UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`CIM MAINTENANCE INC.,
`
`Petitioner,
`
`
`v.
`
`P&RO SOLUTIONS GROUP, INC.
`
`Patent Owner.
`
`__________
`
`Case IPR2017-00516
`
`Patent 8,209,205
`
`__________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 1-20 OF U.S. PATENT NO. 8,209,205
`UNDER 35 USC §§ 311-319 AND 37 CFR §42.100 ET SEQ.
`
`
`
`
`130733.00110/105273678v.15
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2017-00516
`Patent 8,209,205
`
`INSTITUTION SHOULD BE DENIED FOR ALL GROUNDS UNDER
`35 U.S.C. § 325(D) BECAUSE THE SAME OR SUBSTANTIALLY
`THE SAME PRIOR ART OR ARGUMENTS WERE PREVIOUSLY
`
`Institution Should Be Denied for Grounds 1-3 Based on the
`Combination of Eller and Best Practice Guideline Because the
`Patent Office Already Considered the Same or Substantially the
`
`Institution Should Be Denied for Grounds 4-6 Based on the
`Combination of Eller and Palmer Because the Patent Office
`
`INTRODUCTION ......................................................................................... 1
`I.
`II. OVERVIEW OF THE ’205 PATENT ......................................................... 3
`III. PROSECUTION HISTORY OF THE ’205 PATENT ............................... 6
`IV.
`PRESENTED TO THE OFFICE ................................................................. 8
`A.
`Same Prior Art or Argument ............................................................. 9
`B.
`Already Considered the Same Prior Art ......................................... 12
`V. CLAIM CONSTRUCTION ........................................................................ 14
`A.
`Construction ....................................................................................... 15
`B.
`Sections” has Already Been Rejected by the BPAI ........................ 17
`C.
`BPAI Construction ............................................................................ 18
`VI. DESCRIPTION OF PRIMARY PRIOR ART REFERENCE ELLER . 19
`VII. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY OF ANY CLAIM ............... 20
`
`The Broadest Reasonable Interpretation of “Short Notice Outage
`Sections” Should Be “a Portion of the User Interface that Displays
`Planned Outages of Short Duration for the Purpose of Performing
`Maintenance,” Which is Consistent With the Previous BPAI
`
`Petitioner’s First Proposed Construction of “Short Notice Outage
`
`Petitioner’s Second Proposed Construction of “Short Notice
`Outage Sections” Erroneously Purports to be Consistent with the
`
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`

`

`Obvious over the Combination of Eller and Best Practice
`
`Case IPR2017-00516
`Patent 8,209,205
`
`Petitioner Acknowledges that Neither Eller Nor Best Practice
`Guideline Discloses “Short Notice Outage Sections” Under the
`
`The Petition Fails to Establish that Best Practice Guideline is a
`
`Neither Eller nor Best Practice Guideline Teaches Moving
`
`The Petition Fails to Establish that Claim 4 Is Obvious Over the
`
`Ground 3: The Petition Fails to Establish that Walkenbach is a
`
`The Dates and the Webpage Printout are Inadmissible
`
`Even if Admissible, Petitioner’s Evidence Fails to
`Establish a Reasonable Likelihood that Walkenbach Was
`
`The PTAB Should Deny Institution on Grounds 1-3 Because
`the Patent Office Already Considered the Same or Substantially
`
`A. Grounds 1-3: The Petition Fails to Establish that the Claims Are
`Guideline ............................................................................................ 22
`1.
`the Same Prior Art or Arguments ............................................. 22
`2.
`Proper Construction .................................................................. 23
`3.
`Printed Publication .................................................................... 23
`4.
`Work Orders from One Week to Another Week ...................... 31
`5.
`Combination of Eller and Best Practice Guideline ................... 33
`6.
`Printed Publication .................................................................... 36
`a.
`Under the Federal Rules of Evidence ............................. 37
`b.
`Publicly Accessible Prior to the Critical Date ................ 40
`B. Grounds 4-6: The Petition Fails to Establish that the Claims are
`Obvious over the Combination of Eller and Palmer ..................... 42
`1.
`the Same Prior Art..................................................................... 42
`2.
`One Week to Another Week ..................................................... 43
`3.
`Combination of Eller and Palmer ............................................. 44
`4.
`Publication ................................................................................ 46
`
`The PTAB Should Deny Institution on Grounds 4-6 Because
`the Patent Office Already Considered the Same or Substantially
`
`Neither Eller nor Palmer Teaches Moving Work Orders from
`
`The Petition Fails to Establish that Claim 4 Is Obvious over the
`
`The Petition Fails to Establish that Palmer is a Prior Art Printed
`
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`

`Case IPR2017-00516
`Patent 8,209,205
`The Dates and the Webpage Printout are Inadmissible
`
`Even if Admissible, Petitioner’s Evidence Fails to
`Establish a Reasonable Likelihood that Palmer Was
`
`Grounds 5 and 6: The Petition Fails to Establish a Motivation
`
`Ground 6: The Petition Fails to Establish that Walkenbach is a
`
`a.
`Under the Federal Rules of Evidence ............................. 46
`b.
`Publicly Accessible Prior to the Critical Date ................ 47
`5.
`to Combine Sinex and Walkenbach with Eller and Palmer ...... 49
`6.
`Printed Publication .................................................................... 53
`VIII. CONCLUSION ............................................................................................ 53
`
`
`
`
`
`
`
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`

`

`Case IPR2017-00516
`Patent 8,209,205
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`ADVA Optical Networking, Inc. v. Rad Data Communications Ltd.,
`IPR2016-01848, Paper 6, 2017 WL 951368 (PTAB Mar. 9, 2017) ............. 11, 14
`Apotex Inc. v. Wyeth LLC,
`IPR2014-00115, Paper 94 (PTAB Apr. 20, 2015) ................................. 35, 44, 49
`Apple Inc. v. DSS Technology Management, Inc.,
`IPR2015-00373, Paper 8 (PTAB June 25, 2015) ............................................... 37
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) .................................................................... 27, 28
`Cisco Sys., Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12, 2014 WL 4352301 (Aug. 29, 2014) ........................ 51
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc.,
`IPR2013-00223, Paper 9 (PTAB Aug. 15, 2013) ......................................... 50, 51
`Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd.,
`IPR2017-00197, Paper 10, 2017 WL 1216064 (PTAB Mar. 31,
`2017) ..................................................................................................................... 9
`EMC Corp. v. PersonalWeb Technologies, LLC et al.,
`IPR2013-00084, Paper 64 (PTAB May 15, 2014) ............................................. 38
`
`Ex Parte Jay S. Walker, Paul T. Breitenbach, Daniel E. Tedesco, Sih
`Y. Lee, Paul D. Signorelli, Geoffrey M. Gelman, & James A.
`Jorasch,
`APL 2010-005478 (PTO Feb. 28, 2011) ............................................................ 13
`Ex Parte Sharad Nishith & Gulshan Garg,
`APL 2006-2286 (PTO Nov. 27, 2006) ............................................................... 13
`Ex Parte Thomas L. Mikes & Lian Xing,
`APL 2006-2172 (PTO Feb. 1, 2007) .................................................................. 13
`
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`

`Case IPR2017-00516
`Patent 8,209,205
`
`Ex Parte Willems,
`APL 2006-0679 (PTO Apr. 26, 2006) ................................................................ 13
`Google v. Simpleair, Inc.,
`CBM2014-00054, Paper 19 (PTAB May 13, 2014) ........................................... 50
`Hillgrove, Inc. v. Symantex Corp.,
`271 F.Supp.2d 964 (E.D. Mich. July 9, 2003) .................................................... 38
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999) .......................................................................... 14
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) .......................................................................... 14
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) .................................................................... 24, 41
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) .......................................................................... 24
`Lg Elecs., Inc. v. ATI Technologies ULC,
`IPR2015-00327, Paper 13, 2015 WL 4467385 (PTAB July 10,
`2015) ................................................................................................................... 11
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003, Paper 8 (PTAB Oct. 25, 2012) ............................................. 21
`
`Lower Drug Prices for Consumers, LLC, v. Forest Laboratories
`Holdings Ltd.,
`IPR2016-00379, Paper 14, 2016 WL 5231792 (PTAB July 1,
`2016) ......................................................................................................... 9, 10, 11
`Microsoft Corp. v. Corel Software, LLC,
`IPR2016-01300, Paper 13, 2017 WL 380951 (PTAB Jan. 4, 2017) ............ 24, 41
`Neil Ziegman, N.P.Z., Inc. v. Carlis G. Stephens,
`IPR2015-01860, Paper 11, 2016 WL 1084154 (PTAB Feb. 24,
`2016) ................................................................................................................... 11
`Procter & Gamble Co. v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 49
`
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`

`Case IPR2017-00516
`Patent 8,209,205
`
`Servicenow, Inc. v. Hewlett-Packard Co.,
`IPR2015-00707, Paper 12, 2015 WL 5117886 (PTAB Aug. 26,
`2015) ....................................................................................................... 38, 39, 42
`Shopkick, Inc. v. Novitaz, Inc.,
`IPR2015-00279, Paper 7 (PTAB May 29, 2015) ............................................... 48
`Square, Inc. v. Unwired Planet, LLC,
`CBM2014-00156, Paper11, 2014 WL 7335931 (PTAB Dec. 24,
`2014) ................................................................................................................... 40
`St. Luke’s Cataract & Laser Inst., P.A. v. Sanderson,
`2006 WL 1320242 (M.D. Fla. May 12, 2006) ................................................... 38
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00148, Paper 41, 2015 WL 1906730 (PTAB Apr. 23,
`2015) ....................................................................................................... 37, 38, 39
`Toshiba v. Intellectual Ventures II LLC,
`IPR2014-00201, Paper 11 (PTAB May 21, 2014) ............................................. 48
`TRW Automotive US LLC v. Magna Electronics Inc.,
`IPR2014-01348, Paper 25, 2016 WL 212791 (PTAB Jan. 15,
`2016) ................................................................................................................... 42
`TRW Automotive US LLC v. Magna Electronics Inc.,
`IPR2014-00257 (PTAB June 26, 2014).............................................................. 49
`TRW Automotive US LLC v. Magna Electronics Inc.,
`IPR2014-00259 (PTAB Aug. 28, 2014) ............................................................. 50
`Victaulic Co. v. Tieman,
`499 F.3d 227 (3d Cir. 2007) ............................................................................... 38
`Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC,
`IPR2015-00276, Paper 8 (PTAB Jun. 1, 2015) ............................................ 49, 51
`Wowza Media Systems, LLC v. Adobe Systems, Inc.,
`IPR2013-00054, Paper 12 (PTAB April 8, 2013) .............................................. 48
`STATUTES
`35 U.S.C. §103 ............................................................................................... 1, 20, 47
`
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`Case IPR2017-00516
`Patent 8,209,205
`35 U.S.C. §325(d) ........................................................................1, 2, 8, 9, 21, 22, 42
`REGULATIONS
`37 C.F.R. § 41.50(b) ................................................................................................ 12
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 50
`37 C.F.R. § 42.20(c) ................................................................................................. 20
`37 C.F.R. § 42.62 ..................................................................................................... 37
`
`
`
`
`
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`

`Case IPR2017-00516
`Patent 8,209,205
`
`
`
`Exhibit List
`Pursuant to 37 C.F.R. §42.63(e), Patent Owner P&RO Solutions Group, Inc.,
`
`submits the following exhibit list.
`
`Ex 2001
`
`U.S. Patent No. 7, 210,119 to Pothos et al.
`
`Memorandum and Order Granting Motion to Dismiss, dated
`March 31, 2017, P&RO Solutions Group, Inc. v. CiM
`Maintenance Inc., No. 6:16-cv-00095-RWS
`Markman Hearing Transcript, dated February 14, 2017,
`P&RO Solutions Group, Inc. v. CiM Maintenance Inc., No.
`6:16-cv-00095-RWS
`Deposition Transcript of James Kirk Samsel, dated March
`29, 2017, P&RO Solutions Group, Inc. v. CiM Maintenance
`Inc., No. 6:16-cv-00095-RWS
`
`Ex 2002
`
`Ex 2003
`
`Ex 2004
`
`
`
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`

`Case IPR2017-00516
`Patent 8,209,205
`
`I.
`
`INTRODUCTION
`
`The Petition challenges the patentability of the claims of U.S. Patent No.
`
`8,209,205 (“the ’205 Patent”) (Exhibit 1001) based on six grounds. Grounds 1-3
`
`assert that the claims are rendered obvious under 35 U.S.C. §103 over the
`
`combination of at least U.S. Patent No. 7,225,040 to Eller et al. (“Eller”) in view of
`
`Best Practice Guideline for Maintenance Planning and Scheduling by the Electric
`
`Power Research Institute, Inc. (December 2000) (“Best Practice Guideline”).
`
`Grounds 2 (directed only to claims 5-7 and 16-20) and 3 (directed only to claims
`
`12, 13, and 15) additionally combine U.S. Patent No. 6,606,546 to Sinex et al.
`
`(“Sinex”) or
`
`John Walkenbach, Microsoft Excel 2000 Bible
`
`(1999)
`
`(“Walkenbach”), respectively, with Eller and Best Practice Guideline for some of
`
`the dependent claims. Grounds 4-6 assert that the claims are rendered obvious
`
`over the combination of at least Eller and Doc Palmer, Maintenance Planning and
`
`Scheduling Handbook (1999) (“Palmer”). Grounds 5 (directed only to claims 5-7
`
`and 16-20) and 6 (directed only to claims 12, 13, and 15) additionally combine
`
`Sinex and Walkenbach, respectively, with Eller and Palmer for some of the
`
`dependent claims.
`
`Before considering the merits of any of Petitioner’s arguments, the Patent
`
`Trial and Appeal Board (“the PTAB”) should deny institution under 35 U.S.C.
`
`§325(d) because all of the grounds in the Petition are “the same or substantially the
`
`
`
`1
`
`

`

`Case IPR2017-00516
`Patent 8,209,205
`same prior art or arguments [that] previously were presented to the Office.” Every
`
`asserted ground relies on the same primary reference, Eller, that the Examiner
`
`relied on during prosecution and that the Board of Patent Appeals and
`
`Interferences (“the BPAI”) considered on appeal. The prior art that the Petition
`
`attempts to combine with Eller are also the same or substantially the same prior art
`
`considered by the Patent Office. The relied upon teachings of Best Practice
`
`Guideline are substantially the same as those previously rejected by the BPAI, and
`
`Palmer was expressly cited and considered by the BPAI. Thus, every ground is the
`
`same or substantially the same prior art or argument previously presented to the
`
`Office, and institution should be denied on all grounds under Section 325(d).
`
`If the PTAB declines to exercise its discretion under Section 325(d), it
`
`should still deny institution on all grounds. First, the PTAB should adopt a
`
`construction of “short notice outage section” consistent with the construction
`
`adopted by the BPAI and the District Court in the related litigation proceeding.
`
`Since Petitioner concedes that Grounds 1-3 do not apply to the construction
`
`adopted by the BPAI, the PTAB should deny institution on Grounds 1-3.
`
`Institution should be denied for all grounds because Petitioner has not
`
`pointed to anything in the prior art that discloses that “work orders can be moved
`
`from one work week section to another work week section,” as recited in claim 1.
`
`Additionally, institution should be denied with respect to claim 4 (raised only in
`
`
`
`2
`
`

`

`Case IPR2017-00516
`Patent 8,209,205
`Grounds 1 and 4) because Petitioner has not pointed to anything in the prior art that
`
`discloses the limitations of that claim.
`
`Institution should also be denied for all grounds because Petitioner has not
`
`met its burden of showing a reasonably likelihood that Best Practice Guideline,
`
`Palmer, and Walkenbach are prior art printed publications.
`
`Finally, institution should be denied for Grounds 5 and 6 because Petitioner
`
`has not shown that a person having ordinary skill in the art (“PHOSITA”) would
`
`have been motivated to combine the teachings of the prior art references to achieve
`
`the claimed invention.1
`
`II. OVERVIEW OF THE ’205 PATENT
`
`The ’205 Patent is directed to computerized planning and scheduling
`
`systems, embodied in the “Planning and Scheduling Tool Assistant” software
`
`(“PaSTA”) sold by Petitioner P&RO in the United States. Ex. 1001 at 2:27-30; Ex.
`
`1002 at 58:23-59:7. The systems claimed by the ’205 Patent are “designed for
`
`Schedulers, Planners, and Maintenance Supervisors in an Industrial facility to
`
`extremely quickly move work order schedules, status planning, and manage
`
`resources for optimum utilization.” Ex. 1001 at 2:27-30. In order to do so, the
`
`1 There are many other reasons why Grounds 1-6 do not render the claims invalid.
`
`Patent Owner reserves the right to raise any and all additional arguments should
`
`any of the grounds be instituted.
`
`
`
`3
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`

`

`Case IPR2017-00516
`Patent 8,209,205
`system performs unique methods of data management related to planning,
`
`scheduling, and execution of maintenance at industrial sites. Id. at 2:43-51.
`
`The system of the ’205 patent has two user interfaces: the work week
`
`assignment tool (100, FIGS. 1 and 2) and the work week management form (300,
`
`FIGS. 3 and 4). The work week assignment tool “is for the scheduling and
`
`planning activities by the schedulers and planners” and the work week
`
`management form “is for the maintenance supervisor to execute the work week.”
`
`Ex. 1001 at 3:26-30.
`
`The work week assignment tool (reproduced below) enables dragging and
`
`dropping work orders from unscheduled jobs section to a schedule section with
`
`multiple work weeks. Id. at 2:13-24, 2:52-3:30, 4:30-34, 5:50-57. Sections for
`
`scheduled jobs, short notice outage, planned outage, and backlog are also provided,
`
`and work orders can be dragged and dropped between these sections. Id.
`
`
`
`4
`
`

`

`Case IPR2017-00516
`Patent 8,209,205
`
`
`
`
`
`Consistent with this description, independent claim 1 recites:
`
`A planning and scheduling system running on a computing
`device, the system comprising:
`a user interface; and
`a computing device in communication with said user interface,
`said computing device being programmed to implement:
`work week sections;
`a scheduled job section;
`an unscheduled job section;
`a short notice outage section;
`a planned outage section; and
`
`
`
`5
`
`

`

`Case IPR2017-00516
`Patent 8,209,205
`work orders, wherein the work orders can be moved from
`one work week section to another work week section,
`from unscheduled to scheduled, to short notice outage, to
`planned outage, and to backlog, by dragging and
`dropping the work orders using said user interface.
`When a work order is dragged and dropped into a work week section in the
`
`schedule, the system makes a determination of resource loading as a result of the
`
`schedule change. Ex. 1001 at 2:53-62. For example, the system may determine
`
`whether a group of workers has been overloaded by the change. Id. In this regard,
`
`dependent claims 3 and 4 recite that, “when work orders are dropped into a work
`
`week section, real time indication of resource loading is determined,” and that “the
`
`resource loading is determined based on whether a work group has been over
`
`loaded overloaded with too much work.”
`
`III. PROSECUTION HISTORY OF THE ’205 PATENT
`
`During prosecution of the ’205 patent, the Examiner rejected the claims as
`
`obvious over a combination of Eller and U.S. Patent No. 7,210,119 to Pothos et al.
`
`(“Pothos”). Ex. 1009 at 86-123, 163-182, 218-229. The Examiner contended that
`
`Eller disclosed each limitation of independent claim 1, the sole independent claim,
`
`except for “short notice outage sections,” which the Examiner acknowledged Eller
`
`did not teach. Id. For this limitation, the Examiner relied on the teaching of
`
`“unscheduled tasks” in Pothos. Id.
`
`On appeal to the BPAI, Applicant presented a series of arguments as to why
`
`
`
`6
`
`

`

`Case IPR2017-00516
`Patent 8,209,205
`the Examiner’s rejection was incorrect and why the prior art cited by the Examiner
`
`did not render the claims obvious. Ex. 1009 at 133-139. Among other things,
`
`Applicant argued that the “short-notice tasks as taught in Pothos are not the same
`
`as a short-notice outage as recited in the present claims.” Id. at 133. The
`
`Examiner’s proposed construction of “short notice outage sections,” similar to that
`
`now asserted by Petitioner, treated short notice outages as unplanned unavailable
`
`time. The Examiner cited examples such as “training, meetings, emergency
`
`vacation, etc.,” which the Examiner argued is taught in Pothos (“unscheduled
`
`tasks”). Id. at 105.
`
`In its Decision on Appeal, the BPAI unequivocally rejected the Examiner’s
`
`construction and articulated a clear construction for “short notice outages:”
`
`Short notice outage work (aka SNOW) is not defined in
`the Specification, but is a term of art in the maintenance
`arts. That is, it has a customary meaning to one of
`ordinary skill apart from what others might take to be its
`plain meaning. It refers to planned outages for the
`purpose of performing maintenance. Thus, since short
`is planned,
`notice outage work
`the Examiner’s
`interpretation of ‘an event or activity added to the
`schedule with little notice’ fits within the customary
`meaning, but is overly broad. More to the point, the
`portion of Pothos
`the Examiner cites
`refers
`to
`‘unscheduled tasks’ which is the antithesis of the
`planned nature of short notice outage work.
`Ex. 1009 at 63-64 (emphasis added). In support of this construction of “short
`
`notice outages,” the BPAI relied on a discussion in Palmer of Short Notice Outage
`
`
`
`7
`
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`

`Case IPR2017-00516
`Patent 8,209,205
`Work (SNOW). Id. at 63. The BPAI had Eller and Palmer before it, yet it
`
`apparently chose not to issue a rejection based on that combination despite having
`
`the ability to do so under the rules.
`
`On remand, the Examiner clearly reviewed and understood the BPAI’s
`
`opinion. See Ex. 1009 at 29-30, 38-40 (showing the Examiner conducted
`
`numerous supplemental searches based upon the BPAI’s opinion, indicating that
`
`the Examiner fully considered the BPAI’s opinion). Like the BPAI, the Examiner
`
`declined to issue a new rejection over the combination of Eller and Palmer, despite
`
`having both references explicitly cited in the BPAI’s opinion, and issued a notice
`
`of allowance. Id. at 22-28.
`
`IV. INSTITUTION SHOULD BE DENIED FOR ALL GROUNDS UNDER
`35 U.S.C. § 325(D) BECAUSE THE SAME OR SUBSTANTIALLY THE
`SAME PRIOR ART OR ARGUMENTS WERE PREVIOUSLY
`PRESENTED TO THE OFFICE
`
`35 U.S.C. §325(d) provides that, “[i]n determining whether to institute or
`
`order a proceeding under this chapter, chapter 30, or chapter 31, the Director may
`
`take into account whether, and reject the petition or request because, the same or
`
`substantially the same prior art or arguments previously were presented to the
`
`Office.” 2 The PTAB employs Section 325(d) to deny institution because
`
`
`2 The PTAB recognizes that “[a]lthough this provision appears in Chapter 32 of the
`
`Patent Act, which is directed to post-grant reviews, by its terms it is applicable also
`
`
`
`8
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`

`

`Case IPR2017-00516
`Patent 8,209,205
`“readjudicating substantially the same prior art and arguments as those presented
`
`during prosecution would not be an efficient use of Board resources.” Lower Drug
`
`Prices for Consumers, LLC, v. Forest Laboratories Holdings Ltd., IPR2016-00379,
`
`Paper 14 at 12, 2016 WL 5231792 (PTAB July 1, 2016).
`
`The Petition presents six grounds of rejection, all based on combining Eller
`
`with either Best Practice Guideline or Palmer. These references, however,
`
`represent the same or substantially the same prior art or arguments already
`
`considered by the Patent Office. Thus, the PTAB can and should deny institution
`
`on all grounds on this basis alone.
`
`A. Institution Should Be Denied for Grounds 1-3 Based on the
`Combination of Eller and Best Practice Guideline Because the
`Patent Office Already Considered the Same or Substantially the
`Same Prior Art or Argument
`
`Petitioner, like the Examiner during prosecution, relies on Eller as the
`
`primary reference to support its obviousness rejections, and, like the Examiner,
`
`acknowledges that Eller does not disclose “short notice outage sections.” Petition
`
`at 15-16, 24. To cure this deficiency, the Petition’s first three grounds of invalidity
`
`rely on the teaching in Best Practice Guideline of a worker becoming unavailable
`
`
`to proceedings under Chapter 31, which covers inter partes review proceedings.”
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`See Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd., IPR2017-00197, Paper
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`10 at 5, 2017 WL 1216064, at *4 (PTAB Mar. 31, 2017).
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`to work due to unscheduled tasks such as unscheduled administrative duties or
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`unscheduled absences. Id. at 19, 20, 24. This argument is substantially the same
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`as the argument the Examiner made during prosecution and that was rejected by
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`the BPAI. The Examiner relied on Pothos to teach “short notice outage sections,”
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`arguing that “an emergency is the equivalent of a short notice.” In support, the
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`Examiner cited to column 9, lines 43-49 of Pothos, which provides that an
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`“operator at workstation 7 can determine how to best deal with unscheduled tasks
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`e.g. in an emergency situation, in which an engineer needs immediately to be
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`dispatched to deal with the unscheduled task.” Ex. 2001 at 9:43-49 (emphasis
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`added).
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`Petitioner, like the Examiner did previously, relies on unscheduled tasks to
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`teach “short notice outage sections.” The BPAI expressly rejected this argument,
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`finding “unscheduled tasks” to be “the antithesis of the planned nature of short
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`notice outage work.” Ex. 1009 at 63-64. Petitioner uses Best Practice Guideline to
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`make the same arguments as those already made by the Examiner and rejected by
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`the BPAI—that Eller does not disclose “short notice outage sections,” but that this
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`deficiency is cured by a reference teaching “unscheduled tasks.”
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`The PTAB has denied institution where, as here, the same argument was
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`previously asserted by the examiner and rejected by the BPAI on appeal. For
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`example, in Lower Drug Prices for Consumers, LLC, IPR2016-00379, Paper 14, as
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`in the present case, the petitioner asserted the same primary reference as previously
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`cited by the examiner and the BPAI, and combined it with a new secondary
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`reference. Id. In denying institution, the PTAB found that the petitioner’s
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`arguments that the claims were obvious, as in this case, were substantially the same
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`arguments as previously asserted by the examiner and reversed by the BPAI. Id.
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`Thus, Petitioner’s first three grounds are based on the same or substantially
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`the same prior art or arguments as those already considered by the Patent Office.
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`The PTAB regularly denies institution in cases like this. See, e.g., Neil Ziegman,
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`N.P.Z., Inc. v. Carlis G. Stephens, IPR2015-01860, Paper 11, 2016 WL 1084154
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`(PTAB Feb. 24, 2016) (denying institution where the petitioner relied on the same
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`primary reference and a new secondary reference); ADVA Optical Networking, Inc.
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`v. Rad Data Communications Ltd., IPR2016-01848, Paper 6 at 24-25, 2017 WL
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`951368, at *10 (PTAB Mar. 9, 2017) (denying institution where the petitioner
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`relied on all new primary references, finding that the new references were applied
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`interchangeably with the old references, and thus the arguments were substantially
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`the same as those previously presented to the Office); Lg Elecs., Inc. v. ATI
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`Technologies ULC, IPR2015-00327, Paper 13 at 10-12, 2015 WL 4467385, at *6
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`(PTAB July 10, 2015) (denying institution where the petitioner relied on all new
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`references, finding the arguments advanced by the petitioner were the same or
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`substantially the same as the arguments previously presented).
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`For these reasons, Grounds 1-3 present the same or substantially the same
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`prior art or arguments as those already considered and rejected by the BPAI. The
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`PTAB should therefore deny institution on Grounds 1-3 for at least this reason.
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`B. Institution Should Be Denied for Grounds 4-6 Based on the
`Combination of Eller and Palmer Because the Patent Office
`Already Considered the Same Prior Art
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`Grounds 4-6 rely on a combination of Eller and Palmer (and other references
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`for some of the dependent claims). Like Grounds 1-3, and like the Examiner
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`during prosecution, Petitioner concedes that Eller does not disclose “short notice
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`outage sections,” and relies on the teaching of a secondary reference to cure this
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`deficiency of Eller. Petition at 40-43. For Grounds 4-6, Petitioner relies on Palmer
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`to cure Eller’s deficiency. Palmer, however, was already considered by the BPAI
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`and the Examiner before the claims were allowed. Thus, the combination of Eller
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`and Palmer is the same prior art already considered by the Patent Office.
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`While Palmer was cited by the BPAI for claim construction purposes and
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`not used in a rejection, the BPAI could have rejected the claims over a combination
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`of Eller and Palmer, but chose not to. See 37 C.F.R. §41.50(b) (“Should the Board
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`have knowledge of any grounds not involved in the appeal for rejecting any
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`pending claim, it may include in its opinion a statement to that effect with its
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`reasons for so holding, and designate such a statement as a new ground of rejection
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`of the claim.). Indeed, the BPAI regularly and routinely raises new grounds of
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`rejection on appeal. See Ex Parte Willems, APL 2006-0679 (PTO Apr. 26, 2006);
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`Ex Parte Sharad Nishith & Gulshan Garg, APL 2006-2286 (PTO Nov. 27, 2006);
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`Ex Parte Jay S. Walker, Paul T. Breitenbach, Daniel E. Tedesco, Sih Y. Lee, Paul
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`D. Signorelli, Geoffrey M. Gelman, & James A. Jorasch, APL 2010-005478 (PTO
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`Feb. 28, 2011); Ex Parte Thomas L. Mikes & Lian Xing, APL 2006-2172 (PTO
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`Feb. 1, 2007).
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`There is no question that the BPAI had the Eller and Palmer combination
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`before it. Eller was the principal reference, and Palmer was the very reference
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`used by the BPAI to issue its claim construction. The BPAI had every opportunity
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`under the rules to issue a new rejection based on the Eller and Palmer combination,
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`yet it appropriately chose not to.
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`There is every reason for the BPAI to have refused to issue a rejection. As
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`explained above, Applicant presented a host of reasons why Eller—the primary
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`reference—did not disclose many of the limitations of the claims and was not the
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`type of reference that should be used to invalidate the claims. Armed with all of
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`these arguments, as well as its own resources to review Eller and Palmer, the only
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`reasonable conclusion is that the BPAI did not believe the combination of Eller and
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`Palmer rendered any of the claims obvious.
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`Moreover, on