UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EDWARDS LIFESCIENCES CORP.,
`
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`
`Patent Owner.
`_______________
`
`Case IPR2017-00444
`Patent 6,915,560
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`PATENT OWNER’S LIST OF EXHIBITS .............................................................. I
`I.
`STATEMENT OF RELIEF REQUESTED.......................................................1
`II.
`INTRODUCTION .............................................................................................1
`III. BACKGROUND ...............................................................................................2
`A. Prior Art Crimping Methods And Devices....................................................3
`B. The ’560 Patent ..............................................................................................5
`IV. THE ART AND GROUNDS OF UNPATENTABILITY RELIED ON
`BY PETITIONER.............................................................................................7
`V. THE PETITION SHOULD BE DENIED BECAUSE THE ALLEGED
`AAPA DOES NOT CONSTITUTE A PRIOR ART PATENT OR PRINTED
`PUBLICATION................................................................................................8
`VI. EVEN IF THE ALLEGED AAPA COULD BE CONSIDERED, THE
`PETITION SHOULD STILL BE DENIED BECAUSE THE SAME OR
`SUBSTANTIALLY THE SAME ART AND ARGUMENTS WERE
`PREVIOUSLY PRESENTED TO THE OFFICE..........................................13
`A. The Instant Petition Is Against The Same Claims Of The
`Same Patent Using Substantially The Same Prior Art And Arguments
`As In The First Petition ............................................................................14
`B. The Prior Art And Arguments Presented In This Petition Are Also
`The Same Or Substantially The Same As Prior Art And Arguments
`Presented During Prosecution Of The ’560 Patent ..................................16
`1. The Examiner Previously Considered Prior Art Substantially
`The Same As Yasumi.........................................................................17
`2. The Examiner Repeatedly Considered The Alleged AAPA..............21
`3. The Examiner Also Considered Morales...........................................25
`VII. PETITIONER HAS FAILED TO CARRY ITS BURDEN OF
`DEMONSTRATING A REASONABLE LIKELIHOOD OF
`OBVIOUSNESS IN ANY EVENT................................................................26
`A. Claim Construction...................................................................................27
`1.
`“A Stent Crimper Comprising”..........................................................27
`2.
`“Stationary End-Walls” And “Stationary Plates”..............................29
`
`i
`
`

`

`B. Petitioner Has Not Demonstrated That The Combination Of
`References Discloses Every Limitation Of Claims 1, 2, 6, 8-9,
`18-19, 23, 25-26, 37,
`And 40 ......................................................................................................31
`C. Petitioner Has Not Met Its Burden Of Demonstrating A Motivation
`To Combine References Or A Reasonable Expectation Of Success In
`Combining References .............................................................................33
`1. GROUND 1: Yasumi In View Of The Alleged AAPA.....................34
`a. Lack Of Motivation To Combine .........................................................34
`b. No Reasonable Expectation Of Success ...............................................42
`2. GROUND 2: Yasumi In View Of The Alleged AAPA And
`Morales...............................................................................................44
`VIII. CONCLUSION............................................................................................45
`
`-ii-
`
`

`

`TABLE OF AUTHORITIES
`
`Bell Communications Research, Inc. v. Vitalink Communications Corp.,
`55 F.3d 615 (Fed. Cir. 1995)....................................................................................................29
`
`Page(s)
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013)................................................................................................42
`
`Cannon Inc. v. Papst Licensing GMBH & Co.,
`Case No. IPR2016-01206, Paper 15 (P.T.A.B. Dec. 15, 2016).........................................21, 24
`
`Catalina Mktg. Int’l v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002)..................................................................................................28
`
`Costco Wholesale Corp., v. Robert Bosch,
`Case No. IPR2016-00035, Paper 16 (P.T.A.B. Apr. 25, 2016) ..............................................33
`
`Duncan Parking Technologies, Inc., v. IPS Group Inc.,
`Case No. IPR2016-01144, Paper 9 (P.T.A.B. Nov. 21, 2016) ..........................................15, 16
`
`Ex. Parte Ji-Young Lee,
`Appeal 2006-2328, 2006 WL 4075454 (B.P.A.I. Feb. 3, 2007)..............................................10
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`Case No. IPR2012-00001, Paper 15 (P.T.A.B. Jan. 9, 2013)..................................................31
`
`In re Arkley,
`455 F.2d 586 (C.C.P.A. 1972) .................................................................................................41
`
`In re Bush,
`296 F.2d 491 (C.C.P.A. 1961) .................................................................................................15
`
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999)................................................................................................30
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006)..................................................................................................33
`
`In re Krammes,
`314 F.2d 813 (C.C.P.A. 1963) .................................................................................................15
`
`In re Mouttet,
`686 F. 3d 1322 (Fed. Cir. 2012)...............................................................................................15
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010)................................................................................................30
`
`-iii-
`
`

`

`Intri-Plex Tech., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.,
`Case No. IPR2014-00309, Paper 83 (P.T.A.B. Mar. 23, 2014)...............................................12
`
`Knightbright Elec. Co. LTD v. Cree, Inc.,
`Case No. IPR2015-00746, Paper 8 (P.T.A.B. August 20, 2015).......................................11, 12
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007).....................................................................................................31, 33, 35
`
`Leo Pharm. Prods. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013)................................................................................................42
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015)................................................................................................31
`
`Microsoft Corp. v. Secure Web Conference Corp.,
`Case No. IPR2014-00745, Paper 12 (P.T.A.B. Sept. 29, 2014) ..............................................38
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008)................................................................................................41
`
`Nu Mark LLC v. Fontem Holdings 1, B.V.,
`Case No. IPR2016-01309, Paper 11 (P.T.A.B. Dec. 15, 2016)...............................................21
`
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`Case No. IPR2016-00165, Paper 7 (P.T.A.B. Apr. 21, 2016) .................................................42
`
`Panasonic Corp., et al. v. Optical Devices, LLC,
`Case No. IPR2014-00302, Paper 9 (P.T.A.B. Jul. 11, 2014)...................................................41
`
`Poly-America, L.P. v. GSE Lining Tech., Inc.,
`383 F.3d 1303 (Fed. Cir. 2004)................................................................................................27
`
`Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336 (Fed. Cir. 2001)................................................................................................29
`
`Rotatable Techs. LLC v. Motorola Mobility LLC,
`567 Fed. Appx. 941 (Fed. Cir. 2014).......................................................................................28
`
`Seabery N. Am., Inc. v. Lincoln Glob., Inc.,
`Case No. IPR2016-00749, Paper 13 (P.T.A.B. Sept. 21, 2016) ..............................................34
`
`Toyota Motor Corp. v. Cellport Systems, Inc.,
`Case No. IPR2015-01423, Paper 7 (P.T.A.B. Oct. 28, 2015)..................................................16
`
`Unified Patents Inc., v. John L. Berman,
`Case No. IPR2016-01571, Paper 10 at 12 (P.T.A.B. Dec. 14, 2016)................................21, 24
`
`-iv-
`
`

`

`STATUTES, RULES AND REGULATIONS
`
`37 C.F.R. § 42.104(b)(4)............................................................................................................8, 10
`
`37 C.F.R. § 42.107(a).......................................................................................................................1
`
`37 C.F.R. § 42.108(a).....................................................................................................2, 13, 16, 26
`
`35 U.S.C. § 103..............................................................................................................................31
`
`35 U.S.C. § 103(c) ...................................................................................................................10, 13
`
`35 U.S.C. § 311(b) ...............................................................................................................8, 10, 35
`
`35 U.S.C. § 325(d) ................................................................................................................. passim
`
`-v-
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`Handbook of Coronary Stents, 2000 Ed.
`
`U.S. Patent No. 5,437,083
`
`U.S. Patent No. 5,626,604
`
`U.S. Patent No. 5,725,519
`
`U.S. Patent No. 5,746,764
`
`U.S. Patent No. 5,810,873
`
`U.S. Patent No. 6,051,002
`
`U.S. Patent No. 5,951,540
`
`U.S. Patent No. 6,364,870
`
`File History Of U.S. Patent No. 6,360,577
`
`Boston Scientific’s Interrogatory Responses served on August 4,
`2016
`
`September 30, 2016 Letter From Wallace Wu to Brian Horne
`
`U.S. Patent No. 6,360,577
`
`U.S. Patent No. 6,823,576
`
`Petition for Inter Partes Review of U.S. Patent No. 6,915,560, Case
`No. IPR2017-00072 filed on October 14, 2016
`
`I
`
`

`

`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`On December 7, 2016, Edwards Lifesciences Corporation (“Petitioner”)
`
`submitted a Petition for Inter Partes Review (the “Petition” or “Pet.”) challenging
`
`claims 1, 2, 6, 8-11, 14, 15, 17-19, 23, 25-28, 31, 33-35, 37, 39, and 40 of U.S.
`
`Patent No. 6,915,560 (“the ’560 Patent”). Pursuant to 37 C.F.R. § 42.107(a),
`
`Boston Scientific Scimed, Inc. (“Patent Owner”) submits this Preliminary
`
`Response requesting that the Board deny the Petition because Petitioner has not
`
`demonstrated a reasonable likelihood of unpatentability of any challenged claim.
`
`II.
`
`INTRODUCTION
`In its second Inter Partes Review petition against the ’560 Patent,1 Petitioner
`
`asserts two grounds of obviousness arguments. Each ground relies upon what is
`
`referred to as the Applicant’s Admitted Prior Art (AAPA). Petitioner, however,
`
`presents no evidence demonstrating that the alleged AAPA was publicly available
`
`prior to the critical date of the invention. Nor does Petitioner demonstrate that the
`
`alleged AAPA constitutes a patent or a printed publication, the only statutory
`
`1 Petitioner filed its first Inter Partes Review petition on October 14, 2016 (the
`
`“First Petition”).
`
`(IPR2017-00072, Paper No. 1, Ex. 2015.) Patent Owner
`
`submitted its preliminary response to the First Petition on January 25, 2017.
`
`(IPR2017-00072, Paper No. 7.)
`
`1
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`categories of prior art on which the Board may institute an inter partes review.
`
`Indeed, the alleged AAPA relates to Patent Owner’s own work, which was never
`
`commercialized. Because Petitioner has not established that the alleged AAPA
`
`constitutes a prior art patent or printed publication, the Petition fails to comply
`
`with the statutory requirement.
`
`Even assuming that the alleged AAPA could be considered by the Board, all
`
`of the references relied on by Petitioner are the same or substantially the same as
`
`those previously presented to the Patent Office in the First Petition and during the
`
`prosecution of the ’560 Patent. Accordingly, the Board should exercise its
`
`discretion to deny the Petition under 37 C.F.R. § 42.108(a) or 35 U.S.C. § 325(d).
`
`But even if the Board is not inclined to exercise this discretion, it should still
`
`deny the Petition because Petitioner has failed to carry its burden of demonstrating
`
`that: (1) the combination of references discloses every limitation of the claimed
`
`invention; (2) there would have been sufficient motivation to combine the
`
`references at issue; and (3) there would have been a reasonable expectation of
`
`success if the references were combined.
`
`III. BACKGROUND
`
`Patent Owner has been a pioneer in stent technologies since the 1980s. A
`
`stent is a tiny tube made of metal or alloy that is placed in an artery (or other body
`
`lumens) to keep the artery open, improve blood flow, and prevent the artery from
`
`2
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`collapsing. In the 1990s, Patent Owner (including its predecessor, Scimed Life
`
`Systems, Inc.) introduced a series of innovative stent products, such as the NIR
`
`stent and the NIROYAL stent. (Ex. 2001 at 281-293.)
`
`Claiming priority to a September 22, 1999 patent application, the ’560
`
`Patent relates to an apparatus for reducing the diameter of a stent so that it can be
`
`crimped onto a delivery catheter. The delivery catheter typically includes a
`
`balloon over which the stent is crimped. The crimped stent and balloon at the end
`
`of the catheter are passed through the patient’s body to the treatment site, where
`
`the crimped stent is then expanded with the balloon to the diameter of the vessel.
`
`The expanded stent acts as a scaffold to maintain an open, unobstructed vessel.
`
`(Ex. 1101 at 1:25-31.)
`
`It was (and still is) critically important to minimize distortion of the stent
`
`during the crimping process and to allow secure retention of the stent on the
`
`balloon catheter. (Id. at 1:38-43.) A poorly crimped stent may slip and be either
`
`lost in the body or deployed in the wrong location. (Id. at 1:44-45.) A poorly
`
`crimped stent can also cause abrasion or trauma to vessel walls and damage the
`
`underlying balloon to which it is attached. (Id. at 1:44-47.)
`
`A.
`
`Prior Art Crimping Methods And Devices
`
`In the years leading up to the 1999 priority date of the ’560 Patent, numerous
`
`attempts were made to uniformly and securely crimp a stent. For example, U.S.
`
`3
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`Patent No. 5,437,083, filed in 1993, describes two parallel sliding surfaces that are
`
`moved together to evenly apply crimping forces. (Ex. 2002 at 1:48-52, 2:16-23.)
`
`U.S. Patent No. 5,626,604, filed in 1995, describes a collet with radially
`
`compressible fingers that are driven radially inward to uniformly crimp a stent.
`
`(Ex. 2003 at 2:19-28.) U.S. Patent No. 5,725,519, filed in 1996, describes a stent
`
`within a tube that is pulled through a bore of decreased diameter to uniformly
`
`crimp the stent. (Ex. 2004 at 1:33-44.) U.S. Patent No. 5,746,764, filed in 1996,
`
`describes a fluid compression apparatus to uniformly crimp a stent. (Ex. 2005 at
`
`Abstract.) U.S. Patent No. 5,810,873, filed in 1997, describes a stent and a balloon
`
`catheter that are slidably moved through a tapered opening to tightly and uniformly
`
`crimp the stent. (Ex. 2006 at Abstract, 2:12-15.)
`
`U.S. Patent No. 6,051,002, filed in 1998, describes a crimping tool having a
`
`cylindrical loop. (Ex. 2007 at Abstract, 2:22-32.) When handles of the tool are
`
`compressed, ends of the loop are pulled in opposite directions, causing the loop to
`
`crimp a stent uniformly and tightly. (Id.) U.S. Patent No. 5,951,540, filed in 1998,
`
`describes a crimping sleeve with crimping elements formed around a channel.
`
`(Ex. 2008 at Abstract, 1:66-2:19.) A delivery device with a stent can be inserted
`
`into the channel, and the stent is crimped when the sleeve is compressed. (Id.)
`
`U.S. Patent No. 6,364,870, filed in 1998, describes a device in which a first
`
`crimping portion is inserted into a second crimping portion to form a channel
`
`4
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`therebetween. (Ex. 2009 at Abstract, 1:26-52.) Further insertion of the first
`
`portion into the second portion causes the size of the channel to decrease so that a
`
`stent can be uniformly and securely crimped onto a catheter within the channel.
`
`(Id.)
`
`B.
`
`The ’560 Patent
`
`Improving upon the prior art crimping methods and devices, the ’560 Patent
`
`discloses and claims an innovative crimper that includes both coupled and movable
`
`blades forming a variable-sized aperture that applies even forces while minimizing
`
`distortion of the stent. (Ex. 1101 at 2:26-29, 2:56-65.) An exemplary crimper
`
`design is shown in Figure 4A of the ’560 Patent:
`
`5
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`
`In Figure 4A, the stent crimper comprises eight coupled blades 106 (orange)
`
`disposed about a reference circle 114 (green) to form an aperture 118, in which the
`
`stent is disposed. (Id. at 4:64-5:12, 5:46-62.) Each blade 106 includes a radial
`
`point 122 (yellow), which lies on a radial line 126 (blue) of the reference circle
`
`114. Each blade 106 may only move in a direction parallel to the radial line 126.
`
`In use, as an actuation plate 142 is rotated in a clockwise direction, the
`
`clockwise motion of the actuation plate is translated into linear motion of each
`
`linear slide 154 and blade 106 via bearing 150. (Id. at 5:46-62.) Each blade 106
`
`6
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`moves outward in a direction parallel to the radial line 126, resulting in the opening
`
`of aperture 118. Conversely, as actuation plate 142 is rotated in a counter-
`
`clockwise direction, each blade 106 moves inward in a direction parallel to the
`
`radial line 126, resulting in the closing of aperture 118. When aperture 118 closes,
`
`a radially inward force is uniformly applied to a stent, resulting in crimping of the
`
`stent.
`
`Claim 1, which is representative of the challenged claims, reads:
`
`1. A stent crimper comprising:
`a plurality of movable dies arranged to form an iris having a longitudinal
`axis, the iris defining an aperture, the dies disposed about the aperture
`and between stationary end-walls which are disposed about the
`longitudinal axis, at least one of the stationary end-walls operatively
`engaged to the dies at distinct connection locations such that the number
`of distinct connection locations and the number of dies are the same;
`each die having a first straight side and a second straight side, the first
`straight side and the second straight side conver[g]ing to form a tip;
`wherein a portion of the first straight side of each die faces the aperture,
`each first straight side parallel to the second side of an adjacent die.
`
`IV. THE ART AND GROUNDS OF UNPATENTABILITY RELIED ON
`BY PETITIONER
`
`As shown in the below table, Petitioner raises two grounds of unpatentability
`
`arguments, each based on a combination of references. (Pet. at 30.) Specifically,
`
`for every challenged claim, Petitioner relies on U.S. Patent No. 4,454,657
`
`(“Yasumi”) in combination with the alleged AAPA, which includes (1) Figure 1 of
`
`the ’560 Patent, (2) the passage at 1:62-2:21 of the ’560 Patent regarding Figure 1,
`
`and (3) the Applicant’s attorney statements in the file history of the ’560 Patent
`
`7
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`regarding Figure 1. (E.g., Pet. at 17, 30, 36, 83 (citing Ex. 1102 at 65); Ex. 1105 at
`
`¶¶ 52, 89, 111 (citing Ex. 1102 at 65).) For certain claims, Petitioner also relies on
`
`U.S. Patent No. 5,893,852 (“Morales”). (Pet. at 30.)
`
`Ground #
`1
`
`2
`
`V.
`
`Challenged Claims
`1,2, 6, 8-10, 14, 15,
`18, 23, 25, 27, 28, 31,
`33, 37, and 40
`11, 17, 19, 26, 34, 35,
`and 39
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`References
`Yasumi and
`AAPA
`
`Yasumi, AAPA,
`and Morales
`
`THE PETITION SHOULD BE DENIED BECAUSE THE ALLEGED
`AAPA DOES NOT CONSTITUTE A PRIOR ART PATENT OR
`PRINTED PUBLICATION
`
`35 U.S.C. § 311(b) provides that “[a] petitioner in an inter partes review may
`
`request to cancel as unpatentable 1 or more claims of a patent only on a ground
`
`that could be raised under section 102 or 103 and only on the basis of prior art
`
`consisting of patents or printed publications” (emphases added). See also
`
`37 C.F.R. § 42.104(b)(4) (The petition “must specify where each element of the
`
`claim is found in the prior art patents or printed publications relied upon….”)
`
`(emphasis added). Each of Petitioner’s two grounds of challenges relies on the
`
`alleged AAPA as a reference for each challenged claim. Petitioner has not
`
`established that any aspect of the alleged AAPA constitutes a prior art patent or
`
`printed publication under 35 U.S.C. § 311(b) or C.F.R. § 42.104(b)(4).
`
`8
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`First, while Figure 1 of the ’560 Patent as issued in 2005 is labeled (by
`
`mistake) as “PRIOR ART” (left below), it was not so labeled in the original patent
`
`filing on September 22, 1999 (right below):
`
`Ex. 1101 (as issued)
`
`Ex. 2010 at 37 (as filed)
`
`Figure 1, as filed on September 22, 1999, was not identified as prior art because it
`
`is not.2 Petitioner presents no evidence demonstrating that Figure 1 was publicly
`
`2 During the prosecution of the priority application of the ’560 Patent (Serial
`
`No. 09/401,218 filed on September 22, 1999, which matured into U.S. Patent
`
`No. 6,360,577), the Examiner, in a February 23, 2000 Office Action, requested,
`
`without explanation, that the Applicant label Figure 1 as “PRIOR ART.”
`
`(Ex. 2010 at 61.) In a May 23, 2000 Response, the Applicant’s attorney
`
`mistakenly obliged. (Id. at 81.) The Applicant never cited the alleged AAPA in an
`
`Footnote continued on next page
`
`9
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`available prior to the critical date of September 22, 1999. Accordingly, Petitioner
`
`has not carried its burden of establishing that Figure 1 constitutes a prior art patent
`
`or printed publication under 35 U.S.C. § 311(b) or C.F.R. § 42.104(b)(4).
`
`In the pending district court litigation where Patent Owner asserts
`
`infringement of the ’560 Patent against Petitioner, Patent Owner informed
`
`Petitioner—prior to the filing of this Petition—that Figure 1 represents Patent
`
`Owner’s own work (internally referred to as the “STAR crimper”) and that the
`
`STAR crimper was never commercialized. (Ex. 2011 at 23; Ex. 2012 at 3.)
`
`Footnote continued from previous page
`Information Disclosure Statement and the alleged AAPA does not appear on the
`
`face of the ’560 Patent or its parent patents. (Exs. 1101, 2013, 2014.) Even if
`
`Petitioner argues that Figure 1, following the Applicant’s mistaken prior art
`
`labeling, is deemed prior art by admission, the doctrine of prior art by admission
`
`does not apply to a patent owner’s own work. See 35 U.S.C. § 103(c) (pre-AIA)
`
`(excluding subject matter as prior art if it and the claimed invention “were, at the
`
`time the claimed invention was made, owned by the same person or subject to an
`
`obligation of assignment to the same person”); MPEP § 706.02(L)(2); Ex. Parte Ji-
`
`Young Lee, Appeal 2006-2328, 2006 WL 4075454 at *19 (B.P.A.I. Feb. 3, 2007);
`
`see also MPEP § 2129 (Only admissions identifying the “work of another” can be
`
`relied on for anticipation and obviousness determinations.).
`
`10
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-00444
`Petitioner does not dispute these facts in its Petition. See, e.g., Knightbright Elec.
`
`Co. LTD v. Cree, Inc., IPR2015-00746, Paper 8 at 6 (P.T.A.B. August 20, 2015)
`
`(denying institution in part because the petition did not provide any information
`
`indicating the product literature at issue was publicly accessible as a prior art
`
`printed publication).
`
`Second, the description of Figure 1 at 1:62-2:21 of the ’560 Patent merely
`
`describes how the device in Figure 1 works and contains no language suggesting
`
`that the device in Figure 1 was publicly accessible prior to September 22, 1999.
`
`(Ex. 1101.) Thus, Petitioner also fails to demonstrate that the description of Figure
`
`1 in the ’560 Patent constitutes a prior art patent or printed publication. See, e.g.,
`
`Knightbright Elec. Co. LTD v. Cree, Inc., IPR2015-00746, Paper 8 at 7 (P.T.A.B.
`
`August 20, 2015) (denying institution in part because the statements in the
`
`challenged patent discussed the use of particular materials, but did not admit such
`
`use was prior art).
`
`Third, Petitioner and its expert rely on the Applicant’s attorney statements in
`
`the file history of the ’560 Patent, suggesting that the device in Figure 1 suffered
`
`from the problem of uneven crimping forces. (Pet. at 36, 83 (citing Ex. 1102 at
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`65); Ex. 1105 at ¶¶ 52, 89, 111, 160 (citing Ex. 1102 at 65).) The statements relied
`
`on by Petitioner were made in January 2004, more than four years after the critical
`
`date of September 22, 1999. Petitioner makes no showing that the 2004 attorney
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`Patent Owner’s Preliminary Response
`IPR2017-00444
`statements were in the public domain prior to the critical date of September 22,
`
`1999. Thus, Petitioner fails to demonstrate that the statements regarding the device
`
`in Figure 1 of the ’560 Patent constitute prior art patents or printed publications.
`
`See, e.g., Knightbright Elec. Co. LTD v. Cree, Inc., Case No. IPR2015-00746,
`
`Paper 8 at 7 (P.T.A.B. August 20, 2015) (denying institution in part because the
`
`expert declaration in a related proceeding was not a prior art patent or printed
`
`publication).
`
`In sum, Petitioner fails to establish that the alleged AAPA qualifies as a
`
`prior art patent or printed publication.3 The Petition, which relies on the alleged
`
`AAPA for each of the challenged claims, should be denied for this reason alone.
`
`3 Without any explanation or analysis, Petitioner relies on a non-binding decision
`
`in Intri-Plex Tech., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.,
`
`IPR2014-00309, Paper 83 (P.T.A.B. Mar. 23, 2014) for the general proposition
`
`that “a patent applicant’s prior art admissions are prior art for purposes of inter
`
`partes review.” (Pet. at 37.) Even if Intri-Plex could be relied upon, it is readily
`
`distinguishable. The specification of the patent at issue in Intri-Plex repeatedly
`
`stated that the prior art in question was “known,” thus confirming its prior art
`
`status. Intri-Plex at 19-20. Here, there is no such statement or statements to such
`
`effect in the specification of the ’560 Patent. Further, as discussed above, Figure 1
`
`Footnote continued on next page
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`Patent Owner’s Preliminary Response
`IPR2017-00444
`VI. EVEN IF THE ALLEGED AAPA COULD BE CONSIDERED, THE
`PETITION SHOULD STILL BE DENIED BECAUSE THE SAME OR
`SUBSTANTIALLY THE SAME ART AND ARGUMENTS WERE
`PREVIOUSLY PRESENTED TO THE OFFICE
`
`Even if the alleged AAPA is deemed a prior art patent or printed publication,
`
`the Board should exercise its discretion to deny institution. Institution of inter
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`partes review is subject to the Board’s discretion. See 37 C.F.R. § 42.108(a). In
`
`addition, under 35 U.S.C. § 325(d), the Board has discretion to reject a petition for
`
`inter partes review because “the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” Here, all of Petitioner’s
`
`references and arguments are the same or substantially the same as the references
`
`and arguments previously presented in the First Petition and during the prosecution
`
`of the ’560 Patent. Therefore, the Board should exercise its discretion to deny the
`
`Petition under 37 C.F.R. § 42.108(a) or 35 U.S.C. § 325(d).
`
`Footnote continued from previous page
`was not labeled “PRIOR ART” as of the critical date of the ’560 Patent.
`
`Moreover, as discussed above, Figure 1 is Patent Owner’s own work, thus
`
`disqualifying it as prior art under 35 U.S.C. § 103(c) (pre-AIA) and precluding the
`
`application of the prior art by admission doctrine.
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`A.
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`Patent Owner’s Preliminary Response
`IPR2017-00444
`The Instant Petition Is Against The Same Claims Of The Same
`Patent Using Substantially The Same Prior Art And Arguments
`As In The First Petition
`
`In the instant Petition, the same Petitioner is challenging the same set of claims
`
`of the same patent as in the First Petition. Two out of the three references relied on in
`
`the instant Petition (the alleged AAPA and Morales) are identical to the references
`
`relied on in the First Petition—both as obviousness references. The third reference
`
`(Yasumi) relied on in the instant Petition was discussed multiple times in the First
`
`Petition. (Ex. 2015 at 7 (“Yasumi disclosed ‘an aperture setting device in which the
`
`size of the predetermined polygonal aperture can be changed, retaining the polygonal
`
`configuration.’”), 97 (“Yasumi also discloses the limitations missing from the
`
`AAPA….[showing Fig. 3 and Fig. 8 of Yasumi]”), 98 (“In Yasumi….”).)
`
`Further, the obviousness arguments in both Petitions are substantially
`
`similar. For example, in Grounds 1 and 3 of the First Petition, Petitioner relies on
`
`U.S. 5,918,511 (“Sabbaghian”) and U.S. 4,308,744 (“Baker”), respectively, for the
`
`proposition that they each disclose a “polygonal aperture.” (Ex. 2015 at 37, 42-
`
`43.) Instead of relying on Sabbaghian and Baker, Petitioner now relies on Yasumi
`
`in the instant Petition for the disclosure of a “polygonal aperture.” (Pet. at 38.)
`
`As shown in the comparison below, the polygonal aperture in Sabbaghian, Baker,
`
`and Yasumi is identical. Petitioner attempts to distinguish its current reliance on
`
`Yasumi from its previous reliance on Sabbaghian and Baker by arguing that
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`Patent Owner’s Preliminary Response
`IPR2017-00444
`“Yasumi is the primary reference” in the instant Petition, while “Sabbaghian and
`
`Baker are relied upon as secondary references” in the First Petition. (Pet. at 96.)
`
`However, it is well settled that “characterization . . . of prior art as ‘primary’ and
`
`‘secondary’ is merely a matter of presentation with no legal significance.” In re
`
`Mouttet, 686 F. 3d 1322, 1333 (Fed. Cir. 2012) (citing In re Bush, 296 F.2d 491,
`
`496 (C.C.P.A. 1961); In re Krammes, 314 F.2d 813, 816-17 (C.C.P.A. 1963)).
`
`from Yasumi
`(Ex. 1103 at Fig. 8)
`
`from Sabbaghian
`(Ex. 2015 at 9)
`
`from Baker
`(Ex. 2015 at 42)
`
`The Board has stated that “it is typically only an additional reference of
`
`which Petitioner was not, or reasonably could not have been, aware that could
`
`potentially justify the filing of a serial petition.” Duncan Parking Techs., Inc., v.
`
`IPS Grp. Inc., Case No. IPR2016-01144, Paper 9 at 10-11 (P.T.A.B. Nov. 21,
`
`2016). Here, at the time of filing of the First Petition, Petitioner was not only
`
`aware of Yasumi—the only additional reference relied on in the instant Petition, it
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`Patent Owner’s Preliminary Response
`IPR2017-00444
`expressly discussed it in the First Petition. Thus, there can be no dispute that
`
`Petitioner has no justification for filing a serial petition. In the instant Petition,
`
`Petitioner does not even attempt to explain the reason for not raising the two
`
`grounds of unpatentability relating to Yasumi in the First Petition or the reason for
`
`the seven weeks elapsed between the filings of the two Petitions. Petitioner’s
`
`second bite at the apple wastes the Board’s limited resources and imposes undue
`
`burden on Patent Owner. Id. at 7 (denying a serial petition under 37 C.F.R.
`
`§ 42.108(a) because the additional reference in the serial petition was mentioned in
`
`a previous petition). Alternatively, because the prior art and arguments raised in
`
`the instant Petition are the same or substantially the same as those in the First
`
`Petition, the Board should deny institution under 35 U.S.C. § 325(d). See Toyota
`
`Motor Corp. v. Cellport Sys., Inc., Case No. IPR2015-01423, Paper 7 at 9
`
`(P.T.A.B. Oct. 28, 2015) (rejecting a second petition under 35 U.S.C. § 325(d)
`
`because substantially the same prior art and substantially the same arguments
`
`previously were presented in the first petition).
`
`B.
`
`The Prior Art And Arguments Presented In This Petition Are
`Also The Same Or Substantially The Same A