` Date: May 2, 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
`
`
`
`
`
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`
`
`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 SUR-REPLY
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Boston Scientific Scimed, Inc. v Medtronic Vascular, Inc. 497 F.3d 1293
`
`(Fed. Cir. 2007) ......................................................................................................................... 1, 2
`
`Vogel v. Jones, 486 F.2d 1068 (CCPA 1973) .................................................................... 1, 2, 3
`
`STATUTES
`
`35 U.S.C. 119 ............................................................................................................................ 2, 3
`
`OTHER AUTHORITIES
`
`MPEP §213.02(II) ........................................................................................................................ 2
`
`
`
`
`
`
`
`i
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`
`
`"[T]he existence of an application made by [the inventor's] assignee in a foreign
`
` Case IPR2017-00442
`Patent 8,573,374
`
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`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, 1297-99 (Fed. Cir. 2007), quoting Vogel v.
`
`Jones, 486 F.2d 1068, 1072 (CCPA 1973) (Emphasis added, brackets in original). Vogel
`
`involved the exact same facts as this case, addresses the exact same issue, is binding
`
`precedent, and dictates denial of the Petition.
`
`Petitioner does not even attempt to argue that the present case differs from Vogel,
`
`either in its facts, or in the issue it addressed. Instead, Petitioner attempts to cast doubt on
`
`the vitality of Vogel, largely by reference to Boston Scientific Scimed. Incredibly, nowhere
`
`in their Reply does Petitioner address the fact that the Federal Circuit in Boston Scientific
`
`Scimed, in 2007, cited Vogel as binding precedent, and quoted the exact same language
`
`referenced above.
`
`Petitioner seizes on the term "nexus" in one sentence of Boston Scientific Scimed
`
`and attempts to weave from this an argument that mere common ownership of an earlier
`
`application by completely different inventors can defeat a later claim of priority. However,
`
`Petitioner ignores that this passage is addressing nexus sufficient to show that the foreign
`
`assignee/applicant was acting "on behalf" of the inventors:
`
`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
`1
`
`
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`
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` Case IPR2017-00442
`Patent 8,573,374
`
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`irrelevant to his right of priority based on applications made on his behalf."
`Id. In other words, while the foreign application must obviously be for the
`same invention and may be filed by someone other than the inventor, section
`119(a) also requires that a nexus exist between the inventor and the foreign
`applicant at the time the foreign application was filed. Indeed, 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.
`
`497 F.3d at 1297 (emphasis added). Petitioner does not and cannot explain how a sentence
`
`which begins "[i]n other words" can be read as directly contradicting the immediately
`
`preceding sentence -- which is quoting the holding of Vogel.
`
`Petitioner's only other argument against the continued vitality of Vogel is the 1984
`
`Patent Law amendments allowing for joint inventors. However, in 2007, Boston Scientific
`
`Scimed cited Vogel as binding precedent and relied the exact same language of Vogel
`
`requiring that the foreign applicant be acting "on behalf" of an inventor of the later filed
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`U.S. application. Moreover, Petitioner can cite to no case questioning the validity of Vogel,
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`and do not explain how their theory is consistent with MPEP §213.02(II), which still
`
`requires that the foreign application be filed on behalf of one of the U.S. inventors.
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`Finally, Petitioner attempts to argue that Section (c) of 35 USC § 119 is completely
`
`independent of section (a), but cannot explain why there is no case law to support this
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`proposition since section (c) was added in 1962, long before Vogel. Nor does Petitioner
`
`address the first clause of section (c) "[i]n like manner and subject to the same conditions
`2
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` Case IPR2017-00442
`Patent 8,573,374
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`and requirements" which directly references back to the earlier sections, and thus expressly
`
`incorporates the "on behalf of" and "same invention" requirements of section (a).
`
`If Petitioner is to be believed, in every case having foreign priority with common
`
`owners, the USPTO and every litigation defendant would, for decades, have been asserting
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`a prior art rejection premised on a denial of priority under 35 U.S.C. § 119(c) along with
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`most rejections for obviousness type double patenting and every rejection for anticipation
`
`under 102(e). Large foreign corporations would routinely face such rejections and lose
`
`benefit of priority under 35 U.S.C. § 119(c). No such rejection has been made since Vogel
`
`rejected the identical argument because 35 USC § 119(c) does not provide a separate basis
`
`for invalidity. Rather 35 USC 119(c) simply provides an exception to 119(a) where the
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`applicant has abandoned the earliest priority application filed by or on behalf of the
`
`inventors. (Patent Owner Preliminary Response, pp. 6-8).
`
`Petitioner's argument fails for the same reason that Vogel's argument failed on
`
`identical facts in Vogel v. Jones: "the existence of an application [Degler priority
`
`application] made by that assignee [Schaeffler] in a foreign country on behalf of one
`
`[Degler, Krause, Schenck, Werner, and Englemann] other than the United States
`
`inventor [Magerkurth, Huegel, and Meissner] is irrelevant to his right of priority based
`
`on applications ['374 Priority Applications] made on his [Magerkurth, Huegel, and
`
`Meissner ] behalf." 486 F.2d at 1072 (emphasis added).
`
`
`
`
`
`3
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` Case IPR2017-00442
`Patent 8,573,374
`
`
`Respectfully submitted,
`
`May 2, 2017 By: /Cary Kappel/
`
` 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
`
` Counsel for Patent Owner
` SCHAEFFLER TECHNOLOGIES
` AG & CO. KG
`
`
`
`4
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` Case IPR2017-00442
`Patent 8,573,374
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 2nd day of May, 2017, a true and correct copy of
`
`the foregoing PATENT OWNER’S SUR-REPLY was served by electronic mail
`
`pursuant to agreement, upon the following counsel of record for Petitioners VALEO
`
`NORTH AMERICA, INC. and VALEO EMBRAYAGES:
`
`Robert C. Mattson
`Philippe J.C. Signore
`Lisa M. Mandrusiak
`Oblon LLP
`1940 Duke Street
`Alexandria, VA 22314
`Tel. (703) 412-6466
` (703) 413-3000
`Fax. (703) 413-2220
`cpdocketmattson@oblon.com
`cpdocketsignore@oblon.com
`cpdocketmandrusiak@oblon.com
`
`
`
`
`
`
`
`
` /Cary Kappel/
`Cary Kappel
`
`
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