IPR2020-00073
`U.S. Patent No. 7,266,175
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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.: IPR2020-00073
`U.S. Patent No. 7,266,175
`___________________
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,266,175
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`I.
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`IPR2020-00073
`U.S. Patent No. 7,266,175
`ELECTRONIC SERVICE OF THE PETITION AND SUPPORTING
`EVIDENCE WAS PROPERLY COMPLETED BY ELEKTA, INC. 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) by counsel for Elekta on six attorneys for Patent Owner Best
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`Medical Inc. (“BMI”). (Ex. 1035, ¶¶1-6, Exs. A, B.) Recipients of this service
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`included BMI’s Backup Counsel for this IPR and three attorneys (Erin Dunston,
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`Anand Mohan and Jason Camillo) listed in PAIR for the USPTO Customer Number
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`associated with the Correspondence Address for the patent at issue. (Id., ¶¶3,
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`7.) Thus, the requirements of 35 U.S.C. § 312(a)(5) and 37 CFR § 42.105(a) were
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`satisfied.
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`Forced to acknowledge receipt of this service, BMI attempts to create a false
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`violation of 37 C.F.R. § 42.105(b) in its Preliminary Response (“POPR”) by stating
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`it did not receive additional paper copies until October 28 and claiming that there
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`was no agreement to accept electronic service “for this IPR.” (POPR at 59, emphasis
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`added.) BMI asserts that the alleged lack of agreement justifies the termination and
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`dismissal of this IPR. (Id.)
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`BMI’s position is untenable. BMI concedes that “[t]he obvious purpose of
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`requiring service . . . is to provide a patent owner with timely notice that the
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`patent is subject to an inter partes review proceeding . . . .” (Id. at 61, citation
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`IPR2020-00073
`U.S. Patent No. 7,266,175
`omitted.) Here, the same law firm (Buchanan Ingersoll & Rooney) represents BMI
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`in both this IPR and in the underlying litigation. (Ex. 1035, ¶¶ 2-3, 8.) Five attorneys
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`at Patent Owner’s law firm received electronic service of the Petition on the same
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`day the Petition was filed. (Id., ¶¶1-8, Exs. A, B.)
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`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 without exception. (Id., ¶¶9-13, Ex. C.) At no time prior to the
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`service of the Petition did BMI object to or reject electronic service. (Id.) Given
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`BMI’s failure to repudiate this on-going agreement between the parties prior to
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`service of the Petition, Elekta’s electronic service was proper pursuant to 37 C.F.R.
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`§ 42.105(b) and BMI’s request to dismiss the Petition on this basis must be denied.
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`Moreover, BMI has not claimed or demonstrated any prejudice arising from
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`Elekta’s use of electronic service. BMI has not claimed that electronic service
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`negatively affected its ability to prepare its POPR or caused the loss of evidence. In
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`fact, the POPR does not identify any prejudice to BMI of any kind.
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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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`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 (March 24, 2015) (although service did not comply with 37 C.F.R § 42.105,
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`IPR2020-00073
`U.S. Patent No. 7,266,175
`the totality of the circumstances, lack of prejudice to Patent Owner, and the
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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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`Here, in view of actual service on Patent Owner’s counsel of record, the complete
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`lack of prejudice, and the draconian nature of the requested remedy, Elekta
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`respectfully submits that BMI’s request to dismiss should be denied.
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`Finally, BMI mistakenly claims that the filing deadline for this IPR and the
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`receipt of paper copies was October 18, 2019. Elekta, Inc., however, was not served
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`until November 5, 2018. (Ex. 1036, ¶¶1-7, Ex. A.) Although other Elekta entities
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`were identified in Elekta’s Mandatory Notice for their agreement to be estopped by
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`this IPR, Elekta’s Notice expressly denied that these parties were actual real parties
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`in interest. See Proppant v. Oren Technologies, IPR2020-01917, Paper No. 86 at 14-
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`15 (Feb. 13, 2019) (Precedential) (proper to identify possible RPI without conceding
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`legal status as such); Daifuku v. Murata Machinery, IPR2015-01538, Paper No. 11
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`at 6 (Jan. 19, 2016) (pure holding company not an RPI). (Ex. 1036, Ex. B.) Since
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`BMI admits paper copies of the Petition Documents were received before November
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`5, (POPR at 59), service of these copies was complete before the bar date. Amer.
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`Nat’l. Mfring. v. Sleep Number. IPR2019-00497, Paper No. 11 at 17-18 (July 24,
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`2019) (no time bar where petition received at appropriate physical address before
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`bar date).
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`Dated: February 6, 2020
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`IPR2020-00073
`U.S. Patent No. 7,266,175
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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.: 51669
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`IPR2020-00073
`U.S. Patent No. 7,266,175
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing:
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE TO THE PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,266,175;
`Ex. 1035 DECLARATION OF VID 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. 7,266,175; and
`Ex. 1036 DECLARATION OF TAMARA D. FRAIZER IN SUPPORT
`OF PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE TO THE PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 7,266,175
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`were served on February 6, 2020 by electronic mail, as authorized by Patent
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`Owner’s Mandatory Notices, at the following correspondence address 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
`Main Telephone (703) 836-6620
`Direct Telephone (703) 838-6511
`Main Facsimile (703) 836-2021
`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
`Direct Telephone (302) 552-4201
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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
`Main Telephone (703) 836-6620
`Direct Telephone (703) 838-6645
`Main Facsimile (703) 836-2021
`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
`Direct Telephone (302) 552-4247
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`Main Facsimile (302) 552-4295
`travis.bliss@bipc.com
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`Dated: February 6, 2020
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`IPR2020-00073
`U.S. Patent No. 7,266,175
`Main Facsimile (302) 552-4295
`stephany.small@bipc.com
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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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