UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 8,902,760
`
`Case No.: IPR2019-00033
`
`
`______________
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 8,902,760
`
`Case No.: IPR2019-00033
`
`
`______________
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`Case No.: IPR2019-00033
`Patent No.: 8,902,760
`
`
`
`
`
`Table of Contents
`
`Atty. Dkt. No.: CHRMC0123IPR1
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`Table of Authorities .................................................................................................. ii
`
`List of Exhibits ......................................................................................................... iii
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Statute, 35 U.S.C. § 315(a)(1), Bars Petitioner’s IPR Request ................ 1
`
`III. Conclusion ....................................................................................................... 7
`
`Certificate of Service ................................................................................................. 8
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 ......................................... 9
`
`
`
`
`
`
`
`i
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`
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`Atty. Dkt. No.: CHRMC0123IPR1
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`Case No.: IPR2019-00033
`Patent No.: 8,902,760
`
`
`
`
`
`Table of Authorities
`
`Cases
`
`Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.,
`
`905 F.3d 1311 (Fed. Cir. 2018) .............................................................. 1, 4, 5
`
`Click-To-Call Techs., LP v. Ingenio, Inc.,
`
`899 F.3d 1321 (Fed. Cir. 2018) .......................................................... 2, 3, 5, 6
`
`Noven Pharms., Inc. v. Novartis AG,
`
`IPR2014-00549, Paper 10 (PTAB Oct. 14, 2014) ........................................... 4
`
`SAS Inst., Inc. v. Iancu,
`
`138 S. Ct. 1348 (2018) ..................................................................................... 3
`
`Statutes
`
`35 U.S.C. § 315 ......................................................................................... 1, 2, 3, 4, 6
`
`
`
`
`
`
`
`ii
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`
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`Case No.: IPR2019-00033
`Patent No.: 8,902,760
`
`
`
`
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`List of Exhibits
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`Atty. Dkt. No.: CHRMC0123IPR1
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`Exhibit
`Description
`No.
`Petitioner’s Complaint challenging the validity of ‘760 patent claims
`2001
`2002 Order Temporarily Staying Case
`2003 Notice of Voluntary Dismissal
`
`
`
`
`
`
`
`
`
`iii
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`
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`Case No.: IPR2019-00033
`Patent No.: 8,902,760
`
`
`I.
`
`Introduction
`
`Atty. Dkt. No.: CHRMC0123IPR1
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner, Chrimar Systems, Inc.
`
`(“Chrimar”), submits the following Preliminary Response (“Preliminary Response”)
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`to the Petition for Inter Partes Review of U.S. Patent No. 8,902,760 (“the ‘760
`
`Patent”).
`
`Patent Owner respectfully asks the Patent Trial and Appeal Board (“the
`
`Board”) deny the Petition on every ground alleged by the Petitioner.
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`II. The Statute, 35 U.S.C. § 315(a)(1), Bars Petitioner’s IPR Request
`
`Per 35 U.S.C. § 315(a)(1): “An inter partes review may not be instituted if,
`
`before the date on which the petition for such a review is filed, the petitioner or real
`
`party in interest filed a civil action challenging the validity of a claim of the patent.”
`
`In the present proceeding, the Petitioner filed a civil action challenging the validity
`
`of a claim of the ‘760 Patent in 2014, long before the date (August 3, 2018) on which
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`it filed the petition for review. (Ex. 2001, ¶¶ 7, 9, 76-81.) As a matter of law,
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`therefore, “inter partes review may not be instituted.” 35 U.S.C. § 315(a)(1).
`
`Petitioner contends that § 315(a)(1) does not apply, despite its plain language,
`
`because Petitioner “voluntarily dismissed [its DJ actions] without prejudice.” (Pet.
`
`at 9.) But, as the Federal Circuit has made clear in two recent cases, voluntary
`
`dismissal of a civil action does not toll a § 315 bar date. Bennett Regulator Guards,
`
`Inc. v. Atlanta Gas Light Co., 905 F.3d 1311, 1314-15 (Fed. Cir. 2018); Click-To-
`
`1
`
`
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`Case No.: IPR2019-00033
`Patent No.: 8,902,760
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`
`Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1329, n.3 (Fed. Cir. 2018) (en banc
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`Atty. Dkt. No.: CHRMC0123IPR1
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`as to footnote 3).
`
`In Click-To-Call, the en banc court held that § 315(b)’s time bar applies even
`
`when a party voluntarily dismisses its complaint without prejudice. Click-To-Call,
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`899 F.3d at 1329, n.3, 1335 (“[T]he appropriate question is whether the voluntary,
`
`without prejudice dismissal of a civil action in which a complaint had been served
`
`nullifies an administrative time bar that is triggered by service of that complaint. It
`
`does not.”). Although the Federal Circuit was addressing § 315(b)—which applies
`
`to complaints alleging infringement—not § 315(a)(1)—which applies to declaratory
`
`judgment complaints alleging invalidity—the court’s analysis applies equally to §
`
`315(a)(1).
`
`The Federal Circuit explained that, in interpreting § 315(b), one must first
`
`“determine whether the language at issue has a plain and unambiguous meaning with
`
`regard to the particular dispute in the case.” Id. at 1329. The court explained:
`
`The statute does not contain any exceptions or exemptions for
`
`complaints served in civil actions that are subsequently dismissed,
`
`with or without prejudice. Nor does it contain any indication that the
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`application of § 315(b) is subject to any subsequent act or ruling.
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`Instead, the provision unambiguously precludes the Director from
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`instituting an IPR if the petition seeking institution is filed more than
`
`one year after the petitioner, real party in interest, or privy of the
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`2
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`Case No.: IPR2019-00033
`Patent No.: 8,902,760
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`Atty. Dkt. No.: CHRMC0123IPR1
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`petitioner “is served with a complaint” alleging patent infringement.
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`Simply put, § 315(b)'s time bar is implicated once a party receives
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`notice through official delivery of a complaint in a civil action,
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`irrespective of subsequent events.
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`Id. at 1330 (emphasis added).1 The Federal Circuit’s decision applies the Supreme
`
`Court’s guidance in SAS Inst., Inc. v. Iancu, namely, “[w]here a statute’s language
`
`carries a plain meaning, the duty of an administrative agency is to follow its
`
`commands as written, not to supplant those commands with others it may prefer.”
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`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).
`
`The relevant text of § 315(a)(1) parallels that of § 315(b). Both define a bar
`
`against instituting inter partes review triggered by filing/service of a complaint. In
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`§ 315(a)(1), the bar arises the day “the petitioner . . . file[s] a civil action.” In
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`§315(b), the bar occurs one year from when “the petitioner is served with a
`
`complaint.” Just as the word “served” is unambiguous, so, too, the word “filed” is
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`unambiguous: § 315(a)(1) “does not contain any exceptions or exemptions for
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`complaints [filed] in civil actions that are subsequently dismissed, with or without
`
`prejudice.” Click-To-Call, 899 F.3d at 1330. On the contrary, “the provision
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`unambiguously precludes the Director from instituting an IPR if the petition seeking
`
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`1 Throughout, all emphasis is added unless otherwise noted.
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`3
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`Case No.: IPR2019-00033
`Patent No.: 8,902,760
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`institution is filed” after the triggering event—here the petitioner filing “a civil
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`Atty. Dkt. No.: CHRMC0123IPR1
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`action challenging the validity of a claim of the patent.” Click-To-Call, 899 F.3d at
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`1330; 35 U.S.C. § 315(a)(1).
`
`Petitioner does not deny that its filing of the declaratory judgment complaint
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`triggered the bar of § 315(a)(1)—i.e., it does not deny that the bar would be in effect
`
`had it not (more than two years later) dismissed the complaint. Unquestionably, the
`
`Petitioner’s filing of the declaratory judgment complaint was the filing of “a civil
`
`action” set forth in § 315(a)(1). Indeed, Fed. R. Civ. P. 3 makes clear: “A civil action
`
`is commenced by filing a complaint with the court.” The PTAB has also confirmed
`
`that the filing of a complaint is the same as filing a civil action: “When the statute
`
`[§315(a)(1)] refers to filing a civil action, it refers to filing a complaint with a court
`
`to commence a civil action.” Noven Pharms., Inc. v. Novartis AG, IPR2014-00549,
`
`Paper 10, at 6-7 (PTAB Oct. 14, 2014).
`
`Petitioner contends that a subsequent event—here, dismissal of Petitioner’s
`
`complaint—can eliminate the bar, a contention the Federal Circuit expressly rejected
`
`in Bennett Regulator: “We recently held that serving a complaint alleging
`
`infringement—an act unchanged by the complaint’s subsequent success or
`
`failure—unambiguously implicates § 315(b)’s time bar.” Bennett Regulator, 905
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`F.3d at 1314-15, citing Click-to-Call, 899 F.3d at 1329–32. More pointedly, the
`
`Federal Circuit held, “The statute endorses no exceptions for dismissed complaints
`
`4
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`Case No.: IPR2019-00033
`Patent No.: 8,902,760
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`. . . . .” Id. at 1315. Bennett Regulator’s holding applies equally to § 315(a)(1)
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`Atty. Dkt. No.: CHRMC0123IPR1
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`because filing a civil action “—an act unchanged by the complaint’s subsequent
`
`success or failure—” unambiguously implicates § 315(a)’s time bar.
`
`Arguing that its DJ actions do not bar institution, Petitioner cites Board
`
`decisions issued before Click-To-Call and Bennett Regulator (Pet. at 9)— decisions
`
`that no longer apply. Petitioner ignores the Federal Circuit’s criticism that the
`
`Board’s tolling decisions stood the law on its head:
`
`[T]he appropriate question is whether the voluntary, without prejudice
`
`dismissal of a civil action in which a complaint had been served
`
`nullifies an administrative time bar that is triggered by service of that
`
`complaint. It does not. Yet the Board, without explanation, extended
`
`the background principle of Graves and Bonneville to conclude that
`
`such a dismissal ‘nullifies the effect of the service of the complaint.’ It
`
`then relied on this erroneous conclusion to ‘un-ring’ § 315(b)'s time bar.
`
`In effect, the Board relied on cases holding that the voluntary dismissal
`
`of an action or appeal does not toll a statute of limitations to conclude
`
`that the voluntary dismissal without prejudice of a civil action does
`
`indefinitely toll § 315(b) and permitted an otherwise untimely IPR to
`
`proceed, turning Bonneville and Graves on their head.
`
`Click-to-Call, 899 F.3d at 1335 (emphasis in original). Ignoring this rebuke,
`
`Petitioner nevertheless relies on and quotes Graves for the very proposition the
`
`Federal Circuit rejected, namely, “[t]he dismissal of an action without prejudice
`
`5
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`Case No.: IPR2019-00033
`Patent No.: 8,902,760
`
`
`leaves the parties as though the action had never been brought.” (Id., emphasis by
`
`Atty. Dkt. No.: CHRMC0123IPR1
`
`Petitioner.)
`
`Petitioner tries to distinguish Click-To-Call, arguing that it dealt with
`
`§ 315(b), not 315(a). (Pet. at 9-10.) But Click-To-Call applies even more so to
`
`§ 315(a)(1) because that section is more stringent—not less—than § 315(b). Under
`
`§ 315(a)(1), the mere filing of a complaint—and nothing more—is enough to
`
`activate the bar. Unlike the time bar of § 315(b), which the patent owner triggers
`
`by serving a complaint to a potentially unsuspecting defendant, the challenger
`
`triggers the bar of §315(a)(1) by filing a civil action, presumably after evaluating the
`
`ramifications of the statute. In Petitioner’s case, its filing of complaints against
`
`Patent Owner’s patents was no accident: it filed declaratory judgment complaints
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`closely after the PTO issued patents to Patent Owner and left the complaints pending
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`for more than two years. Petitioner, fully aware of § 315(a)(1), chose to litigate its
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`validity claims in district court. It suffers no prejudice if the Board applies the bar
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`because Petitioner can still pursue its validity claims in the district court—
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`Petitioner’s chosen forum.
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`
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`6
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`Case No.: IPR2019-00033
`Patent No.: 8,902,760
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`III. Conclusion
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`Atty. Dkt. No.: CHRMC0123IPR1
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`For these reasons, Patent Owner respectfully requests that the Board deny the
`
`Petition for inter partes review of the ‘760 Patent.
`
`
`
`
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`
`
`Dated: January 16, 2019
`
`
`
`Respectfully submitted,
`
`
`
` /Thomas A. Lewry/
`Frank A. Angileri (Reg. No. 36,733)
`Thomas A. Lewry (Reg. No. 30,770)
`Marc Lorelli (Reg. No. 43,759)
`Christopher C. Smith (Reg. No. 59,669)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Patent Owner
`
`
`
`
`
`
`7
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`
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`Case No.: IPR2019-00033
`Patent No.: 8,902,760
`
`
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`Atty. Dkt. No.: CHRMC0123IPR1
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`Certificate of Service
`
`The undersigned hereby certifies that on January 16, 2019, a complete and
`entire copy of PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107, was
`served on all counsel listed below via electronic mail as follows:
`
`
`LEAD COUNSEL
`Hersh H. Mehta - Reg. No. 62,336
`MORGAN, LEWIS & BOCKIUS LLP
`77 West Wacker Drive
`Chicago, IL 60601
`T: 312.324.1000
`F: 312.324.1001
`hersh.mehta@morganlewis.com
`HPE-Chrimar-IPR@morganlewis.com
`
`BACK-UP COUNSEL
`Brent A. Hawkins - Reg. No. 44,146
`MORGAN, LEWIS & BOCKIUS LLP
`One Market, Spear Street Tower
`San Francisco, CA 94105-1596
`T: 415.442.1000
`F: 415.442.1001
`brent.hawkins@morganlewis.com
`
`Maria E. Doukas - Reg. No. 67,084
`MORGAN, LEWIS & BOCKIUS LLP
`77 West Wacker Drive
`Chicago, IL 60601
`T: 312.324.1000
`F: 312.324.1001
`maria.doukas@morganlewis.com
`
`Karon N. Fowler
`(pro hac vice application to be
`submitted)
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`T: 650.843.4000
`F: 650.843.4001
`karon.fowler@morganlewis.com
`
`
`
`
`
` /Thomas A. Lewry/
`Thomas A. Lewry (Reg. No. 30,770)
`Brooks Kushman P.C.
`Attorneys for Patent Owner
`
`
`
`8
`
`
`
`Case No.: IPR2019-00033
`Patent No.: 8,902,760
`
`
`
`Atty. Dkt. No.: CHRMC0123IPR1
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24
`
`
`
`
`This paper complies with the type-volume limitation of 37 C.F.R. § 42.24.
`
`The paper contains 1,414 words, excluding the parts of the paper exempted by
`
`§42.24(a).
`
`This paper also complies with the typeface requirements of 37 C.F.R.
`
`§ 42.6(a)(ii) and the type style requirements of § 42.6(a)(iii)&(iv).
`
`
`
`
`
`
`Dated: January 16, 2019
`
`
`
`Respectfully submitted,
`
`
`
` /Thomas A. Lewry/
`Frank A. Angileri (Reg. No. 36,733)
`Thomas A. Lewry (Reg. No. 30,770)
`Marc Lorelli (Reg. No. 43,759)
`Christopher C. Smith (Reg. No. 59,669)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Patent Owner
`
`
`
`
`
`9
`
`
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