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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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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
`U.S. Patent No. 7,473,685
`__________________
`
`PATENT OWNER’S SUR-REPLY
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`
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`Case IPR2020-01113
`U.S. Patent No. 7,473,685
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`Table of Contents
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`I.
`II.
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`The District Court Has Not Signaled that It Is Amenable to a Stay. ............... 1
`Tide Did Not Stipulate in District Court to Forego Iterations of the
`Combinations in its Petition. ........................................................................... 4
`III. Conclusion ....................................................................................................... 5
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`i
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`Patent Owner UPL NA accurately explained in its preliminary response that
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`Case IPR2020-01113
`U.S. Patent No. 7,473,685
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`(1) there is “no indication that the court would grant any request for a stay if this
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`proceeding is instituted,” and (2) the stipulation by Tide International (USA), Inc.
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`(“Tide”) failed to foreclose arguments in district courts based on any number of
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`iterations of the grounds for invalidity in the petition. POPR at 2, 7. UPL NA
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`submits this sur-reply to address Tide’s mischaracterizations of events in the
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`district court and the scope of Tide’s own stipulation. POPR at 2, 7. The Board
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`authorized this sur-reply in an email dated November 5, 2020.
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`I.
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`The District Court Has Not Signaled that It Is Amenable to a Stay.
`Petitioner incorrectly asserts that the district court’s actions demonstrate “its
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`amenability to a stay pending IPR.” Reply at 1. The district court’s actions suggest
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`the opposite.
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`First, Tide specifically asked the court to extend the stay of litigation for five
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`months pending the Board’s decision on institution (Ex. 1036 at 5-6), and the court
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`responded by issuing a revised case schedule, not an extension of the stay
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`(Ex. 2001 at 1). And, contrary to Tide, the court’s statement that the parties may
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`seek to alter the case schedule due to “the COVID-19 pandemic” says nothing
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`about whether the court is inclined to stay the litigation due to this IPR. See Reply
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`at 3.
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`1
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`Next, the revised case schedule permits Tide to update its final invalidity
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`Case IPR2020-01113
`U.S. Patent No. 7,473,685
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`contentions (due January 26, 2021) based on the Board’s institution decision (due
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`by January 25, 2021). This timing reflects an expectation that the litigation will
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`proceed after the Board’s decision on institution, potentially with updated grounds
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`for invalidity. While Tide argues that the court “avoided setting any dates that
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`would result in overlapping efforts by the Court and the Board” (Reply at 3), it is
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`not possible to avoid overlapping efforts in view of the limited scope of Tide’s
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`district court stipulation, as explained in Section II.
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`Further, the court could have signaled an intent to stay the litigation by
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`incorporating a gap in the schedule after the expected date for the Board’s
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`institution decision (January 25, 2021). Such a gap could address any attempt to
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`conserve judicial and party resources while the court determines whether a stay is
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`appropriate. But instead of building a gap into the schedule, the court set deadlines
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`requiring that fact discovery end on February 2, 2021, and opening expert reports
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`be served on February 16, 2021. Ex. 2001 at 1. Those deadlines do not provide
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`sufficient time for the court to decide a contested motion to stay the litigation.
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`Rather, the court’s deadlines require the parties to prepare final contentions,
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`conduct substantially all discovery, and invest considerable time and effort
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`preparing opening expert reports (addressing, e.g., invalidity, infringement, and
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`damages) prior to the Board’s decision on institution. If anything, the court’s
`2
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`revised schedule seems to indicate that the district court expects the parties to
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`Case IPR2020-01113
`U.S. Patent No. 7,473,685
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`continue litigating the case, regardless of the Board’s decision on institution.
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`Finally, Tide is incorrect that the court’s “willingness to stay these
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`proceedings in favor of an instituted IPR is exactly consistent with its record of
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`doing so in the past.” Reply at 3 (citing Petition at 70-71) (citing Transp. Techs.,
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`LLC v. Los Angeles Count. Metro. Transp. Auth., No. 15-6423, 2016 WL 7444679,
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`at *8 (C.D. Cal. July 22, 2016); Cannarella v. Volvo Car USA LLC et al., No. 16-
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`6195, 2016 WL 9450451 (C.D Cal. Dec. 12, 2016); Envisiontec, Inc. v. Formlabs,
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`Inc., No. 16- 06812, 2017 WL 2468770 (C.D. Cal. June 6, 2017); Spin Master Ltd.
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`v. Mattel, Inc., No. 18-3435, slip op. (C.D. Cal. Nov. 21, 2018)). The facts here
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`contrast with those in the cases cited by Tide, which involved a case “in its
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`procedural infancy” (Cannarella, 2016 WL 9450451, *12); a case where the
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`parties had “not commenced discovery and the Court [had] not issued a Scheduling
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`Order” (Envisiontec, 2017 WL 2468770, *2); a case where a motion to stay was
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`filed the day after the Scheduling Order issued (Spin Master, No. 18-3435, slip op.
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`at 5); and a case where “the claim construction process [was] in its infancy”
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`(Transp. Techs., 2016 WL 7444679, *7).
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`In short, there is no indication that the district court would grant a request to
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`stay the litigation if the IPR is instituted.
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`3
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`Case IPR2020-01113
`U.S. Patent No. 7,473,685
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`II. Tide Did Not Stipulate in District Court to Forego Iterations of the
`Combinations in its Petition.
`Tide’s stipulation to UPL NA did not indicate that Tide would forego all
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`combinations based on the prior art references in its Petition. Tide stipulated only
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`that if Tide’s petition is instituted, Tide would not challenge the validity of the
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`’685 patent based on the grounds in its petition, or any ground using Misselbrook
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`or Lescota as a primary reference. Ex. 1035 at 1, 2; see also Ex. 1036 at 6.
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`Tide now seeks to “clarify” that it will not pursue “the combinations” set
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`forth in the petition, “including the iterations identified by Patent Owner that treat
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`CN ’588 and JP ’902 as primary references.” Reply at 4. Even with this
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`modification, Tide’s revised stipulation is not commensurate with the scope of
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`estoppel under 35 U.S.C. § 325(e), as it fails to include grounds that Tide
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`“reasonably could have raised” in its petition, including combinations based on
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`Mayer as a primary reference.
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`UPL NA thus submits that it would be an inefficient use of the Board’s
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`resources to proceed in parallel to the district court for all the reasons stated in
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`UPL NA’s preliminary response, particularly where challenged claims of the ’685
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`patent were already deemed patentable over the disclosures in at least Tide’s
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`primary reference (Misselbrook, which contains the same disclosures as Lescota).
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`4
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`III. Conclusion
`For the foregoing reasons, UPL NA respectfully asks the Board to deny
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`Case IPR2020-01113
`U.S. Patent No. 7,473,685
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`institution.
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`
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`Date: November 20, 2020
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`
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`Respectfully submitted,
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`
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`
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`By: /Maximilienne Giannelli/
`Maximilienne Giannelli, Reg. No. 57,286
`Parmanand K. Sharma, Reg. No. 43,916
`Rajeev Gupta, Reg. No. 55,873
`Joshua L. Goldberg, Reg. No. 59,369
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
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`Counsel for Patent Owner UPL NA Inc.
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`5
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`Case IPR2020-01113
`U.S. Patent No. 7,473,685
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Patent Owner’s Sur-
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`Reply was served electronically via email on November 20, 2020, in its entirety on
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`the following:
`
`Dorothy P. Whelan
`Thad C. Kodish
`Jacqueline Tio
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR49321-0001IP1@fr.com
`PTABInbound@fr.com
`whelan@fr.com
`tkodish@fr.com
`tio@fr.com
`
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`Petitioner has consented to service by email at the above addresses with reference
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`to No. 49321-0001IP1.
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`
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`Date: November 20, 2020
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`
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`By: /William Esper/
`William Esper
`Legal Assistant
`
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
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