Paper 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`
`
`KEYME, LLC,
`Petitioner
`
`
`v.
`
`THE HILLMAN GROUP, INC.,
`Patent Owner
`––––––––––––––
`
`IPR2020-
`Patent 9,914,179
`
`––––––––––––––
`
`PETITION FOR INTER PARTES REVIEW
`
`

`

`
`
`
`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
`
`INTRODUCTION .................................................................................1
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`LEVEL OF SKILL IN THE ART .........................................................3
`
`III. CLAIM CONSTRUCTION ..................................................................3
`
`IV. OVERVIEW OF THE ’179 PATENT ..................................................4
`
`V.
`
`PROSECUTION OF THE ’179 PATENT ............................................4
`
`VI. CITED ART ..........................................................................................5
`
`A. Almblad .......................................................................................5
`
`B.
`
`C.
`
`Campbell .....................................................................................7
`
`Haggstrom-969 ............................................................................8
`
`D. Haggstrom-999 ............................................................................9
`
`E.
`
`F.
`
`Crasnianski ............................................................................... 11
`
`Patriquin ................................................................................... 11
`
`VII. DISCRETIONARY FACTORS ......................................................... 12
`
`A.
`
`B.
`
`35 U.S.C. § 325(d) Does Not Favor Denial ............................. 12
`
`35 U.S.C. § 314(a) Does Not Favor Denial ............................. 15
`
`VIII. PATENT OWNER HAS ADMITTED THAT THE CLAIMED
`TECHNOLOGY IS UNPATENTABLE............................................ 17
`
`IX. GROUND 1: ALMBLAD ANTICIPATES CLAIMS 1-4, 7, 9-
`12, 15, 17 AND 18 ............................................................................. 20
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Claim 1a A method of duplicating a key, comprising: ............ 20
`
`Claim 1b storing, by a key duplicating machine, key
`blanks of different cross-sectional profiles .............................. 21
`
`Claim 1c receiving a master key in the key duplicating
`machine; ................................................................................... 23
`
`Claim 1d automatically detecting, by the key duplicating
`machine a cross-sectional profile of the master key ................ 25
`
`Claim 1e automatically selecting, by the key duplicating
`machine, from among the different stored key blanks, a
`key blank whose cross-sectional profile matches the
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`i
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`F.
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`G.
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`H.
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`I.
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`J.
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`K.
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`L.
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`automatically-detected cross-sectional profile of the
`master key; and ........................................................................ 26
`
`Claim 1f automatically cutting, by the key duplicating
`machine, the selected key blank to duplicate a key tooth
`pattern of the master key. ......................................................... 29
`
`Claim 2 The method of claim 1, further comprising:
`automatically detecting, by the key duplicating machine,
`a blade length of the master key. .............................................. 32
`
`Claim 3 The method of claim 2, further comprising:
`automatically determining, by the key duplicating
`machine, a model of the master key based on the detected
`cross-sectional profile and the detected blade length. ............. 34
`
`Claim 4 The method of claim 3, wherein the selecting
`includes selecting the key blank that matches both the
`determined type and the determined model ............................. 36
`
`Claims 7, 9, 10, 11, 12 and 15 .................................................. 38
`
`Claim 17 The method of claim 2, wherein the
`automatically selecting includes: automatically selecting,
`by the key duplicating machine, a key blank from among
`the different stored key blanks, based on a match
`between the cross-sectional profile and blade length of
`the key blank and the detected cross-sectional profile and
`detected blade length of the master key. .................................. 39
`
`Claim 18 The machine of claim 10, wherein the loading
`system is configured to automatically select a key blank
`from among the different stored key blanks, based on a
`match between the cross-sectional profile and blade
`length of the key blank and the detected cross-sectional
`profile and detected blade length of the master key. ............... 40
`
`X. GROUND 2: CAMPBELL AND ALMBLAD RENDER
`OBVIOUS CLAIMS 1-4, 7, 9-12, 15, 17 AND 18 ............................ 40
`
`A.
`
`B.
`
`C.
`
`D.
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`Claim 1a ................................................................................... 40
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`Claim 1b ................................................................................... 42
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`Claim 1c ................................................................................... 42
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`Claim 1d ................................................................................... 43
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`ii
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`E.
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`F.
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`G.
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`H.
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`I.
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`J.
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`K.
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`L.
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`Claim 1e ................................................................................... 45
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`Claim 1f .................................................................................... 46
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`Claim 2 ..................................................................................... 49
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`Claim 3 ..................................................................................... 49
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`Claim 4 ..................................................................................... 50
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`Claims 7, 9, 10, 11, 12 and 15 .................................................. 50
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`Claim 17 ................................................................................... 51
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`Claim 18 ................................................................................... 52
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`XI. GROUND 3: HAGGSTROM-969 AND HAGGSTROM-999
`RENDER OBVIOUS CLAIMS 1, 5, 9 AND 13 ............................... 52
`
`A.
`
`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`Claim 1a ................................................................................... 52
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`Claim 1b ................................................................................... 57
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`Claim 1c ................................................................................... 59
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`Claim 1d ................................................................................... 59
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`Claim 1e ................................................................................... 61
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`Claim 1f .................................................................................... 62
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`Claims 5, 9 and 13 .................................................................... 66
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`XII. GROUND 4: HAGGSTROM-969, HAGGSTROM-999 AND
`CRASNIANSKI RENDER OBVIOUS CLAIMS 2-4, 6, 10-12,
`14, 17, 18 ............................................................................................ 70
`
`A.
`
`B.
`
`C.
`
`D.
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`Claim 2 ..................................................................................... 70
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`Claim 3 ..................................................................................... 73
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`Claim 4 ..................................................................................... 74
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`Claims 6, 10, 11, 12, 14, 17 and 18 .......................................... 74
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`XIII. GROUND 5: HAGGSTROM-969, HAGGSTROM-999,
`CRASNIANSKI AND PATRIQUIN RENDERS OBVIOUS
`CLAIMS 7, 8, 15 AND 16 ................................................................. 75
`
`A.
`
`B.
`
`Claims 7 and 15 ........................................................................ 76
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`Claims 8 and 16 ........................................................................ 78
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`iii
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`
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`C.
`
`A POSITA Would Have Been Motivated to Incorporate
`the Shoulder Detection Functionality of Patriquin Into the
`Proposed Combination ............................................................. 79
`
`XIV. SECONDARY CONSIDERATIONS DO NOT SUPPORT A
`FINDING OF NON-OBVIOUSNESS ............................................... 80
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`XV. MANDATORY DISCLOSURES ...................................................... 81
`
`A.
`
`B.
`
`C.
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`Real Party in Interest ................................................................ 81
`
`Related Matters ........................................................................ 81
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) and
`Service Information (37 C.F.R. § 42.8(b)(3)-(4)) .................... 82
`
`D.
`
`Payment of Fees (37 C.F.R. § 42.15(a)) .................................. 82
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`XVI. CONCLUSION .................................................................................. 82
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`
`
`
`iv
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`IPR2020-_____
`Patent 9,914,179
`
`
`
`Petition
`
`
`LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`Ex. 1001 U.S. Patent No. 9,914,179 (“’179 patent”)
`
`Ex. 1002 File History of the ’179 patent
`
`Ex. 1003 Expert Declaration of Mr. Lloyd Seliber
`
`Ex. 1004 U.S. Patent No. 5,807,042 (“Almblad”)
`
`Ex. 1005 U.S. Patent No. 6,839,449 (“Campbell”)
`
`Ex. 1006 U.S. Patent No. 3,172,969 (“Haggstrom-969”)
`
`Ex. 1007 U.S. Patent No. 3,138,999 (“Haggstrom-999”)
`
`Ex. 1008 U.S. Patent No. 4,159,783 (“Crasnianski”)
`
`Ex. 1009 U.S. Patent No. 3,978,764 (“Patriquin”)
`
`Ex. 1010
`
`IPR2015-01154, Petition
`
`Ex. 1011 Eastern District of Texas Model Patent Order
`(http://www.txed.uscourts.gov/sites/default/files/forms/Model
`PatentOrder.pdf)
`
`Ex. 1012
`
`IPR2015-01154, Final Written Decision
`
`Ex. 1013 Comparison of ’179 patent claim 1 with ’446 patent claim 108
`
`
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`v
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`IPR2020-_____
`Patent 9,914,179
`
`
`
`Petition
`
`
`GROUNDS OF CHALLENGE (37 C.F.R. § 42.204(b)(2))
`
`No.
`
`Ground for Challenge
`
`1
`
`2
`
`3
`
`4
`
`5
`
`
`
`
`
`
`§102(b): Almblad anticipates claims 1-4, 7, 9-12, 15, 17 and
`18
`
`§103(a): Campbell and Almblad render obvious claims 1-4, 7,
`9-12, 15, 17 and 18
`
`§103(a): Haggstrom-969 and Haggstrom-999 render obvious
`claims 1, 5, 9 and 13
`
`§103(a): Haggstrom-969, Haggstrom-999 and Crasnianski
`render obvious claims 2-4, 6, 10-12, 14, 17, 18
`
`§103(a): Haggstrom-969, Haggstrom-999, Crasnianski and
`Patriquin render obvious claims 7, 8, 15 and 16
`
`vi
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`

`

`IPR2020-_____
`Patent 9,914,179
`
`
`I.
`
`INTRODUCTION
`
`Petition
`
`
`When the proverbial shoe was on the other foot, Patent Owner itself
`
`argued to the PTAB that the subject matter of the ’179 patent is obvious, by
`
`describing the state of the prior art in no uncertain terms: “Self-service key
`
`cutting kiosks have been contemplated and described in technical literature
`
`for nearly 50 years. . . These prior art kiosks had all of the major components
`
`. . . including key-identification systems [and] key cutting systems[.]” See,
`
`infra, IPR2015-01154, Pet. at 6 (emphasis added). Indeed, before buying the
`
`’179 patent and similar patents by the same inventor, Patent Owner filed a
`
`petition for inter partes review against U.S. Patent No. 8,979,446 (the “’446
`
`Patent”)—which includes a similar specification to, and shares an inventor
`
`with, the ’179 patent. In the face of this challenge, the predecessor owner,
`
`Minute Key, voluntarily cancelled nearly every independent claim of the ’446
`
`Patent by conceding 3 of the 4 grounds of invalidity. And after evaluating all
`
`of the evidence, the Board agreed with Patent Owner and ultimately concluded
`
`that the claimed features of automated key cutting technology had been known
`
`in the art for decades, and invalidated the remaining challenged claims of the
`
`’446 Patent—claims that are of similar scope to the challenged claims here.
`
`
`
`1
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`

`

`IPR2020-_____
`Patent 9,914,179
`
`
`
`Petition
`
`
`As set forth herein, Patent Owner’s prior petition and the Board’s
`
`conclusions accurately reflected the history of key duplication—as early as
`
`the 1970s, automated key vending machines existed that used key attributes
`
`such as cross-section and length to match a master key with a corresponding
`
`key blank for duplication. Likewise, key cutting systems have long employed
`
`trace cutting techniques to create exact duplicates of master keys. The key
`
`duplication systems of the ’70s also employed key length and shoulder
`
`position detectors to ensure accuracy. Thus, all of the claim elements recited
`
`in the ’179 patent were well known and described publicly in detail decades
`
`before the ’179 patent was filed. Moreover, as explained by Mr. Seliber,
`
`without practicing these claim steps, i.e., matching the keys’ attributes, the
`
`duplicate key would not work as a practical matter. Thus, there is nothing
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`inventive or non-obvious about the ’179 patent.
`
`For example, preexisting systems like those described in Almblad—
`
`which Patent Owner itself cited as prior art against the substantially similar
`
`’446 Patent—had already combined these well-known techniques to create
`
`automated key duplication systems at least eight years before the ’179 patent’s
`
`earliest provisional was filed. Accordingly, as it did with the ’446 Patent, the
`
`PTAB should invalidate the challenged claims of the ’179 patent.
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`
`
`2
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`

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`IPR2020-_____
`Patent 9,914,179
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`II. LEVEL OF SKILL IN THE ART
`
`Petition
`
`
`A person of ordinary skill in the art at the time of the alleged invention
`
`would have had a degree in engineering and three years of experience in
`
`designing mechanical and/or electrical engineering systems, or would have
`
`had a PhD in mechanical or electrical engineering. This level of skill is
`
`approximate, and more experience would compensate for less formal
`
`education, and vice versa. For example, an individual having no degree in
`
`engineering, but ten years of key duplication equipment experience would
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`qualify as a person of ordinary skill in the art. The experience in the field of
`
`key duplication equipment may include experience with various types of key
`
`duplication equipment, including vending machines. Ex. 1003, ¶ 5.
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`III. CLAIM CONSTRUCTION
`
`Petitioner submits that express interpretations of the Challenged Claims
`
`are not necessary. Petitioner reserves the right to respond to, and/or to offer
`
`alternative constructions to any proposed claim constructions offered by
`
`Patent Owner. Petitioner takes no position in this petition as to whether the
`
`claims are indefinite, and their statement that no construction is required
`
`should not be interpreted to mean that the terms are definite. Ex. 1003, ¶ 7.
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`3
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`

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`IPR2020-_____
`Patent 9,914,179
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`IV. OVERVIEW OF THE ’179 PATENT
`
`Petition
`
`
`The ’179 patent discloses an automated process for duplicating a master
`
`key, using attributes such as the key’s cross-sectional profile to detect a
`
`matching key blank. Claim 1 of the ’179 patent is illustrative (Ex. 1003, ¶ 8):
`
`1. A method of duplicating a key, comprising:
`storing, by a key duplicating machine, key blanks of different
`cross-sectional profiles
`receiving a master key in the key duplicating machine;
`automatically detecting, by the key duplicating machine a
`cross-sectional profile of the master key
`automatically selecting, by the key duplicating machine,
`from among the different stored key blanks, a key blank
`whose cross-sectional profile matches the automatically-
`detected cross-sectional profile of the master key; and
`automatically cutting, by the key duplicating machine, the
`selected key blank to duplicate a key tooth pattern of the
`master key.
`
`
`
`V.
`
`PROSECUTION OF THE ’179 PATENT
`
`The ’179 patent was subject to one rejection during prosecution, in
`
`which the Examiner held that the independent claims were rendered obvious
`
`by Gartner (3,796,130) in view of Titus et al. (6,406,227). Ex. 1002 at 339-
`
`344. Applicant amended the independent claims to incorporate limitations
`
`from the dependent claims (which the examiner found to be patentable).
`
`These claims recited storing key blanks with different cross-sectional profiles,
`
`automatically matching master keys to key blanks based on their cross-
`
`
`
`4
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`

`

`IPR2020-_____
`Patent 9,914,179
`
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`sectional profiles and blade length, and cutting the key blanks to match the
`
`Petition
`
`
`tooth pattern of the master key. Id. at 318-26. The Examiner issued the claims
`
`without providing additional reasons for allowance. Ex. 1003, ¶ 9.
`
`Although four of the references relied upon in this petition—Almblad,
`
`Campbell, Crasnianski and Patriquin—were listed in an IDS during
`
`prosecution among over a hundred references, none were substantively
`
`addressed by the Examiner or applicant during prosecution. They were
`
`simply listed on a lengthy IDS without further discussion. See generally Ex.
`
`1002; Ex. 1003, ¶ 10.
`
`VI. CITED ART
`
`A. Almblad
`
`Almblad discloses a “method and apparatus for automatically making
`
`keys.” Ex. 1004, Title, Abstract; Ex. 1003, ¶ 11. Almblad discloses that its
`
`machine includes “a means for storing a plurality of key blanks 78.” Ex.
`
`1004, 25:66-26:1. Almblad’s key making machine includes a “key access
`
`door” through which the customer places his key for duplication. See Ex.
`
`1004, 11:4-16. Almblad further discloses using “laterally exposed attributes”
`
`which include key cross sections and key length to determine which key blank
`
`to use in the duplication process:
`
`
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`5
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`

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`IPR2020-_____
`Patent 9,914,179
`
`
`
`Petition
`
`
`
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`Ex. 1004, Fig. 16, 12:45-53 (“When the 50 laterally exposed attributes
`
`of an object key are recognized and compared to the master pattern memory,
`
`a corresponding key blank matching the outer shape of a known
`
`manufacturer’s key may be determined.”). Once an appropriate blank is
`
`selected, Almblad automatically cuts the key blank, making an exact copy of
`
`the master key—a technique commonly known as “trace cutting.” See, e.g.,
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`Ex. 1004, 4:30-40, 18:65-66 (disclosing trace cutting), 31:54-57 (disclosing
`
`that an exact duplicate is made, even duplicating worn features), FIG. 17C;
`
`Ex. 1003, ¶ 12.
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`
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`6
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`

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`IPR2020-_____
`Patent 9,914,179
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`
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`B. Campbell
`
`Petition
`
`
`Similar to Almblad, Campbell discloses a “system for identifying the
`
`key blank corresponding to a master key.” Ex. 1005, Abstract; Ex. 1003, ¶
`
`13. Campbell discloses:
`
`[T]he key identification system includes a control having a
`memory operable to store information on a plurality of key
`blanks. The control receives the digitized image of the master
`key from the receiver and analyzes the image to extract
`identifying information from the master key. The control
`compares the master key information to information about
`known key blanks to determine the key blank that corresponds to
`the master key.
`
`Id. at 7:57-65. The “identifying information” extracted from the master key
`
`(the master key) includes its “silhouette” (id. at 9:45-57), as well as its
`
`shoulder location and blade length (id. at 10:18-20). Campbell further
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`describes that the cross-section of the key (shown, e.g., in Fig. 6b), which is
`
`characterized by its “milling” pattern, is extracted and compared to known
`
`key blanks. Id. at Fig. 6b (showing the key’s cross section), 4:23-50, 11:56-
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`12-43 (describing the extraction of the milling pattern on the key); Ex. 1003,
`
`¶ 13.
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`Campbell expressly discloses using its key blank identification system
`
`in connection with a trace cutter to generate duplicate keys. Id. at 13:18-31;
`
`Ex. 1003, ¶ 14.
`
`
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`7
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`

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`IPR2020-_____
`Patent 9,914,179
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`
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`C. Haggstrom-969
`
`Petition
`
`
`Haggstrom-969 discloses providing “a sensing device for automatically
`
`selecting a key blank responsive to the sensed configuration or side profile of
`
`a key to be duplicated.” Ex. 1006 at 1:70-2:2; Ex. 1003, ¶ 15. As shown in
`
`Fig. 6, Haggstrom-969 receives a key to be copied:
`
`Ex. 1006, Fig. 6, 5:61-64 (describing inserting the key up to the shoulder),
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`3:11-20, 3:26-42; Ex. 1003, ¶ 15. Once received, Haggstrom-969 discloses
`
`that its device includes a number of lever arms—100 and 102—which are
`
`
`
`
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`8
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`

`

`IPR2020-_____
`Patent 9,914,179
`
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`positioned on opposite sides of the inserted key, which sense the cross-
`
`Petition
`
`
`sectional profile of the key and use the profile to select a matching key blank:
`
`
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`Ex. 1006, Fig. 7, Fig. 8, 4:52-62; 5:75-6:10; 6:26-31. In particular, as shown
`
`in Figure 7, the ends of the lever arms are shaped to fit different key profiles.
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`Id. at 4:52-70. When a lever arm matches a master key’s profile it completes
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`a circuit (id. at 6:16-31), and the combination of complete circuits is used to
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`determine which matching key blank should be selected (id. 6:42-51).
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`D. Haggstrom-999
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`Haggstrom-999 describes using its apparatus to cut key blanks
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`introduced “automatically into the key cutting machine” (Ex. 1007, 1:20-33
`
`(emphasis added)) from a “key vending device” like the one disclosed in
`
`Haggstrom-969 (Ex. 1007, 3:21-28). Ex. 1003, ¶ 16. Haggstrom-999
`
`
`
`9
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`

`

`IPR2020-_____
`Patent 9,914,179
`
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`discloses that a master key (orange) is placed in a machine with its teeth
`
`Petition
`
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`pointed upward:
`
`Ex. 1007, Fig. 1. A tracer stylus (orange) follows the tooth pattern of
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`the master key, and a cutter (red) cuts the same tooth pattern into the key blank
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`(red). Id.at 7:39-8:7.
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`10
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`

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`IPR2020-_____
`Patent 9,914,179
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`
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`E. Crasnianski
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`Petition
`
`
`Crasnianski discloses a key blank dispenser housing a plurality of key
`
`blanks of various profiles and lengths. Ex. 1008, 5:26-37; Ex. 1003, ¶ 17.
`
`Crasnianski describes mounting at least three terminals 37a’, 37a” and 37a’”
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`(acting as switches) behind the key slot 36 to measure the blade length of an
`
`inserted key 40. Id., 5:26-59, FIG. 4.
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`
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`Id. at Fig. 4.
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`F.
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`Patriquin
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`Patriquin explains that “the shoulder position of the [master] key 119 is
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`established when the shoulder abuts against a shoulder stop 141 on the tower
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`44” of its key duplicating machine. Ex. 1009, 9:38-42, FIG. 20; Ex. 1003, ¶
`
`
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`11
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`

`

`IPR2020-_____
`Patent 9,914,179
`
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`18. The “shoulder stop includes an electrically conductive shoulder contact
`
`Petition
`
`
`portion that is in electrical contact with the [master] key only when the
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`[master] key shoulder is firmly pressed thereagainst.” Ex. 1009, 3:16-22. The
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`machine in Patriquin is not initiated until the shoulder stop is electrically
`
`connected to the inserted master key. Id. This ensures that the machine does
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`not begin the clamping, measuring and/or cutting process until the master key
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`is properly and fully inserted into the machine. See id., 3:9-28; see also id.,
`
`6:47-53, 9:38-57, 12:18-27, 13:36-39, 14:24-47.
`
`VII. DISCRETIONARY FACTORS
`
`A.
`
`35 U.S.C. § 325(d) Does Not Favor Denial
`
`The Board uses a two-part framework to analyze denial under 325(d):
`
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`
`(2) if either condition of first part of the framework is satisfied,
`whether the petitioner has demonstrated that the Office erred in
`a manner material to the patentability of challenged claims.
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`
`Paper 6 at 7 (PTAB Feb. 13, 2020). When considering the first prong, the
`
`PTAB considers the prosecution of the patent, and any post-issuance
`
`proceedings like ex parte reexams. Id. at 7-8. As to the second prong, the
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`PTAB provided examples of “material errors,” including whether the office
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`12
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`IPR2020-_____
`Patent 9,914,179
`
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`overlooked a specific teaching of the relevant prior art or an error of law, such
`
`Petition
`
`
`as misconstruing a claim term. Id. at n. 9. In Advanced Bionics the Board
`
`explained that the Becton Dickinson factors are used within this framework to
`
`provide useful insight into how to apply each prong. Id. at 9.
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`With respect to the first prong, the primary reference Haggstrom-969
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`discussed in Grounds 3-5 has not been substantively considered by the Patent
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`Office in any other proceeding that Petitioner is aware of—it was not cited in
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`prosecution, and there are no IPR or post-grant proceedings involving the ’179
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`patent to date. Neither was secondary reference Haggstrom-999 substantively
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`considered. Accordingly, for at least this reason, discretionary denial as to
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`Grounds 2-5 is unwarranted.
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`Further, while Almblad, Campbell, Crasnianski and Patriquin were
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`disclosed in an IDS (listed along with more than one-hundred other
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`references), none of these references were substantively addressed by the
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`Examiner or, for that matter, discussed in any way by the applicant. In such
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`circumstances, the Board has granted institution. See, e.g., Digital Check
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`Corp. d/b/a ST Imaging v. E-Imagedata Corp., IPR2017-00178, Paper 6 at
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`12-13 (P.T.A.B. April 25, 2017) (instituting where: “The evidence supports
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`Patent Owner’s assertion that [the prior art references] were cited in an IDS
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`13
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`Patent 9,914,179
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`and the Examiner considered both references. But there is no indication in
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`Petition
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`the record that the Examiner rejected any claims based on either reference or
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`that the Examiner or applicant substantively discussed either reference during
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`prosecution[.]”).
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`Moreover, none of the art cited in this petition is cumulative of the art
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`substantively considered by the Examiner—namely, Gartner and Titus.
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`Indeed, applicant confirmed during prosecution that Gartner disclosed a
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`system in which a matching key blank is determined “by a user him/herself
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`through trial-and-error, by the customer trying to insert his/her key into the
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`different key slots to determine which slot will properly receive the key.” Ex.
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`1002 at 324 (7/19/2017 Remarks). As explained in detail below, the prior art
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`references relied upon this petition are all automatic and require no user
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`intervention or trial-and-error.
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`Likewise, applicant confirmed during prosecution that Titus discloses
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`“an apparatus that stores ‘blank preforms’ that are all identical (in contrast to
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`claimed limitation of storing different key blanks of different profiles).” Id.
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`(emphasis in original). Applicant further confirmed that Titus does not
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`disclose determining key length at all. Id. at 325. Further, applicant
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`confirmed that the prior art did not teach “automatically selecting, ... from
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`Patent 9,914,179
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`among the different stored key blanks, a key blank whose cross-sectional
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`Petition
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`profile matches the automatically-detected cross-sectional profile of the
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`master key.” Id.
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`In contrast, as explained below, the prior art relied upon in this petition
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`discloses precisely these limitations missing from the art considered by the
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`Examiner. For example, Almblad teaches automatically detecting a matching
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`key blank from among a plurality of different key blanks stored in its system
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`based on the key’s cross-section and length. See, infra, Ground 1. The same
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`is true of the Haggstrom-969 reference, which was never before the Examiner.
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`See, infra, Grounds 3-5. Likewise, Crasnianski expressly discloses detecting
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`a key’s length—which was admittedly missing from the art considered by the
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`Examiner. See, infra, Ground 4. Thus, the Grounds and art presented herein
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`are non-cumulative of those previously presented and considered by the
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`Examiner. Accordingly, institution should be granted.
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`B.
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`35 U.S.C. § 314(a) Does Not Favor Denial
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`The purpose of § 314(a) is to prevent serial petitions against the same
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`patent, resulting in unnecessary harassment and wasted resources. Celltrion,
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`Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 13 (PTAB Oct. 30, 2018)
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`(“Celltrion filed a concurrent motion to join the Pfizer IPR, effectively
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`Patent 9,914,179
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`obviating any concerns of serial harassment and unnecessary expenditure
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`Petition
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`of resources.”). Here, there have been no other petitions filed against the ’179
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`patent, and, accordingly, § 314(a) does not apply. For the same reasons, the
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`General Plastics factors are inapplicable here, and denial is not warranted.
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`Likewise, although the companion district court case is set for trial in
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`December 2020, denial is not warranted on this basis either because the
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`district court case will not address the patentability of all the claims at issue
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`in this petition. In particular, challenged claims 5, 6, 8, 13, 14 and 16 are not
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`asserted in the litigation. In addition, the case may be subject to a case
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`narrowing order requiring reduction of asserted claims and prior art
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`combinations. Ex. 1011. Thus, not all of the presently asserted claims will
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`necessarily be subject to a validity opinion by the district court. Further, there
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`is a pending motion to dismiss before the court. See The Hillman Group, Inc.
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`v. Keyme, Inc., No. 2:19-CV-00209-JRG, Dkt. 12 (E.D. Tex. July 25, 2019).
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`Likewise, there is also a pending motion to consolidate the later filed case No.
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`2:20-cv-00070 with the aforementioned case No. 2:19-CV-00209, which
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`would push back its December trial date. See The Hillman Group, Inc. v.
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`Keyme, Inc., No. No. 2:20-cv-00070-JRG, Dkt. 12 (E.D. Tex. March 14,
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`2020). Accordingly, denial is not warranted in this case.
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`16
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`Patent 9,914,179
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`VIII. PATENT OWNER HAS ADMITTED THAT THE CLAIMED
`TECHNOLOGY IS UNPATENTABLE
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`Petition
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`The claimed invention covers nothing more than the well-known
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`technique of automatic key duplication, by matching a key blank to a master
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`key based on the master key’s attributes, and thereafter cutting a duplicate
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`tooth pattern in the matching key blank.
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`This cannot be disputed—indeed, Patent Owner raised the same
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`argument when it filed its own IPR petition against a similar patent. And
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`although Patent Owner relied on, inter alia, a parent of the ’179 patent1 as
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`prior art, Patent Owner’s statements in that proceeding made clear that this
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`technology in general was well-known and unpatentable. For example, in
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`challenging the ’446 patent, Patent Owner argued before the Board that “Self-
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`service key cutting kiosks have been contemplated and described in technical
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`literature for nearly 50 years. . . These prior art kiosks had all of the major
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`components claimed in the [’446 Patent], including key-identification systems
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`[and] key cutting systems[.]” IPR1154, Pet. at 6 (emphasis added). 2
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`1 The parent of the ’179 patent is referred to as “Freeman” in the ’446
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`Petition.
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`2 Attached hereto as Ex. 1010.
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`17
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`Likewise, Patent Owner admitted that “key duplication kiosks had long been
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`Petition
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`contemplated in the key cutting and vending machine arts, and so had the
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`various internal components included in such machines.” Id. at 8. And, in
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`fact, Patent Owner admitted that Almblad—relied upon in this Petition—
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`discloses such a “self-service key making apparatus requiring few instructions
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`and little or no skill or special knowledge on the part of the customer.” Id. at
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`11.
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`Likewise, as to using a master key’s attributes to determine a matching
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`blank—the alleged point of novelty over the art cited curing prosecution—
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`Patent Owner argued that “identifying a key based on features of the blade
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`was well known.” Id. at 24. With respect to determining whether there is a
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`matching key in inventory, Patent Owner argued that this disclosure should
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`be understood as implicitly disclosed in references like Freeman (the parent
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`of the ’179 patent) because “it would have been a matter of common sense to
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`determine if the current inventory [of keys in a key duplication machine]
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`permitted duplication of the customer’s key.” Id. at 37. Thus, even the
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`allegedly novel aspects of the claimed invention were labeled obvious by
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`Patent Owner.
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`18
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`IPR2020-_____
`Patent 9,914,179
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`Petition
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`The Board agreed with Patent Owner, and adopted Patent Owner’s
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`analysis as its own in finding all the challenged claims of the ’446 Patent
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`obvious. IPR1154, FWD at 15, 16. 3 The Board’s finding is particularly
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`relevant to this proceeding, since the invalidated claims of the ’446 Patent
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`closely track those claimed in the ’179 patent challenged by this petition. In
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`particular, both patents claim an automated key duplication system which
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`extracts data about a master key to select a matching key blank, and thereafter