UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01138
`Patent 8,382,186
`____________
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`
`PATENT OWNER’S RESPONSE TO
`PETITIONER’S NOTICE RANKING PETITIONS FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 8,382,186
`
`
`1
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01138
`Patent 8,382,186
`____________
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`
`PATENT OWNER’S RESPONSE TO
`PETITIONER’S NOTICE RANKING PETITIONS FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 8,382,186
`
`
`1
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`The Board has recognized that multiple petitions “filed against the same
`
`patent owner at or about the same time . . . may place a substantial and unnecessary
`
`burden on the Board and the patent owner and could raise fairness, timing, and
`
`efficiency concerns.” Patent Trial and Appeal Board Consolidated Trial Practice
`
`Guide (“CTPG”) at 59 (November 2019). Yita LLC’s (“Petitioner’s”) filing of two
`
`meritless petitions for inter partes review on the same day challenging the same
`
`claims of U.S. Patent No. 8,382,186 (the “’186 Patent”) is precisely the kind of tactic
`
`that imposes an unnecessary burden on the Board and MacNeil IP LLC (“Patent
`
`Owner”). Patent Owner must now defend against not one, but two meritless
`
`challenges at the pre-institution stage and potentially through trial should the Board
`
`institute. Petitioner’s superficial explanation alleging two petitions are necessary
`
`omits key facts that demonstrate institution of both petitions (let alone any single
`
`petition) is unwarranted. Patent Owner requests the Board, if it decides to institute
`
`review on any of the petitions, to restrict Petitioner to only one petition.
`
`
`
`II.
`
`PETITIONER’S EXPLANATION DOES NOT JUSTIFY FILING
`MULTIPLE PETITIONS
`
`As an initial matter, although both petitions lack merit, Patent Owner agrees
`
`with Petitioner’s ranking of its petitions challenging the ’186 Patent – specifically
`
`ranking IPR2020-01138 (the “MacNeil Petition”) first. There is no justification,
`
`
`
`2
`
`
`
`however, for filing two petitions. Patent Owner has not asserted a large number of
`
`claims in litigation: the ’186 Patent has only seven claims. See CTPG at 59. To
`
`justify filing multiple petitions, Petitioner instead relies on a priority dispute and
`
`different references in the petitions. See Paper 2 at 2-3.
`
`Apparently recognizing the deficiencies of its prior-art based challenge
`
`(IPR2020-01139), Petitioner hedges its bets by filing the MacNeil Petition, which
`
`Petitioner ranks first and which relies on a fabricated priority dispute and a single
`
`reference, U.S. Patent No. 7,444,748. But Petitioner’s explanation for filing multiple
`
`petitions focuses on the priority dispute, which does not offer the Board sufficient
`
`reason under the standards in the Consolidated Trial Practice Guide to permit both
`
`petitions.
`
`First, the Consolidated Trial Practice Guide states that multiple petitions may
`
`be necessary when there is a priority dispute “requiring arguments under multiple
`
`prior art references.” CTPG at 59. But Petitioner only raises a single reference in
`
`the MacNeil Petition and nowhere explains why this single reference could not have
`
`been combined with its other petition, particularly given that the MacNeil Petition
`
`focuses only on a single claim limitation (the “substantially uniform thickness”
`
`limitation). Petitioner’s ranking position omits any explanation as to why this narrow
`
`ground merits an additional petition.
`
`
`
`3
`
`
`
`Petitioner does not explain why this single reference, focusing on a single
`
`claim limitation, could not be included in its other petition. The Board should deny
`
`institution of multiple petitions for these reasons alone.
`
`
`
`III. CONCLUSION
`
`The Board should exercise its discretion and deny multiple petitions to avoid
`
`an unjustified burden on the Board. “[M]ultiple petitions by a petitioner are not
`
`necessary in the vast majority of cases,” and Petitioner has not shown this case to be
`
`the “rare” exception. CTPG at 59. Accordingly, if the Board decides to institute
`
`review on any of the petitions—a decision unjustified on the merits—it should
`
`restrict Petitioner to only one petition.
`
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`Attorneys for Patent Owner
`
`/David G. Wille/
`David G. Wille
`Reg. No. 38,363
`
`
`Date: October 15, 2020
`
`
`
`
`
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the
`
`15th day of October, 2020, a complete and entire copy of this PATENT OWNER’S
`
`RESPONSE TO PETITIONER’S NOTICE RANKING PETITIONS FOR
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,382,186 was served on
`
`Petitioner via email to counsel for the Petitioner at the following addresses:
`
` walters@LoweGrahamJones.com;
`
` tpowers-PTAB@sternekessler.com;
`
` jfitzsimmons-PTAB@sternekessler.com;
`
` smerrill-PTAB@sternekessler.com;
`
` bamert@LoweGrahamJones.com; and
`
` PTAB@sternekessler.com.
`
`
`
`
`October 15, 2020
`Date
`
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`
`
`/David G. Wille/
`David G. Wille (Reg. No. 38,363)
`BAKER BOTTS L.L.P.
`(214) 953-6595
`2001 Ross Avenue, Suite 900
`Dallas, Texas 75201-2980
`
`Attorneys for Patent Owner, MacNeil IP
`LLC
`
`5
`
`
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