IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`Valeo North America, Inc. and Valeo Embrayages,
`Petitioners,
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`v.
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`Schaeffler Technologies AG & Co. KG,
`Patent Owner.
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`__________________
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`Case IPR2017-00442
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`U.S. Patent No. 8,573,374
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`__________________
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`REPLY TO PATENT OWNER PRELIMINARY RESPONSE
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`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`Valeo North America, Inc. and Valeo Embrayages,
`Petitioners,
`
`v.
`
`Schaeffler Technologies AG & Co. KG,
`Patent Owner.
`
`__________________
`
`Case IPR2017-00442
`
`U.S. Patent No. 8,573,374
`
`__________________
`
`REPLY TO PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`Reply to Patent Owner Preliminary Response
`Case IPR2017-00442
`U.S. Patent No. 8,573,374
`There is no case law holding that the requirements of § 119(a)
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`are equally applicable to § 119(c). Rather, § 119(c) is a standalone
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`provision that should be evaluated independently.
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`Regardless, even for § 119(a), there is no case law firmly
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`requiring a common inventor among the applications. Instead, Bos.
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`Sci. Scimed, Inc. v. Medtronic Vascular, Inc. holds that a nexus
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`between the inventor and the foreign applicant is sufficient to award
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`priority under § 119(a).
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`Thus, irrespective of the applicability of § 119(a), the ’374 patent
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`should not be entitled to the benefit of priority under § 119(c).
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`A. Sections 119(a) and 119(c) are standalone provisions.
`None of the cases cited by Patent Owner unambiguously holds
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`that the requirements of § 119(a) are applicable to § 119(c). These are
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`standalone provisions. Section 119(a) discusses the benefit of priority
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`for foreign applications filed within a 12-month window. Section
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`119(c) serves as a bar to priority, and is not subject to a 12-month
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`limit as described in § 119(a). Because § 119(c) has no 12-month
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`limitation, the “first filed” application referred to in § 119(a) cannot
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`be the “first filed” application of § 119(c). Thus, any requirements for
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`Reply to Patent Owner Preliminary Response
`Case IPR2017-00442
`U.S. Patent No. 8,573,374
`the first-filed application in § 119(a) cannot be automatically
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`extended to § 119(c). The MPEP supports this independent
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`interpretation. See MPEP §§ 213.02.II (common inventor discussed
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`specifically with regard to § 119(a)) and 213.03.II (explanation of §
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`119(c) with no mention of common inventor).
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`B. The case law does not mandate a common inventorship
`requirement for either § 119(a) or § 119(c).
`Regardless, Patent Owner overstated its position. There is no
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`firm requirement for § 119(a)—and thus § 119(c), based on Patent
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`Owner’s position—that the applications share one common inventor.
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`Scimed addressed a specific situation where an inventor attempted to
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`claim priority to two European patent applications filed by a company
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`at a time where there was no legal relationship between the company
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`and the inventor. 497 F.3d 1293, 1296 (Fed. Cir. 2007). In holding
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`that this was impermissible, the Court made it clear that the foreign
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`application “may be filed by someone other than the inventor”
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`provided that a “nexus exist between the inventor and the foreign
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`applicant at the time the foreign application was filed.” Id. at 1297.
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`Here, the inventors of the ’374 patent were Patent Owner’s employees
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`when the Degler priority document was filed, and thus there is a
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`Reply to Patent Owner Preliminary Response
`Case IPR2017-00442
`U.S. Patent No. 8,573,374
`nexus between the inventor and the foreign applicant. In fact,
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`Scimed goes on to state that “an applicant for a United States patent
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`can rely on priority on the ‘first filed’ application by an assignee on
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`his behalf” without specifying that common inventorship is a
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`requirement. Similarly, the Board has observed that “the proposition
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`that the inventive entity must be the same in both the foreign and the
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`corresponding U.S. application in order to obtain benefit can no
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`longer be accepted, if it ever was, as a hard and fast rule in view of
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`the liberalization of the requirements for filing a U.S. application …
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`wrought by the 1984 amendment of 35 U.S.C. § 116.” Reitz v. Inoue,
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`39 USPQ2d 1838, 1840 (BPAI 1995). As such, pre-1984 cases such as
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`Vogel v. Jones cited by Patent Owner or Olson v. Julia (209 USPQ
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`159 (BPAI 1979)) are outdated and not controlling. Therefore, a first-
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`filed application by the assignee can serve as a bar to an applicant for
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`a United States applicant even if the applications do not have
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`common inventorship, as is the case here. Applying Scimed to the
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`’374 patent means that the ’374 patent could claim priority only to
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`subject matter that was not disclosed and used as a basis for priority
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`in Degler.
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`Reply to Patent Owner Preliminary Response
`Case IPR2017-00442
`U.S. Patent No. 8,573,374
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`/s/ Robert C. Mattson
`Robert. C. Mattson
`Reg. No. 42,850
`Philippe J.C. Signore
`Reg. No. 43,922
`Lisa M. Mandrusiak
`Reg. No. 72,653
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`Respectfully submitted,
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`Dated: April 26, 2017
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`Customer Number
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`22850
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`Tel. (703) 413-3000
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`Fax. (703) 413-2220
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`Reply to Patent Owner Preliminary Response
`Case IPR2017-00442
`U.S. Patent No. 8,573,374
`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies
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`service of this REPLY TO PATENT OWNER PRELIMINARY
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`RESPONSE on the counsel of record for the Patent Owner by filing
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`this document through the PTABE2E System as well as delivering a
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`copy via electronic mail to the following addresses:
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`Cary Kappel
`William Gehris
`David Petroff
`ckappel@ddkpatent.com
`wgehris@ddkpatent.com
`dpetroff@ddkpatent.com
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`/s/ Robert C. Mattson
`Robert. C. Mattson
`Reg. No. 42,850
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`Dated: April 26, 2017
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