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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`YITA LLC,
`Petitioner
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`v.
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`MACNEIL IP LLC,
`Patent Owner
`__________________
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`Case No. IPR2020-01138
`Patent No. 8,382,186
`__________________
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`PATENT OWNER'S SUR-REPLY TO PETITIONER'S REPLY TO PATENT
`OWNER'S PRELIMINARY RESPONSE
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`Case IPR2020-01138
`Patent No. 8,382,186
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`TABLE OF CONTENTS
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`I.
`II.
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`III.
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`Introduction ...................................................................................................... 1
`The Figures Petitioner's Expert Relies On Demonstrate Written
`Description Support. ........................................................................................ 1
`Petitioner's Reply Regarding Construction Has Nothing To Do With
`Proper Claim Construction. ............................................................................. 4
`IV. Conclusory, Legally Erroneous Expert Testimony Does Not Raise a
`Fact Issue Regarding Whether Drawings Provide Written Description. ........ 4
`Petitioner Does Not Overcome Patent Owner's Showing of Written
`Description Throughout the '186 Priority Chain. ............................................ 5
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`V.
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`i
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`I.
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`Case IPR2020-01138
`Patent No. 8,382,186
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`Introduction
`Petitioner attempts to rewrite the file history. The '186 Patent's immediate
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`parent (the '899 application) claimed "substantially uniform thickness" after
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`thermoforming with no additional specification language. EX. 1027. During
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`prosecution of the '899 application, the Office was directed to disclosures present
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`throughout the priority chain and the claim language was allowed. EX. 1022, 0208-
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`0213. Consequently, the Office already has found written description support for
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`the limitation at issue based on the specification without the additional language that
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`Petitioner relies on. The Board should not institute.
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`II. The Figures Petitioner's Expert Relies On Demonstrate Written
`Description Support.
`Petitioner claims that Patent Owner improperly equates obviousness with
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`written description. Paper 15 (“Reply”), 1, 3. But Patent Owner does not.
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`Petitioner’s expert states that certain Figures taught the claimed "substantially
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`uniform thicknesses," and these Figures are found throughout the '186 Patent priority
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`chain. Paper 11 (“POPR”), 22-29.
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`Petitioner alleges that Dr. Koch did not cite Figure 1 as disclosing
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`"substantially uniform thicknesses." Reply, 1-2. In a related proceeding for the '834
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`Patent, Dr. Koch points to Figures 1 and 10—in a chart containing "disclosures . . .
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`that taught" the claims—as disclosing a "substantially uniform thickness." IPR2020-
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`-1-
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`01140, EX. 1003, ¶131 (pp. 83, 100-02).1 The POPR cited this testimony and
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`Case IPR2020-01138
`Patent No. 8,382,186
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`Petitioner's Reply ignores it. POPR, 28 n.6. Figures 1 and 10 were both present
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`throughout the '186 priority chain. POPR, 53-54, 56, 62. And in this proceeding,
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`Dr. Koch states that Figures 1 and 15 disclose the claimed "thickness." EX. 1003,
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`¶169 (stating the reference "disclosed element 1.j . . . [a]s shown in Fig. 15" because
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`"[e]ach of the claimed panels, the reservoir, and the baffles have a thickness . . . .
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`See EX1004, FIGs. 1, 15."). Fig. 15, though not in the priority chain, is cumulative
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`of Figure 1, illustrating another tray model.
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`A POSITA would have considered these same express disclosures in the
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`written description inquiry. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
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`1351 ("[T]he hallmark of written description is disclosure."). Petitioner cannot state
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`that these drawings teach "substantially uniform thicknesses" for obviousness, then
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`ignore those same drawings for written description. See EX. 1003, ¶¶112-13 (failing
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`to consider Figures 1 and 10 in written description testimony).
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`Petitioner also makes much of "almost verbatim" citations. Reply, 3. But
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`Patent Owner directly compares the MacNeil '748 passages Petitioner cites as
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`1 While Ex. 1003 of the -01140 IPR is not in the record of the present IPR, Patent
`Owner requests the Board take judicial notice of this exhibit. Genentech, Inc. v.
`Chiron Corp., 112 F.3d 495, 497 n.1 (Fed. Cir. 1997) (taking judicial notice of
`papers filed before the Board). Patent Owner is ready to file this exhibit in the
`present IPR if so requested.
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`-2-
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`teaching and disclosing the claim limitation at issue with similar disclosures from
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`Case IPR2020-01138
`Patent No. 8,382,186
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`the '186 Patent priority chain. POPR, 22-25. Contrary to the Reply, these disclosures
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`refer to the tray after thermoforming, such as: "The tray according to the invention
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`. . ."; ". . . does not create a thin place in the molded part"; and "sheets or blanks
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`[are] heated to produce the vehicle floor trays . . ." POPR, 25.
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`Finally, Petitioner claims that Patent Owner "fails to cite a single passage" in
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`which a tray has "substantially uniform thicknesses" after thermoforming. Reply, 3-
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`4. This is not true. Patent Owner discussed Figure 6 and accompanying text, which
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`describes a "total thickness of the tray 100" after thermoforming. POPR, 16, 64; EX.
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`1001, 5:50-51, 12:29-30, 12:41-42. While Figure 6 likewise is described as showing
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`a cross section before thermoforming, that is because the thickness of the sheet is
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`"substantially uniform" before thermoforming and the thickness of the tray's claimed
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`features is similarly "substantially uniform" after thermoforming, as disclosed in the
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`specification of the '186 Patent. EX. 1001, 12:45-47. As explained in the POPR, Dr.
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`Throne testifies, the specification explains, and the claims spell out that starting with
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`a substantially uniform sheet before thermoforming and controlling thinning during
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`thermoforming achieves a "substantially uniform thickness" for the claimed tray
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`features after thermoforming. POPR, 57-58; EX 2004, ¶¶56-59, 61-62. Petitioner's
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`Reply states falsely that these disclosures do not exist. Not only do these passages
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`disclose the claimed "substantially uniform thickness" after thermoforming, so do
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`Figures 1-4, 9-10, and 12-13, which illustrate the tray features having "substantially
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`Case IPR2020-01138
`Patent No. 8,382,186
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`uniform thicknesses" after thermoforming. POPR, 55-63.
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`III. Petitioner's Reply Regarding Construction Has Nothing To Do With
`Proper Claim Construction.
`The Reply's claim construction section has nothing to do with claim
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`construction. Reply, 4-5. Petitioner's discussion of Figure 6 really relates to written
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`description and not claim construction. As discussed above, both the specification
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`and drawings disclose the "substantially uniform thicknesses" after thermoforming.
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`And Petitioner's construction used misleading ellipses to make it seem the entire
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`tray must be substantially uniform. POPR, 31-32. Petitioner is wrong that the claim
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`requires the entire tray to have a "substantially uniform thickness" and that error is
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`dispositive of its Petition. POPR, 29-34.
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`IV. Conclusory, Legally Erroneous Expert Testimony Does Not Raise
`a Fact Issue Regarding Whether Drawings Provide Written
`Description.
`Petitioner also claims that whether drawings provide written description is a
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`fact issue favoring institution. Petitioner has failed to raise any fact issue here. First,
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`Dr. Koch's testimony is based upon an improper claim construction and his
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`testimony regarding the Figures thus addresses the wrong issue. POPR, 29-34; EX.
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`1003, ¶113. Second, Dr. Koch's testimony is based upon the legally erroneous
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`proposition that the Figures may not be considered because they are not drawn to
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`-4-
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`scale. POPR, 65, 68-69; EX 1003, ¶112. His testimony may thus be disregarded.
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`Case IPR2020-01138
`Patent No. 8,382,186
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`LG Electronics Inc., v. Wi-Lan Inc., IPR2018-00710, Paper 15, at 4-5 (disregarding
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`conclusory written description testimony). Third, Dr. Koch did not present any
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`testimony that Figures 1-2, 6, 9-10, and 12-13 fail to teach "substantially uniform
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`thicknesses." EX. 1003, ¶¶106-21. Dr. Throne's testimony that these figures disclose
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`"substantially uniform thicknesses" is undisputed. EX. 2004, ¶¶55-62.
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`V.
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`Petitioner Does Not Overcome Patent Owner's Showing of
`Written Description Throughout the '186 Priority Chain.
`Finally, and most importantly, none of the issues Petitioner raises are
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`dispositive. The Reply does not distinguish Federal Circuit precedent permitting
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`drawings (even if not to scale) to provide written description. See POPR, 52, 65-69.
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`The Reply does not rebut Patent Owner's showing of written description in drawings
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`dating back to the '186 Patent's earliest priority date. See POPR, 55-63 (illustrating
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`the claimed "substantially uniform thicknesses" in Figures 1-4, 9-10, and 12-13).
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`The Petition and the Reply did not present any testimony that Figures 1-2, 6, 9-10,
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`and 12-13 fail to teach "substantially uniform thicknesses." EX. 1003, ¶¶106-21; EX.
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`2004, ¶¶54-59. And the Reply does not contradict expert testimony that disclosures
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`of how to control unwanted thinning provide further written description for
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`"substantially uniform thicknesses." See POPR 57-58; EX 2004, ¶¶56-59, 61-62.
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`MacNeil respectfully submits that the Board should deny institution.
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`-5-
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`Dated: November 30, 2020
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`Case IPR2020-01138
`Patent No. 8,382,186
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`Respectfully submitted,
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`By: /David G. Wille/
`David G. Wille
`Reg. No. 38,363
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`Lead Counsel for Patent Owner MacNeil
`IP LLC
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`-6-
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER'S SUR-REPLY TO PETITIONER'S REPLY TO PATENT
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`OWNER'S PRELIMINARY RESPONSE was served electronically on November
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`30, 2020, on counsel of record for the Petitioner as follows:
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`Mark P. Walters (Reg. No. 46,050)
`walters@LoweGrahamJones.com
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`Ralph W. Powers III, Reg. No. 63,504
`tpowers-PTAB@sternekessler.com
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`Jason A. Fitzsimmons, Reg. No. 65,367
`jfitzsimmons-PTAB@sternekessler.com
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`Stephen A. Merrill, Reg. No. 72,955
`smerrill-PTAB@sternekessler.com
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`John J. Bamert, Reg. No. 74,859
`bamert@LoweGrahamJones.com
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`PTAB@sternekessler.com
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`/Tracy Engberg/
`Tracy Engberg
`Litigation Legal Assistant
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`BAKER BOTTS L.L.P.
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`Date: November 30, 2020
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