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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`YITA, LLC
`Petitioner
`
`v.
`
`MACNEIL IP LLC
`Patent Owner
`
`____________________
`
`Case No. IPR2020-01138
`Patent No. 8,382,186
`____________________
`
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`
`
`IPR2020-01138
`U.S. Patent No. 8,382,186
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`PATENT OWNER’S PRIORITY ARGUMENTS ARE INACCURATE. .... 1
`A.
`Patent Owner’s Characterization of Petitioner’s Obviousness
`Arguments is Misleading and Legally Inaccurate. ................................ 1
`Patent Owner’s Characterization of the Priority Documents is
`Factually Inaccurate. ............................................................................. 3
`Patent Owner’s Proposed Construction Lacks Support in the Priority
`Document. ............................................................................................. 4
`III. CONCLUSION ................................................................................................ 5
`
`
`
`B.
`
`C.
`
`
`
`- i -
`
`
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`IPR2020-01138
`U.S. Patent No. 8,382,186
`
`I.
`
`INTRODUCTION
`In an effort to show support for the claims of the ’186 patent in a priority
`
`document, MacNeil conflates the law of written description with the law of
`
`obviousness. But these tactics cannot change the file history. If the priority
`
`documents already expressly or inherently described a floor tray after
`
`thermoforming having “thicknesses” that were “substantially uniform throughout
`
`the tray,” there would have been no reason to add that disclosure to the
`
`specification in 2012. MacNeil’s arguments should be rejected and the Board
`
`should institute inter partes review.
`
`II.
`
`Patent Owner’s Priority Arguments are Inaccurate.
`Patent Owner’s Characterization of Petitioner’s Obviousness
`A.
`Arguments is Misleading and Legally Inaccurate.
`First, MacNeil mischaracterizes Dr. Koch’s testimony, citing ¶169 of his
`
`declaration (EX1003) to argue that he “discusses” Figure 1 of MacNeil ’748 as
`
`disclosing the “substantially uniform thickness” limitation. POPR, 26-27. But Dr.
`
`Koch does not discuss Figure 1 in ¶169, or at all for element [1.j], as disclosing the
`
`“substantially uniform thickness” limitation. See EX1003, ¶¶169-174. MacNeil
`
`also alleges “duplicity” in these arguments (POPR, 27), claiming that Dr. Koch
`
`relies on MacNeil ’748 Figures 1 and 15 to show the “substantially uniform
`
`thickness” limitation while at the same time claiming that Figures 3 and 4 of the
`
`’441 application (EX2002, 362-63) cannot provide written description support
`
`
`
`- 1 -
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`
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`IPR2020-01138
`U.S. Patent No. 8,382,186
`because they are not drawn to scale. POPR, 27-28 (citing Pet., 32). But the figures
`
`are not relied on to show “substantially uniform thickness,” simply that there is a
`
`thickness—uniform or not. Moreover, Dr. Koch’s reliance on Figure 15, which
`
`MacNeil admits is new but alleges is “entirely cumulative of Figure 1,” (POPR,
`
`27), is cited by Dr. Koch to provide context for the meaning of the text in MacNeil
`
`’748. EX1003, ¶169 (citing EX1004, 23:15-16 (discussing Figure 15 as showing
`
`“[r]egions 1540 … including channels 1524, ribs 1532 and the reservoir 1522 into
`
`a part [after thermoforming] which has a substantially uniform sheet thickness”)).
`
`Notably, the text from MacNeil ’748 cited by Dr. Koch at ¶169 with reference to
`
`Figure 15 (i.e., EX1004, 23:14-16) discusses thickness after thermoforming and is
`
`not present in the priority chain. Compare EX1004, 23:15-16 to EX2002 (’441
`
`application) with EX2008 (’203 application).
`
`MacNeil argues that Yita “defeat[s] its own Petition” by “providing expert
`
`testimony that specific text in MacNeil ’748 discloses the ‘substantially uniform
`
`thicknesses’ limitation.” POPR, 22. Not so. Yita’s expert does not say MacNeil
`
`’748 discloses this claim limitation sufficient to satisfy the written description
`
`requirement. Rather, Dr. Koch opines that MacNeil ’748 would have “taught” the
`
`limitation to a POSA such that it would have rendered the invention obvious.
`
`EX1003, ¶132. As the Petition explains, the fact that MacNeil ’748 would have
`
`taught or suggested a claim element to a POSA does not also mean that same claim
`
`- 2 -
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`
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`IPR2020-01138
`U.S. Patent No. 8,382,186
`element is expressly or inherently disclosed to satisfy the written description
`
`requirement. Pet., 30 (citing Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir.
`
`1998)); see also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed.
`
`Cir. 2010). The POPR makes this same error throughout, mischaracterizing Dr.
`
`Koch’s testimony to say he opines that the limitation is disclosed in MacNeil ’748
`
`sufficient to satisfy the written description requirement. POPR, 23-25.
`
`B.
`
`Patent Owner’s Characterization of the Priority Documents is
`Factually Inaccurate.
`MacNeil also mischaracterizes the disclosure in the priority documents.
`
`MacNeil cites a passage from MacNeil ’748 (EX1004, 23:41-49) alleging it “is
`
`present, almost verbatim, in the ’441 application all the way through the chain to
`
`the ’186 Patent.” POPR, 23 (emphasis added). But comparing the language from
`
`MacNeil ’748 to the language of the ’441 application confirms that the language is
`
`nowhere near “verbatim.” POPR, 25.
`
`The passages cited by MacNeil in the ’441 application and characterized as
`
`“almost verbatim” to passages in MacNeil ’748 share very few words in common.
`
`Id. These passages differ substantially in language and in subject matter. For
`
`example, the first passage from MacNeil ’748 (POPR, 25 (citing EX1004, 23:41-
`
`49)) relates to the shape of the claimed floor tray after thermoforming, yet the
`
`alleged comparative passage (POPR, 25 (citing EX2002, 319, 337, 339 (¶¶50, 95,
`
`100)) relates to “sheets or blanks” before thermoforming. The same flaw applies to
`
`- 3 -
`
`
`
`IPR2020-01138
`U.S. Patent No. 8,382,186
`the second passage from MacNeil ’748 (POPR, 25 (citing EX1004, 23:14-16)),
`
`which describes the claimed floor tray after thermoforming, but the alleged
`
`comparative passage from the ’441 application (EX2002, 326-27 (¶73)) relates to
`
`the tray before thermoforming. Id. (“more precisely … the blank sheet used to
`
`mold the tray 100”).
`
`The fact that MacNeil fails to cite a single passage in the priority documents
`
`describing the claimed floor tray having “substantially uniform thickness” after
`
`thermoforming is significant. This is because thermoforming does not inherently or
`
`necessarily result in a finished part with a substantially uniform thickness. Pet., 31-
`
`32 (citing EX1008, 0527; EX1009, 0022). In fact, the very nature of
`
`thermoforming results in “wall thicknesses that are not uniform.” EX1008, 0527;
`
`see also EX1009, 0022. The only disclosure in the entire chain describing “the tray
`
`after thermoforming” as having “a substantially uniform thickness” was added to
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`the ’703 application on August 27, 2012. EX1027, 10.
`
`C.
`
`Patent Owner’s Proposed Construction Lacks Support in the
`Priority Document.
`MacNeil’s proposed construction for the “substantially uniform thickness”
`
`limitation differs from Yita’s but not in any way that should affect the Board’s
`
`priority determination. POPR, 41. For example, MacNeil criticizes Yita’s
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`construction for reading the limitation “throughout the tray” to require a
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`“substantially uniform thickness” for the “curved transitions.” POPR, 33. But even
`
`- 4 -
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`
`
`IPR2020-01138
`U.S. Patent No. 8,382,186
`if MacNeil is correct, nothing in the priority document discloses a tray after
`
`thermoforming having substantially uniform thickness anywhere, let alone more
`
`specifically in all places except “curved transitions.” MacNeil incorrectly claims
`
`Figure 6 in the ’441 application discloses such a tray (POPR, 64), describing
`
`Figure 6 as a “highly magnified sectional view” “of the tray 100,” which MacNeil
`
`equates with the tray after thermoforming. Id. (citing FIGs. 1-4 and 9-13). But
`
`according to the text of the ’441 application, Figure 6 relates “more precisely, [to]
`
`the blank sheet used to mold the tray 100.” In other words, Figure 6 describes the
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`sheet of thermoplastic before thermoforming, not after. EX2002, 326-27 (¶73).
`
`And insofar as the parties dispute whether other drawings of the claimed tray in the
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`’441 application are sufficient by themselves to provide written description for a
`
`floor tray having “substantially uniform thickness” after thermoforming, that is an
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`issue of fact that should be resolved in favor of institution. 37 C.F.R. § 42.108(c);
`
`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991).
`
`III. CONCLUSION
`The POPR makes incorrect legal and factual statements, and it does not
`
`present a dispositive claim construction issue. To the extent the POPR raises a
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`dispute of fact, the Board should decide such disputes after institution with the
`
`benefit of a fully developed record.
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`
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`- 5 -
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`
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`IPR2020-01138
`U.S. Patent No. 8,382,186
`
`Respectfully submitted,
`
`LOWE GRAHAM JONES PLLC
`
`/Mark P. Walters/
`
`Mark P. Walters (Reg. No. 46,050)
`Attorney for Petitioner
`
`
`
`Date: November 20, 2020
`
`701 5th Avenue, Suite 4800
`Seattle, WA 98104
`(206) 381-3300
`
`- 6 -
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`
`
`IPR2020-01138
`U.S. Patent No. 8,382,186
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that on November 20, 2020, a true and
`
`correct copy of the foregoing PETITIONER’S REPLY TO PATENT
`
`OWNER’S PRELIMINARY RESPONSE was served electronically via e-mail
`
`on the following counsel for Patent Owner:
`
`David G. Wille (Lead Counsel)
`Chad C. Walters (Back-up Counsel)
`Clarke W. Stavinoha (Back-up Counsel)
`BAKER BOTTS L.L.P.
`david.wille@bakerbotts.com
`chad.walters@bakerbotts.com
`clarke.stavinoha@bakerbotts.com
`
`Jefferson Perkins (Back-up Counsel)
`PERKINS IP LAW GROUP LLC
`jperkins@perkinsip.com
`
`
`
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason A. Fitzsimmons/
`
`Jason A. Fitzsimmons (Reg. No. 65,367)
`Attorney for Petitioner
`
`
`
`Date: November 20, 2020
`
`1100 New York Avenue N.W.
`Washington, DC 20005
`(202) 371-2600
`
`
`
`
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