IPR2020-00067
`U.S. Patent No. 7,015,490
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`ELEKTA, INC.,
`Petitioner,
`v.
`BEST MEDICAL INTERNATIONAL, INC.,
`Patent Owner.
`___________________
`Case No.: IPR2020-00067
`U.S. Patent No. 7,105,490
`___________________
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,105,490
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`010-8982-0158/2/AMERICAS
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`U.S. Patent No. 7,015,490
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`ELEKTA, INC.,
`Petitioner,
`v.
`BEST MEDICAL INTERNATIONAL, INC.,
`Patent Owner.
`___________________
`Case No.: IPR2020-00067
`U.S. Patent No. 7,105,490
`___________________
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,105,490
`
`
`010-8982-0158/2/AMERICAS
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`I.
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`IPR2020-00067
`U.S. Patent No. 7,015,490
`ELEKTA, INC. PROPERLY COMPLETED ELECTRONIC
`SERVICE OF THE PETITION ON OCTOBER 18, 2019.
`On October 18, 2019, a copy of Elekta, Inc.’s (“Elekta”) Petition in this IPR,
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`including all documents and supporting evidence, was filed and served electronically
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`(via secure e-mail) on six attorneys for Patent Owner Best Medical Inc. (“BMI”).
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`(Ex. 1032, ¶¶2-6, Exs. A-B.) Recipients of this service included BMI’s Backup
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`Counsel for this IPR and three attorneys (Erin Dunston, Anand Mohan and Jason
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`Camillo) listed in PAIR for the USPTO Customer Number associated with the
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`Correspondence Address for the patent at issue. (Id.; Ex. 1033, ¶¶2-4.) Thus, the
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`requirements of 35 U.S.C. § 312(a)(5) and 37 C.F.R. § 42.105(a) were satisfied.
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`BMI acknowledges receipt of this service and that the Certificate of Service
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`stated that the Petition “was served via electronic mail upon counsel of record for
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`the Patent Owner.” (Preliminary Response (“POPR”) at 54.) BMI further admits
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`receiving the paper copies by October 24, 2019, well before the one-year bar of
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`November 5, 2019. Id. Despite these admissions, BMI urges the Board to declare
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`the service invalid, the Certificate a “nullity”, and to terminate and dismiss this IPR
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`because of an alleged “lack of agreement” to use electronic service. POPR at 54-55.
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`BMI’s position is untenable. The same law firm (Buchanan Ingersoll &
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`Rooney) represents BMI in both this IPR and in the underlying litigation. (Ex. 1033,
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`¶¶2-5.) Five attorneys at this law firm received electronic service of the Petition on
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`the same day the Petition was filed. (Id.; Ex. 1032, ¶¶2-6, Exs. A-B.)
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`010-8982-0158/2/AMERICAS
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`1
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`IPR2020-00067
`U.S. Patent No. 7,015,490
`Throughout the pendency of the underlying litigation, counsel for BMI and
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`Elekta have routinely used and accepted electronic service of discovery requests and
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`communications. (Ex. 1033, ¶¶7-10, Ex. A.) Prior to the filing of the Petition, BMI
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`never objected to or rejected electronic service. Thus, counsel for Elekta had a good
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`faith belief that electronic service was acceptable to BMI. (Id., ¶9.) Given BMI’s
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`failure to object to or reject this implied agreement arising out of the parties’ conduct
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`prior to service of the Petition, Elekta’s electronic service was proper pursuant to 37
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`C.F.R. § 42.105(b) and BMI’s request to dismiss the Petition must be denied.
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`BMI has not cited to a single decision of the Board supporting its novel
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`“nullity” theory, nor has BMI claimed or demonstrated any prejudice arising from
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`Elekta’s use of electronic service. For example, BMI has not claimed that electronic
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`service negatively affected its ability to prepare its POPR in any way. Patent
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`Owner’s last minute change of its Correspondence Address from a physical location
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`to a P.O. Box did cause some confusion regarding delivery of the additional paper
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`copies. (Ex. 1034, ¶¶2-5, Exs. A, B). Nevertheless, BMI’s counsel received the paper
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`copies prior to the one-year bar date. See Amer. Nat’l. Mfring. v. Sleep Number,
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`IPR2019-00497, Paper No. 11 at 17-18 (July 24, 2019) (no time bar where petition
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`received at physical address before bar date).
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`37 C.F.R. §§ 42.5(b), 42.5(c)(1) and 42.5(c)(3) give the Board broad
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`discretion to waive, suspend, modify or excuse any actions by the Petitioner deemed
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`010-8982-0158/2/AMERICAS
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`IPR2020-00067
`U.S. Patent No. 7,015,490
`not to be in technical compliance with the Rules upon a showing of good cause or in
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`the interests of justice. See Micron Tech. v. e.Digital Corp., IPR2015-00519, Paper
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`No. 14 at 5-6 (March 25, 2015) (although service did not comply with 37 C.F.R §
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`42.105, the totality of the circumstances, lack of prejudice to Patent Owner, and
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`disproportionate nature of the requested remedy allowed the Board to exercise
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`discretion under 37 C.F.R. § 42.5(b) and deny Patent Owner’s Motion to Dismiss.)
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`Similarly, even if the Board finds a lack of formal agreement regarding electronic
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`service here, in view of the actual service on Patent Owner’s counsel of record prior
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`to the bar date, the statement of electronic service on the Certificate, the complete
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`lack of prejudice to BMI, and the draconian nature of the requested remedy, the
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`interests of justice require that BMI’s request for dismissal be denied.
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`II. THE PETITION IS NOT CUMULATIVE OF ART OR ARGUMENTS.
`None of the art that Elekta relies on in its Petition was before the Examiner,
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`and all of Elekta’s Grounds rely on material disclosures that are different from the
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`art of record and different from IPR2020-00067 (“Varian’s IPR”). The POPR fails
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`to indicate otherwise. See GMG Products v. Traeger, PGR2019-00036, Paper 13 at
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`42-45 (Sept. 18, 2019) (similarities must be identified or shown with specificity).
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`Elekta relies on Siochi 1999 for disclosure of a “cost function” “to enhance
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`delivery efficiency” (claims 1, 17), and for such a function based on the maximum
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`distance that a pair of leaves moves from one segment to the next (dependent
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`010-8982-0158/2/AMERICAS
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`IPR2020-00067
`U.S. Patent No. 7,015,490
`claims 12, 18, 19). Petition at 37-39, 41, 46, 56-59 (Grounds II, III, IV). Siochi
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`1999 presents the same idea as the maximum “effective leaf distance” described in
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`the ’490 patent at column 6, lines 13-41. Varian’s IPR does not rely on Siochi
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`1999, and none of the prior art of record disclosed this concept.
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`BMI does not deny this, asserting instead that Elekta’s art does not suggest
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`using Siochi 1999’s cost function “for determining MLC rotation angle.” POPR at
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`46-48. BMI makes similar arguments about Webb 2001 and Siochi ’355 (Grounds
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`III, IV). Id. These arguments are inapposite, particularly as the Petition is
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`supported by expert testimony regarding the obviousness of the prior art and
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`combinations. Ex. 1003 [Decl. of Arthur L. Boyer, Ph.D.] at ¶¶254-288.
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`Elekta also relies on Boyer 2001, authored by Dr. Boyer. Petition at 28
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`(Grounds I, II). Elekta’s reliance is not limited to its description of optimizing the
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`collimator angle to better fit the MLC opening to the tumor. POPR at 43-44. Elekta
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`also relies on Boyer 2001 for its disclosures about radiation therapy systems with
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`MLCs, including “a computer in communication with the [MLC]” (claims 17-19),
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`and the “type of radiation delivery system” (claims 10-12). Petition at 29, 31, 34.
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`Elekta also notes that claims 10-12 are not challenged in Varian’s IPR.
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`BMI argues that Chang 2000 and Chang 2001 (Chang 2000/2001) (Grounds
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`I, II) is cumulative of US 2004/0190680 (“Chang ’680”), issued as U.S. 6,853,705
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`relied upon in Varian’s IPR (“Chang ’705”). POPR at 41-43. But Chang ’680 was
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`010-8982-0158/2/AMERICAS
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`IPR2020-00067
`U.S. Patent No. 7,015,490
`not substantively discussed during prosecution, and the Examiner could not have
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`evaluated Chang ’680 with Boyer 2001 and/or Siochi 1999, as they were not of
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`record. The Examiner also did not have the benefit of declaration testimony, as
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`here. Power-Packer v. G.W. Lisk, IPR2017-02034, Paper 8 at 16 (March 19, 2018)
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`(acknowledging examiner may not have fully appreciated prior art teachings).
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`Moreover, Chang 2000/2001 are prior art pursuant to 35 U.S.C. § 102(b),
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`while Chang ’680/’705 is prior art pursuant to 35 U.S.C. § 102(e). Because BMI
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`could antedate Chang ’680/’705, but not Chang 2000/2001, Elekta’s reliance on
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`the latter is justified. Niantic, Inc. v. Blackbird Tech LLC, IPR2019-00492, Paper 8
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`at 6-7 (July 11, 2019) (refusing to deny institution where similar references had
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`different bases for availability under 35 U.S.C. §102); Abbott Labs. v. Int’d
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`Sensing Sys., IPR2019-01339, Paper 7 at 10 (Jan. 23, 2020) (burden on Board
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`outweighed by Petitioner’s precaution to ensure prior art cannot be antedated).
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`Finally, Boyer 2001 (Grounds I, II) and Webb 1993 (Ground IV) are not
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`duplicative of the disclosure of Brahme’s “orientation theory” in the patent, as
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`BMI suggests. POPR 42, 44. Brahme’s 1988 paper on this subject was neither
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`cited nor disclosed during prosecution, and the patent’s discussion of it is limited.
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`Boyer 2001 and Webb 1993 each cite and more fully describe Brahme’s work.
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`For at least these reasons, Elekta’s Petition should not be denied pursuant to
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`35 U.S.C. § 325(d).
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`010-8982-0158/2/AMERICAS
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`Dated: February 12, 2020
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`IPR2020-00067
`U.S. Patent No. 7,015,490
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`/Tamara D. Fraizer #51669/
`TAMARA D. FRAIZER
`Squire Patton Boggs (US) LLP
`1801 Page Mill Road, Suite 110
`Palo Alto, CA 94304-1043
`Telephone: (650) 843-3201
`Facsimile: (650) 843-8777
`Email:
`tamara.fraizer@squirepb.com
`Registration No.: 51,669
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`010-8982-0158/2/AMERICAS
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`IPR2020-00067
`U.S. Patent No. 7,015,490
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing:
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE TO THE PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,015,490;
`Ex. 1032 DECLARATION OF DANIELLA (“DANNI”) FONTANA IN
`SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE TO THE PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 7,015,490;
`Ex. 1033 DECLARATION OF VIDYA R. BHAKAR IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE TO THE PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,015,490; and
`Ex. 1034 DECLARATION OF CHRISTOPHER ADAMS IN
`SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE TO THE PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 7,015,490
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`were served on February 12, 2020 by electronic mail, as authorized by Patent
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`Owner’s Mandatory Notices, at the following correspondence addresses of record:
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`Lead Counsel for Patent Owner:
`Christopher L. North, Ph.D., Esq.
`Registration No. 50,433
`BUCHANAN INGERSOLL &
`ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314
`christopher.north@bipc.com
`Backup Counsel for Patent Owner:
`Travis W. Bliss, Ph.D., Esq.
`Registration No. 56,723
`BUCHANAN INGERSOLL &
`ROONEY PC
`919 North Market Street, Suite 1500
`Wilmington, Delaware 19801
`travis.bliss@bipc.com
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`010-8982-0158/2/AMERICAS
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`Backup Counsel for Patent Owner:
`Erin M. Dunston, Esq.
`Registration No. 51,147
`BUCHANAN INGERSOLL &
`ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314
`erin.dunston@bipc.com
`Backup Counsel for Patent Owner:
`Stephany G. Small, Ph.D.
`Registration No. 69,532
`BUCHANAN INGERSOLL &
`ROONEY PC
`919 North Market Street, Suite 1500
`Wilmington, Delaware 19801
`stephany.small@bipc.com
`1
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`Dated: February 12, 2020
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`IPR2020-00067
`U.S. Patent No. 7,015,490
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`/Tamara D. Fraizer #51669/
`TAMARA D. FRAIZER
`Squire Patton Boggs (US) LLP
`1801 Page Mill Road, Suite 110
`Palo Alto, CA 94304-1043
`Telephone: (650) 843-3201
`Facsimile: (650) 843-8777
`Email: tamara.fraizer@squirepb.com
`Registration No.: 51,699
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`010-8982-0158/2/AMERICAS
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`2
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