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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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`YITA LLC
`Petitioner
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`v.
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`MACNEIL IP LLC
`Patent Owner
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`Case IPR2020-01138
`Patent 8,382,186
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`PETITIONER YITA LLC’S NOTICE RANKING PETITIONS FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 8,382,186
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`Introduction
`Petitioner Yita LLC (“Petitioner”) is simultaneously filing two petitions
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` Case IPR2020-01138
`U.S. Patent No. 8,382,186
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`(IPR2020-01138 and IPR2020-01139) challenging the patentability of claims 1-7
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`in U.S. Patent No. 8,382,186 (“the ’186 patent”). Under the Board’s July 2019
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`update to the Trial Practice Guide, Petitioners submit this paper with each petition
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`to “identify: (1) a ranking of the petitions in the order in which it wishes the Board
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`to consider the merits … and (2) a succinct explanation of the differences between
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`the petitions, why the issues addressed by the differences are material, and why the
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`Board should exercise its discretion to institute additional petitions ….” TPG (July
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`2019), 27.
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`II. Ranking of the Petitions
`The Board should consider the merits of the petitions in the following order:
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`1. IPR2020-01138 (“the MacNeil Petition”); and
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`2. IPR2020-01139 (“the Rabbe-Yung-Gruenwald Petition”).
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`III. Succinct Explanation of Differences Between the Petitions
`Petitioners challenge each claim of the ’186 patent only once in the MacNeil
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`Petition and only once in the Rabbe-Yung-Gruenwald Petition. The petitions have
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`two grounds in total:
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`- 1 -
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`Ground Basis References
`1
`§103 MacNeil1
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`IPR2020-01138
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`IPR2020-01139
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` Case IPR2020-01138
`U.S. Patent No. 8,382,186
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`Claims
`1-7
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`Claims
`1-7
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`Ground Basis References
`1
`§103 Rabbe,2 Yung,3 and Gruenwald4
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`One main difference between the two petitions is the prior-art dates of the
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`asserted references. The asserted reference in IPR2020-01138 predates August 27,
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`2012. The references in IPR2020-01139 predate October 29, 2004. This difference
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`is material because the MacNeil Petition relies on the ’186 patent not being entitled
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`to claim priority to any of its parent applications.
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`MacNeil
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`Rabbe
`Yung
`Gruenwald
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`IPR2020-01138
`Issued November 4, 2008
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`IPR2020-01139
`Published December 14, 1984
`Published April 18, 2002
`Published in 1998
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`The obviousness grounds also contain other material differences. Indeed, the
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`petitions rely on completely different references. Although each set of references
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`1 U.S. Patent No. 7,444,748 to MacNeil (EX1004).
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`2 French Publication No. 2547252 to Rabbe (EX1005).
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`3 U.S. Publication No. 2002/0045029 A1 to Yung (EX1006).
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`4 Gruenwald, G., Thermoforming: A Plastics Processing Guide, CRC Press,
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`2nd Edition, 1998 (EX1007).
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`- 2 -
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` Case IPR2020-01138
`U.S. Patent No. 8,382,186
`discloses every claim element, they do not use identical language or the same level
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`of detail. For example, in the MacNeil Petition, MacNeil discloses, by itself, all the
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`claim elements. In the Rabbe-Yung-Gruenwald Petition, Petitioner relies on, for
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`example, Rabbe’s floor tray, Yung’s thermoplastic material and baffles, and
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`Gruenwald’s properties of the thermoforming process.
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`IV. The Board should exercise its discretion to institute both petitions.
`The Board’s July 2019 update to the Trial Practice Guide gives examples of
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`when multiple petitions may be necessary, including “when there is a dispute about
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`priority date.” TPG (July 2019), 26. The MacNeil Petition and the Rabbe-Yung-
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`Gruenwald Petition fall squarely within this situation. In short, two petitions are
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`warranted because the parties dispute the ’186 patent’s priority date.
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`When the application that issued as the ’186 patent was filed, the
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`specification included a new paragraph that was not present in the parent
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`applications. The added text states that “[t]he tray is thermoformed from a sheet of
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`polymer material having substantially uniform thickness, and this means that the
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`components of the tray after thermoforming will have a substantially uniform
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`thickness.” EX1001, ’186 patent, 5:8-32. Nowhere else in the ’186 patent is there
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`written description support for the ’186 patent claim element that requires “the
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`central panel, the first panel, the second panel, the reservoir and the baffles each
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`having a thickness from a point on the upper surface to a closest point on the
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`- 3 -
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` Case IPR2020-01138
`U.S. Patent No. 8,382,186
`bottom surface thereof, said thicknesses, as a result of the tray being thermoformed
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`from the sheet of thermoplastic polymeric material of substantially uniform
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`thickness, being substantially uniform throughout the tray.” Id., 20:9-16.
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`Accordingly, the parent applications (which did not include this added text) do not
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`contain an explicit or inherent description of the molded floor tray having a
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`thickness that is substantially uniform throughout the tray.
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`Despite this missing support from the parent applications, Patent Owner
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`alleges that the ’186 patent is entitled to an early priority date. The ’186 patent’s
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`priority date has not been decided, so Petitioner’s two petitions provide
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`invalidating art based on different possible priority dates. The MacNeil Petition is
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`based on a priority date no earlier than August 27, 2012—the filing date of the
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`application that matured into the ’186 patent. The Rabbe-Yung-Gruenwald Petition
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`is based on a priority date no earlier than October 29, 2004—the filing date of the
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`earliest ancestor of the ’186 patent. No tribunal has decided the priority date of the
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`’186 patent, so both petitions are necessary to address the possible outcomes.
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`V. Conclusion
`This case satisfies the Board’s example justification for filing two petitions.
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`Specifically, the petitions depend on the Board’s ultimate finding on the priority
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`date of the ’186 patent. Even with the two petitions, Petitioner has raised only two
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`grounds of unpatentability. These two grounds will not unduly burden the Board or
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`- 4 -
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` Case IPR2020-01138
`U.S. Patent No. 8,382,186
`the parties. The Board should institute trial for both IPR2020-01138 and IPR2020-
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`01139.
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`Respectfully submitted,
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`LOWE GRAHAM JONES PLLC
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` /
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` Mark P. Walters /
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`Mark P. Walters (Reg. No. 46,050)
`Attorney for Petitioner
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`Date: June 30, 2020
`701 5th Avenue, Suite 4800
`Seattle, WA 98104
`(206) 381-3300
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`- 5 -
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` Case IPR2020-01138
`U.S. Patent No. 8,382,186
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that a true and correct copy of the
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`foregoing PETITIONER YITA LLC’S NOTICE RANKING PETITIONS
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`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,382,186 was served
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`via FedEx® Express on June 30, 2020, in its entirety on the following:
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`PERKINS IP LAW GROUP LLC
`4200 Commerce Court, Suite 310
`Lisle, IL 60532
`PAIR Correspondence Address for U.S. Patent No. 8,382,186
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`The above-captioned PETITIONER YITA LLC’S NOTICE RANKING
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`PETITIONS FOR INTER PARTES REVIEW OF U.S. PATENT NO.
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`8,382,186 was also served via e-mail on:
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`Robert S. Grabemann
`Timothy M. Schaum
`DASPIN & AUMENT, LLP
`rgrabemann@daspinaument.com
`tschaum@daspinaument.com
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`Respectfully submitted,
`LOWE GRAHAM JONES PLLC
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` /
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` Mark P. Walters /
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`Mark P. Walters (Reg. No. 46,050)
`Attorney for Petitioner
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`Date: June 30, 2020
`701 5th Avenue, Suite 4800
`Seattle, WA 98104
`(206) 381-3300
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