
`
`
`
`7
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`
`
`inventors. See 35 U.S.C. §119 (a) ("on which the application for patent for the same
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` Case IPR2017-00442
`Patent 8,573,374
`
`
`invention was first filed in such foreign country, if the application in this country is filed
`
`within 12 months from the earliest date on which such foreign application was filed").
`
`Section (c) of 35 U.S.C. §119 provides for an exception of the "first filed"
`
`requirement, and states that "[i]n like manner and subject to the same conditions and
`
`requirements, the right provided in this section may be based upon a subsequent regularly
`
`filed application in the same foreign country instead of the first filed foreign application,
`
`provided that any foreign application filed prior to such subsequent application has been
`
`withdrawn, abandoned, or otherwise disposed of, without having been laid open to public
`
`inspection and without leaving any rights outstanding, and has not served, nor thereafter
`
`shall serve, as a basis for claiming a right of priority." In other words, a later filed foreign
`
`application can serve as a priority application as long as the "first filed" application has
`
`been withdrawn or abandoned without publishing and has not and will not serve as a basis
`
`for claiming a right of priority.
`
`IV. Petitioner's Analysis Under 35 U.S.C. §119 Is Fatally Flawed and Cannot
` Establish that Either Degler or Reik is Prior Art
`
`Petitioner's analysis completely ignores the "personal nature" of the right to priority
`
`under 35 U.S.C. §119 which requires that the United States filed application (the '374
`
`patent) be filed by or on behalf of at least one of the inventors of the alleged corresponding
`
`
`
`8
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` Case IPR2017-00442
`Patent 8,573,374
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`foreign application (the Degler priority application) at the time the foreign application was
`
`filed, and fails to address the requirement under 35 U.S.C. §119 that the alleged priority
`
`application be for the "same invention" as the '374 patent. Petitioner's analysis consists of a
`
`timeline of the various documents without any consideration of inventorship. (Petition, pp.
`
`14, 13-15).
`
` Petitioner asserts that under 35 U.S.C. §119, the '374 patent should have claimed
`
`priority to the Degler Priority Application and that by failing to do so, the '374 patent is not
`
`entitled to claim the benefit of either of its German priority applications. Without the
`
`benefit of the dates of the '374 patent's priority applications and having not claimed the
`
`benefit of the Degler Priority Application, Petitioner asserts that the '374 patent is only
`
`entitled to the filing date of its PCT International application of June 12, 2009. Because the
`
`June 12, 2009 filing date is after Degler's publication date of June 4, 2009 and Reik's
`
`alleged publication dates of December 2008 and May 2009, Petitioner asserts that both the
`
`Degler and Reik publications qualify as prior art. (Petition, pp. 13-28).
`
`This argument is the sole basis by which Petitioner alleges that the Degler and Reik
`
`publications are prior art to the '374 patent.
`
`Missing from the Petitioner's analysis is any explanation of how the Degler Priority
`
`Application could have served as priority for the '374 patent. Apparently, the Petitioner
`
`assumes that simply by virtue of the fact that the Degler Priority Application and the '374
`
`
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`9
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` Case IPR2017-00442
`Patent 8,573,374
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`patent share the same assignee, the Degler Priority Application qualifies as the "first filed"
`
`application under 35 U.S.C. §119 (a).
`
`After assuming, without citation to any authority, that the Degler Priority
`
`Application could have served as priority of the '374 patent, Petitioner relies on 35 U.S.C.
`
`§119 (c) to allege that the '374 patent could only have claimed priority to its two German
`
`priority application had the Degler priority application been "withdrawn, abandoned, or
`
`otherwise disposed of, without having been laid open to public inspection and without
`
`leaving any rights outstanding." (Petition, p. 14-15). Because Degler was not "withdrawn,
`
`abandoned, or otherwise disposed of, without having been laid open to public inspection
`
`and without leaving any rights outstanding" (id.), Petitioner asserts that under 35 U.S.C.
`
`§119 (c) the '374 patent cannot claim priority to its two German priority applications.
`
`This analysis is fatally flawed in that the Petitioner fails address the binding
`
`precedent that makes clear that the right to claim priority under 35 U.S.C. 119(a) is
`
`personal to the inventors, and that the priority application must be "for the same invention"
`
`as the patent. See, e.g., Boston Scientific Scimed, Inc. v Medtronic Vascular, Inc. 497 F.3d
`
`1293, 1297-8 (Fed. Cir. 2007); In re Gosteli 872 F.2d 1008, 1011 (Fed. Cir.1989).
`
` Rather, in support of its position, the Petitioner simply alleges that the Patent Owner
`
`of the '374 patent filed a PCT International Application claiming priority to the Degler
`
`Priority Application and that solely because of this common ownership, the '374 patent
`
`
`
`10
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`
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`cannot claim priority under 35 U.S.C. § 119 to the '374 Priority Applications for subject
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` Case IPR2017-00442
`Patent 8,573,374
`
`
`matter that is disclosed in both the '374 patent and the Degler Priority Application.
`
`(Petition, pp. 13-14). This is insufficient and contrary to law.
`
`A. Petitioner's Argument Fails Because it Ignores That the Right to Priority
` Is Personal To The Inventors Of The '374 Patent
`
`Under section (a) of 35 U.S.C. §119, the right of priority is extended to "any person
`
`who has, or whose legal representatives or assigns" have previously filed a foreign
`
`application for the same invention. 35 U.S.C. §119 (a). This gives the inventor(s) a
`
`personal right to claim priority, which means a United States applicant must establish that a
`
`prior foreign application in the name of another was in fact made on his behalf. See Vogel
`
`v. Jones, 486 F.2d 1068, 1073 (C.C.P.A. 1973) ("an applicant for a United States patent
`
`can rely for priority on the 'first filed' application by an assignee on his behalf . . . existence
`
`of an application made by assignee in a foreign country on behalf of one other than the
`
`United States inventor is irrelevant to his right of priority based on applications made on his
`
`behalf."); Boston Scientific Scimed, Inc. v Medtronic Vascular, Inc. 497 F.3d 1293, 1297-8
`
`(Fed. Cir. 2007)("At issue here is whether 35 U.S.C. § 119 (a) permits an applicant for a
`
`United States patent to benefit from the priority of a foreign application previously filed by
`
`an entity that was not acting on behalf of the U.S. applicant at the time of filing. We hold
`
`that it does not.").
`
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`11
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`
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`For the Petitioner's argument to stand, the Petitioner must show that the Degler
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` Case IPR2017-00442
`Patent 8,573,374
`
`
`Priority Application was filed on behalf of at least one of the inventors of the '374 patent.
`
`Petitioner cannot meet this requirement because the '374 patent and the Degler Priority
`
`Application do not share even a single common inventor. (Ex. 1101) (Ex. 1104, p. 3).
`
` Without a common inventor, the Degler Priority Application could not have been
`
`made on behalf of the inventors of the '374 patent, and thus, could not have been a foreign
`
`priority application to the '374 patent under 35 U.S.C. §119 (a, c). Rather than considering
`
`inventorship, the Petitioner's argument focused on the identity of ownership of the '374
`
`patent and the Degler Priority Application, which is an argument flatly rejected in both
`
`Vogel and Boston Scientific.
`
`Vogel involved facts indistinguishable from the present case. In Vogel, an inventor
`
`Jones filed a U.S. application assigned to ICI claiming priority to two British provisional
`
`applications. Vogel argued that Jones should not be entitled to claim priority to the two
`
`British applications because of an earlier filed patent (Dewing) that was also assigned to
`
`ICI and published. Vogel argued that the common ownership of the Dewing patent and
`
`Jones application should be the basis to preclude Jones from claiming priority to the two
`
`British applications. In particular, Vogel argued that ICI owned both the Jones application
`
`and the Dewing patent, and thus, Jones should have been aware of the subject matter in
`
`Dewing, and thus, cannot be considered the first inventor of the subject matter. Vogel v.
`
`
`
`12
`
`
`
`Jones, 486 F.2d at 1071-2. The Petitioner makes the same argument, claiming that the
`
` Case IPR2017-00442
`Patent 8,573,374
`
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`Patent Owner owned both the Degler Priority Application and the '374 patent. (Petition 1,
`
`pp. 13-14). The Board in Vogel considered this argument and found that the controlling
`
`point was who the actual inventors were, not who owned the patents: "[i]t is of no
`
`consequence that ICI owned the Dewing patent and Jones' British applications [and that]
`
`the controlling point was that Dewing was not Jones rather than the identity of ownership."
`
`Vogel v. Jones, 486 F.2d at 1072. The Board's decision was upheld by the CCPA on
`
`appeal, which held:
`
`[T]he existence of an application made by that assignee in a foreign country
`on behalf of one other than the United States inventor is irrelevant to his right
`of priority based on applications made on his behalf. (Emphasis added).
`Vogel v. Jones, 486 F.2d at 1073.
`
`Confirming Vogel, the court in Boston Scientific explicitly rejected the argument
`
`that "Vogel does not require the foreign applicant to have been acting on behalf of the U.S.
`
`applicant at the time the foreign application was filed." Boston Scientific Scimed, Inc. v
`
`Medtronic Vascular, Inc., 497 F.3d at 1298, 1298-9. Further, the court in Boston Scientific
`
`cited Vogel as controlling precedent, and explained:
`
`A similar issue was addressed by the Court of Customs and Patent Appeals
`in Vogel v. Jones, 486 F.2d 1068 (CCPA 1973), which, to the extent relevant
`here, is binding upon us, South Corp. v. United States, 690 F.2d 1368, 1370
`(Fed. Cir. 1982) (en banc). According to Vogel, "§ 119 gives rise to a right of
`13
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` Case IPR2017-00442
`Patent 8,573,374
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`priority that is personal to the United States applicant."
` ***
`Vogel clearly held that the above-quoted passage "means that an applicant for
`a United States patent can rely for priority on the 'first filed' application by an
`assignee on his behalf." Id. Moreover, "the existence of an application made
`by [the inventor's] assignee in a foreign country on behalf of one other than
`the United States inventor is irrelevant to his right of priority based on
`applications made on his behalf." (Emphasis and brackets in original).
`
`Boston Scientific Scimed, Inc. v Medtronic Vascular, Inc. 497 F.3d 1293, 1297-99 (Fed.
`
`Cir. 2007); see also MPEP §213.02(II) ("[T]he foreign application must have been filed by
`
`the same applicant as the applicant in the United States, or by his or her legal
`
`representatives or assigns. Consistent with longstanding Office policy, this is interpreted to
`
`mean that the U.S. and foreign applications must name the same inventor or have at least
`
`one joint inventor in common").
`
`The Petitioner puts forth no argument or evidence that the assignee of the Degler
`
`priority application acted on behalf of the inventors of the '374 patent at the time Degler
`
`was filed. Although someone other than the inventor can file a foreign application, the
`
`Federal Circuit in Boston Scientific explained that "section 119(a) . . . requires a nexus exist
`
`between the inventor and the foreign applicant at the time the foreign application was
`
`filed;" and expressly held "that a foreign application may only form the basis for priority
`
`under section 119(a) if that application was filed by either the U.S. applicant himself, or by
`
`
`
`14
`
`
`
`someone acting on his behalf at the time the foreign application was filed." Boston
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` Case IPR2017-00442
`Patent 8,573,374
`
`
`Scientific Scimed, Inc. v Medtronic Vascular, 497 F.3d at 1298-1299. The Petitioner did
`
`not show a nexus, nor could there be a nexus between the inventors of the '374 patent and
`
`the assignee of the Degler priority application because there are no inventors in common.
`
`Indeed, even where there is common inventorship between the foreign priority
`
`application and the U.S. application, it is necessary to establish that the applicant filing the
`
`foreign application was acting on behalf of the inventors. See Boston Scientific Scimed,
`
`Inc. v Medtronic Vascular, Inc. 497 F.3d 1293, 1297-98 (Fed. Cir. 2007) ("as a matter of
`
`pure logic, an entity could not have filed a foreign application "on behalf of" an inventor
`
`without the inventor's knowledge or consent; that the foreign application may have been
`
`filed in accordance with the laws of the country in which it was filed has no bearing here").
`
`Lacking even common inventors between the Degler Priority Application and the
`
`'374 patent, Petitioner cannot establish that the Degler Priority Application was filed on
`
`behalf of the inventors of the '374 patent.
`
`The Petitioner merely states that there was common ownership, but common
`
`ownership alone was rejected in Vogel and later in Boston Scientific as irrelevant. See
`
`supra.
`
`Accordingly, because the Degler Priority Application and the '374 patent do not
`
`share at least one common inventor, the Degler Priority Application could not have served
`
`
`
`15
`
`
`
` Case IPR2017-00442
`Patent 8,573,374
`
`as a priority document to the '374 patent under 35 U.S.C. §119 (a). As this is the sole basis
`
`for Petitioner's allegation that the '374 patent is not entitled to the benefit of its two priority
`
`applications, neither the Degler publication nor the Reik publication are prior art to the '374
`
`patent, and both grounds of invalidity asserted in the Petition fail. The Petition should be
`
`denied in its entirety.
`
`B. Petitioner Fails To Establish that the '374 Patent And The Degler Priority
` Application Are For The Same Invention
`
`Petitioner also fails to establish that the '374 patent and the Degler Priority
`
`Application are directed to the same invention. Section 119(a) specifies that a United States
`
`application may only claim priority to a foreign application for the "same invention." 35
`
`U.S.C. § 119 (a) ("An application for patent for an invention filed in this country by any
`
`person who has, or whose legal representatives or assigns have, previously regularly filed
`
`an application for a patent for the same invention in a foreign country which affords similar
`
`privileges in the case of applications filed in the United States.") (Emphasis added).
`
`For a United States application and foreign priority application to be considered the
`
`"same invention," the disclosure of the foreign priority application must support the claims
`
`in the United States application under the standard of 35 U.S.C. §112 ¶1 (written
`
`description, enablement). In Yasuko Kawai v. Metlesics, the Court of Customs and Patent
`
`Appeals held that the foreign priority application must comply with the disclosure
`
`
`
`16
`
`
`
` Case IPR2017-00442
`Patent 8,573,374
`
`requirements of section 112 first paragraph. Yasuko Kawai v. Metlesics, 480 F.2d 880, 885
`
`(C.C.P.A.1973) ("[T]he foreign application must meet the requirements of section 112").
`
`The Federal Circuit in In re Gosteli confirmed that a foreign priority application must
`
`comply with the written description of the invention requirement. In re Gosteli 872 F.2d
`
`1008, 1011 (Fed. Cir.1989) ("We conclude, therefore, that claims 48-51 are entitled to the
`
`benefit of their foreign priority date under section 119 only if the foreign priority
`
`application properly supports them as required by section 112, para. 1").
`
`Nowhere in the Petition does the Petitioner make such an argument or provide such
`
`an analysis. Indeed, Petitioner makes no attempt to establish that the Degler Priority
`
`Application describes the "same invention" as the '374 patent under the written description
`
`and enablement requirements of 35 U.S.C. § 112, ¶1. The Petitioner simply states that
`
`"there can be no priority rights in the '374 priority applications for any subject matter that
`
`was also disclosed in the Degler priority application," which is not proof of the "same
`
`invention" under any standard. (Petition, p. 15). The Petitioner makes no showing that the
`
`Degler Priority Application complies with the requirements of 35 U.S.C. §112 ¶ 1 for the
`
`claimed invention of the '374 patent.
`
`Accordingly, Petitioner's failure to show that the '374 patent and the Degler Priority
`
`Application are for the "same invention" is a separate, dispositive, grounds for concluding
`
`that Petitioner cannot establish that the Degler Priority Application could have been a
`
`
`
`17
`
`
`
` Case IPR2017-00442
`Patent 8,573,374
`
`priority application to the '374 patent. As this is the sole basis for Petitioner's allegation that
`
`the '374 patent is not entitled to the benefit of its two priority applications, neither the
`
`Degler publication nor the Reik publication are prior art to the '374 patent, both grounds of
`
`invalidity asserted in the Petition fail on this basis as well, and the Petition should be denied
`
`in its entirety.
`
`V. Conclusion
`
`Based on the forgoing, the Petition for Inter Partes Review of the '374 patent should
`
`be dismissed under 35 U.S.C. §314(a) because it fails to show a "reasonable likelihood"
`
`that the Petitioner will prevail in invalidating a single challenged claim of the '374 patent.
`
`The Petition should be denied with prejudice.
`
`
`
`April 4, 2017 By: /Cary Kappel/
`
`Respectfully submitted,
`
` Cary Kappel, Reg. 36,561
` William Gehris, Reg. 38,156
` David Petroff, Reg. 46,385
` Davidson, Davidson & Kappel, LLC
` 589 8th Avenue, 16th Floor
` New York, NY 10018
`
` C
`
`ounsel for Patent Owner
` SCHAEFFLER TECHNOLOGIES
` AG & CO. KG
`
`
`
`18
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` Case IPR2017-00442
`Patent 8,573,374
`
`CERTIFICATE OF COMPLIANCE
`
`
`The und
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