`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01139
`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
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`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
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`1
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`
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`I.
`
`INTRODUCTION
`The Board has recognized that multiple petitions “filed against the same
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`patent owner at or about the same time . . . may place a substantial and unnecessary
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`burden on the Board and the patent owner and could raise fairness, timing, and
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`efficiency concerns.” Patent Trial and Appeal Board Consolidated Trial Practice
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`Guide (“CTPG”) at 59 (November 2019). Yita LLC’s (“Petitioner’s”) filing of two
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`meritless petitions for inter partes review on the same day challenging the same
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`claims of U.S. Patent No. 8,382,186 (the “’186 Patent”) is precisely the kind of tactic
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`that imposes an unnecessary burden on the Board and MacNeil IP LLC (“Patent
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`Owner”). Patent Owner must now defend against not one, but two meritless
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`challenges at the pre-institution stage and potentially through trial should the Board
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`institute. Petitioner’s superficial explanation alleging two petitions are necessary
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`omits key facts that demonstrate institution of both petitions (let alone any single
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`petition) is unwarranted. Patent Owner requests the Board, if it decides to institute
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`review on any of the petitions, to restrict Petitioner to only one petition.
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`II.
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`PETITIONER’S EXPLANATION DOES NOT JUSTIFY FILING
`MULTIPLE PETITIONS
`As an initial matter, although both petitions lack merit, Patent Owner agrees
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`with Petitioner’s ranking of its petitions challenging the ’186 Patent – specifically
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`ranking IPR2020-01138 (the “MacNeil Petition”) first. There is no justification,
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`2
`
`
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`however, for filing two petitions. Patent Owner has not asserted a large number of
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`claims in litigation: the ’186 Patent has only seven claims. See CTPG at 59. To
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`justify filing multiple petitions, Petitioner instead relies on a priority dispute and
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`different references in the petitions. See Paper 2 at 2-3.
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`Apparently recognizing the deficiencies of its prior-art based challenge
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`(IPR2020-01139), Petitioner hedges its bets by filing the MacNeil Petition, which
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`Petitioner ranks first and which relies on a fabricated priority dispute and a single
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`reference, U.S. Patent No. 7,444,748. But Petitioner’s explanation for filing multiple
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`petitions focuses on the priority dispute, which does not offer the Board sufficient
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`reason under the standards in the Consolidated Trial Practice Guide to permit both
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`petitions.
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`First, the Consolidated Trial Practice Guide states that multiple petitions may
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`be necessary when there is a priority dispute “requiring arguments under multiple
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`prior art references.” CTPG at 59. But Petitioner only raises a single reference in
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`the MacNeil Petition and nowhere explains why this single reference could not have
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`been combined with its other petition, particularly given that the MacNeil Petition
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`focuses only on a single claim limitation (the “substantially uniform thickness”
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`limitation). Petitioner’s ranking position omits any explanation as to why this narrow
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`ground merits an additional petition.
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`3
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`
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`Petitioner does not explain why this single reference, focusing on a single
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`claim limitation, could not be included in its other petition. The Board should deny
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`institution of multiple petitions for these reasons alone.
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`III. CONCLUSION
`The Board should exercise its discretion and deny multiple petitions to avoid
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`an unjustified burden on the Board. “[M]ultiple petitions by a petitioner are not
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`necessary in the vast majority of cases,” and Petitioner has not shown this case to be
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`the “rare” exception. CTPG at 59. Accordingly, if the Board decides to institute
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`review on any of the petitions—a decision unjustified on the merits—it should
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`restrict Petitioner to only one petition.
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`Date: October 15, 2020
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`Attorneys for Patent Owner
`
`/David G. Wille/
`David G. Wille
`Reg. No. 38,363
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`4
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`
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the
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`15th day of October, 2020, a complete and entire copy of this PATENT OWNER’S
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`RESPONSE TO PETITIONER’S NOTICE RANKING PETITIONS FOR
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`INTER PARTES REVIEW OF U.S. PATENT NO. 8,833,186 was served on
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`Petitioner via email to counsel for the Petitioner at the following addresses:
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` walters@LoweGrahamJones.com;
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` tpowers-PTAB@sternekessler.com;
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` jfitzsimmons-PTAB@sternekessler.com;
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` smerrill-PTAB@sternekessler.com;
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` bamert@LoweGrahamJones.com; and
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` PTAB@sternekessler.com.
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`October 15, 2020
`Date
`
`/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
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`5
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`