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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TIDE INTERNATIONAL (USA), INC.
`Petitioner
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`v.
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`UPL NA INC.
`Patent Owner
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`Case IPR2020-01113
`Patent 7,473,685
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE TO PETITIONER’S PETITION FOR INTER PARTES
`REVIEW OF UNITED STATES PATENT NO. 7,473,685
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`1001
`1002
`1003
`1004
`1005
`1006
`1007
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`1008
`1009
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`1010
`1011
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`1012
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`1013
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`1014
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`Attorney Docket: 49321-0001IP1
`IPR2020-01113
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`EXHIBITS
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`U.S. Patent No. 7,473,685 (“the ’685 patent”)
`Prosecution History of the ’685 patent
`Declaration of William Geigle
`Curriculum Vitae of William Geigle
`U.S. Patent No. 6,387,388 (“Misselbrook”)
`Chinese Patent Publication No. 1127588A
`Certified Translation of Chinese Patent Publication No. 1127588A
`(“CN ’588”)
`Japanese Patent Publication No. 9-315902A
`Certified Translation of Japanese Patent Publication No. 9-315902A
`(“JP ’902”)
`U.S. Patent No. 6,030,924 (“Mayer”)
`“Basic Information about Pesticide Ingredients,” U.S. Environmental
`Protection Agency, at https://www.epa.gov/ingredients-used-pesti-
`cide-products/basic-information-about-pesticide-ingredients, last ac-
`cessed 6/4/20
`“Reregistration Eligibility Decision for Acephate,” U.S. Environmen-
`tal Protection Agency, Prevention, Pesticides, and Toxic Substances,
`September 2001
`Search Results for Chemical Name: Acephate that are “Active” at
`EPA’s Pesticide Product and Label System, at:
`https://iaspub.epa.gov/apex/pesticides/f?p=PPLS:1, lasted accessed
`6/3/20
`Search Results for Chemical Name: Acephate that are “Inactive” at
`EPA’s Pesticide Product and Label System, at:
`https://iaspub.epa.gov/apex/pesticides/f?p=PPLS:1, lasted accessed
`6/3/20
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`i
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`
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`1015
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`1016
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`1017
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`1018
`1019
`1020
`1021
`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`Attorney Docket: 49321-0001IP1
`IPR2020-01113
`Order: re Claim Construction UPL NA Inc. v. Tide International
`(USA), Inc. et al., No. 8:19-cv-1201-RSWL-KS (C.D. Cal.), Doc. 83
`(4/10/20)
`CIPAC webpage describing “History,” at https://www.cipac.org/in-
`dex.php/about-us/history, last accessed 6/6/20
`Excerpts of Particle Size Characterization, Ajit Jillavenkatesa et al.,
`National Institute of Standards and Technology, Technology Admin-
`istration, U.S. Department of Commerce, Special Publication 960-1
`(Jan. 2001), at https://tsapps.nist.gov/publica-
`tion/get_pdf.cfm?pub_id=850451, last accessed 6/4/20
`U.S. Patent No. 6,875,381 (“the ’381 patent”)
`Excerpt from the Prosecution History of the ’381 patent
`U.S. Patent Publication No. 2002/0114821A1 (“Lescota”)
`U.S. Patent No. 4,892,866 (“Itzel”)
`CIPAC webpage entitled “MT 47 – Persistent Foaming,” at
`https://www.cipac.org/index.php/f18/370-mt-47-persistent-foaming,
`last accessed 6/6/20
`CIPAC webpage entitled “Errata,” at https://www.cipac.org/in-
`dex.php?option=com_content&view=cate-
`gory&id=97&Itemid=562, last accessed 6/6/20
`Excerpts from Chemistry and Technology of Agrochemical Formula-
`tions, D.A. Knowles, Ed. (1998)
`“Sulfonation and Sulfation Processes,” Norman C. Foster, Chemithon
`(1997)
`CIPAC webpage entitled “Content of CIPAC Handbook F,” at
`https://www.cipac.org/index.php/methods-publications/hand-
`books/handbook-f, last accessed 6/10/20
`Joint Status Report, UPL NA Inc. v. Tide International (USA), Inc. et
`al., No. 8;19-cv-1201-RSWL-KS (C.D. Cal.), Doc. 84 (4/20/20)
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`ii
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
`1036
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`Attorney Docket: 49321-0001IP1
`IPR2020-01113
`May 2020 email correspondence from UPL NA Inc. v. Tide Interna-
`tional (USA), Inc. et al., No. 8;19-cv-1201-RSWL-KS (C.D. Cal.)
`“China Judicial Assistance Information,” U.S. Department of State,
`Bureau of Consular Affairs, at https://travel.state.gov/con-
`tent/travel/en/legal/Judicial-Assistance-Country-Infor-
`mation/China.html, last accessed 6/16/20
`“Hong Kong Judicial Assistance Information,” U.S. Department of
`State, Bureau of Consular Affairs, at https://travel.state.gov/con-
`tent/travel/en/legal/Judicial-Assistance-Country-Infor-
`mation/HongKong.html, last accessed 6/16/20
`“Ministry of Foreign Affairs of the People’s Republic of China Na-
`tional Immigration Administration Announcement on Temporary Sus-
`pension of Entry by Foreign Nationals Holding Valid Chinese Visas
`or Residence Permits,” Mar. 26, 2020, at
`https://www.fmprc.gov.cn/mfa_eng/wjbxw/t1761867.shtml via Way-
`back Machine, last accessed 6/16/20
`“Proclamation on Suspension of Entry as Immigrants and Nonimmi-
`grants of Persons who Pose a Risk of Transmitting 2019 Novel Coro-
`navirus,” White House, at https://www.whitehouse.gov/presidential-
`actions/proclamation-suspension-entry-immigrants-nonimmigrants-
`persons-pose-risk-transmitting-2019-novel-coronavirus/, last accessed
`6/16/20
`“Chapter 599C, Compulsory Quarantine of Certain Persons Arriving
`at Hong Kong Regulation,” Hong Kong e-Legislation, Feb. 8, 2020, at
`https://www.elegislation.gov.hk/hk/cap599C, last accessed 6/16/20
`Order: re Defendant’s Motion to Stay Litigation Pending Inter Partes
`Review, Spin Master Ltd. v. Mattel, Inc., CV 18-3435-RSWL-GJS
`(C.D. Cal.) (11/21/18)
`Tide Stipulation to UPL Regarding IPR Proceedings
`Joint Status Report filed in UPL NA Inc. v. Tide International (USA),
`Inc., et al., Civil Action No. 8:19-CV-01201-RSWL-KS, August 25,
`2020
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`iii
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`1037
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`Attorney Docket: 49321-0001IP1
`IPR2020-01113
`Email Correspondence with the Court in UPL NA Inc. v. Tide Interna-
`tional (USA), Inc., et al., Civil Action No. 8:19-CV-01201-RSWL-KS
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`iv
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`Attorney Docket: 49321-0001IP1
`IPR2020-01113
`Petitioner submits this reply to address two inaccurate statements made by
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`Patent Owner in its Preliminary Response concerning the parallel district court pro-
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`ceeding UPL NA Inc. v. Tide International (USA), Inc. et al., No. 8:19-cv-1201-
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`RSWL-KS (C.D. Cal. 2019). The Board authorized this reply in an email dated
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`November 5, 2020.
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`First, Patent Owner’s statement that “there is no indication that the court
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`would grant any request for a stay if this proceeding is instituted” is inaccurate.
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`(POPR at p. 2.) Although Patent Owner submitted the Court’s new scheduling order
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`as Exhibit 2001, Patent Owner did not submit a copy of the Parties’ Joint Status
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`Report that the Court considered when entering the new case schedule. See, e.g.,
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`Ex. 2001 (Court’s Order re Parties Joint Status Report) at 1 (“The Court, having
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`considered the Parties’ Joint Status Report, now sets the following dates . . . .”)
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`(emphasis added). Petitioner therefore attaches the August 25, 2020 Joint Status
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`Report to this Reply as Exhibit 1036.
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`The Joint Status Report (Ex. 1036) demonstrates that the Court’s actions
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`clearly support its amenability to a stay pending IPR. In the Joint Status Report,
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`Patent Owner sought to lift the stay and to adopt a much faster case schedule that
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`would have resumed the pace of the prior case schedule from before the COVID-19
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`related stay in the district court proceedings. Patent Owner, for example, proposed
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`that fact discovery close on November 11, 2020, expert discovery close on January
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`1
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`IPR2020-01113
`12, 2021, and trial be scheduled for April 27, 2021. Ex. 1036 at 4. Although re-
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`strictions concerning taking depositions of Chinese witnesses remained, Patent
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`Owner sought to “proceed with its case with the expectation that the parties will
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`work together to reach compromises on discovery issues as they arise.” Id. at 3.
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`Notably, consistent with its pre-IPR petition conduct of not pursuing this case, Patent
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`Owner never sought to lift the stay until the Court asked the parties to submit a joint
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`status report in mid-August 2020. Ex. 1037 (August 2020 email correspondence
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`with Court) at 1.
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`In the Joint Status Report, Petitioner requested to continue the stay in the case
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`for at least five months, until after the January 25, 2021 deadline for the Board’s
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`institution decision on the present Petition. Ex. 1036 at 4-5. Petitioner identified
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`the many efficiencies resulting from waiting for the January 2021 institution deci-
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`sion, including narrowing or disposing of the case and avoiding overlapping efforts
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`by the Court and the Board. Id. at 5-6. Petitioner also informed the Court that if
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`IPR proceedings are instituted, Tide would not pursue the IPR grounds in district
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`court. Id. at 5-6 & Ex. A (June 17, 2020 Correspondence from Petitioner to Patent
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`Owner).
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`In response to the parties’ submissions, the Court rejected Patent Owner’s
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`schedule and, instead, added several months to the fact discovery period so that final
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`contentions would not be served, and fact discovery would not close, until after the
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`Attorney Docket: 49321-0001IP1
`IPR2020-01113
`Board’s January 25, 2021 institution decision due date. In doing so, the Court
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`avoided setting any dates that would result in overlapping efforts by the Court and
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`the Board—including implicitly recognizing Tide’s commitment to forego pursuing
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`overlapping IPR grounds if an IPR were instituted. The Court’s actions also signaled
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`its willingness to compromise between Patent Owner’s desire to pursue discovery
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`and Petitioner’s desire to seek relief from the Board in an IPR proceeding. Finally,
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`the Court invited the parties to alter the scheduled dates if necessary by joint requests
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`or by individual motions. Ex. 2001 at 1 (“Given the uncertainty surrounding the
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`COVID-19 pandemic, the parties may file a joint request or individual motion to
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`alter these dates if so required.”). Thus, rather than providing “no indication that the
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`court would grant any request for a stay if this proceeding is instituted” (POPR at p.
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`2), the Court indicated its willingness to stay (and delay) the case as appropriate by
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`carefully setting a schedule that avoided overlapping efforts between the Board and
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`district court proceedings. The Court’s willingness to stay these proceedings in fa-
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`vor of an instituted IPR is exactly consistent with its record of doing so in the past.
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`See Petition at pp. 70-71.
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`Second, Patent Owner’s statement that Tide’s stipulation not to pursue
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`Grounds 1-3 of the petition if an IPR is instituted “would not preclude Tide from
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`challenging the validity of the claims of the ’685 patent in district court based on any
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`number of iterations of the arguments in its petition, including, e.g., CN ’588 in view
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`Attorney Docket: 49321-0001IP1
`IPR2020-01113
`of Misselbrook, JP ’902, and/or Mayer; JP ’902 in view of Misselbrook, CN ’588,
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`and/or Mayer; or Mayer in view of Misselbrook, CN ’588, and/or JP ’902” is incor-
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`rect. (POPR at p. 7.) To be clear, if an IPR is instituted, Tide will not pursue the
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`combinations set forth in its petition—including the iterations identified by Patent
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`Owner that treat CN ’588 and JP ’902 as primary references. Tide’s commitment,
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`moreover, goes above and beyond the statutorily prescribed estoppel, which only
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`applies if a Final Written Decision is issued in Patent Owner’s favor. See 35 U.S.C.
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`§315(e)(1), (2). Here, Tide has agreed not to pursue IPR grounds before the district
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`court irrespective of the results of a Final Written Decision. Petitioner made this
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`point clear to the Court, as well, who set a schedule that allows Tide to remove any
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`instituted IPR grounds from its invalidity contentions, due January 26, 2021. Ex.
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`1036 at 6 (“Tide has already committed to the PTAB and UPL that it will not assert
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`the IPR Grounds, or either of the prior art references asserted in the IPR (Mis-
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`selbrook or Lescota) as primary references before this Court.”) & Ex. A.
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`Petitioner therefore requests that the Board give no weight to Patent Owner’s
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`above-identified statements in considering whether to institute IPR proceedings
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`against the ’685 patent.
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`4
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`Dated /November 13, 2020/
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`(Control No. IPR2020-01113)
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`Attorney Docket: 49321-0001IP1
`IPR2020-01113
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`Respectfully submitted,
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`/Dorothy P. Whelan/
`Dorothy P. Whelan, Reg. No. 33,814
`Thad C. Kodish, Reg. No. 53,149
`Jacqueline Tio, Reg. No. 72,227
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 612-335-5070
`F: 612-288-9696
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`Attorneys for Petitioner
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`Attorney Docket: 49321-0001IP1
`IPR2020-01113
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on November
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`13, 2020, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
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`Preliminary Response to Petitioner’s Petition for Inter Partes Review of United
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`States Patent No. 7,473,685 and all supporting exhibits were provided to the Patent
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`Owner by serving the email correspondence addresses of record as follows:
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`Maximilienne Giannelli
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190-6023
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`Parmanand K. Sharma
`Rejeev Gupta
`Joshua L. Goldberg
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
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`Email: Maximilienne.Giannelli@finnegan.com
`Email: Parmanand.Sharma@finnegan.com
`Email: Raj.Gupta@finnegan.com
`Email: Joshua.Goldberg@finnegan.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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