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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
`
`v.
`
`MACNEIL IP LLC
`Patent Owner
`
`____________________
`
`Case No. IPR2020-01139
`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 22313-14
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`
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`
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`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`I.
`II.
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`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`PATENT OWNER’S SECTION 325(D) ARGUMENT SHOULD BE
`REJECTED. ..................................................................................................... 1
`III. MACNEIL MISCHARACTERIZES YUNG. ................................................. 4
`IV. CONCLUSION ................................................................................................ 5
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`- i -
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`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`I.
`
`INTRODUCTION
`Out of the 150+ references cited during prosecution, MacNeil cherry picks
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`two and asserts that the Board should refuse to institute pursuant to Section 325(d).
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`But the two references MacNeil selected were not even applied during prosecution
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`of the ’186 patent and they both lack key features of the prior art cited by Yita in the
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`unpatentability ground. MacNeil also asserts that Yung (EX1006) does not involve
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`thermoforming, but this is incorrect as a technical matter and only provides a factual
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`dispute that should be resolved in favor of institution.
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`II.
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`Patent Owner’s Section 325(d) Argument Should be Rejected.
`In determining whether discretionary denial under Section 325(d) is
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`appropriate, the Board follows a “two-part framework: (1) whether the same or
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`substantially the same art previously was presented to the Office or whether the same
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`or substantially the same arguments previously were presented to the Office; and (2)
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`if either condition of first part of the framework is satisfied, whether the petitioner
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`has demonstrated that the Office erred in a manner material to the patentability of
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`challenged claims.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte
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`GmbH, IPR2019-01469, Paper 6 at 8 (P.T.A.B. Feb. 13, 2020). Under Advanced
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`Bionics, here the Board should not exercise its discretionary denial authority.
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`First, the art and arguments are not the same or substantially as previously
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`presented to the Office. MacNeil admits that both Wheaton (EX2015) and Oger
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`- 1 -
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`IPR2020-01139
`U.S. Patent No. 8,382,186
`(EX2016) were not considered during prosecution of the ’186 patent—they were
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`
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`only “considered by the Office in other, parent applications.” POPR, 32. Those
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`“other” applications also had a different examiner than the patent at issue here.
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`EX2017; EX2018. Moreover, MacNeil’s argument is based on the faulty premise
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`that if two references share several common features, they are necessarily
`
`cumulative. For example, MacNeil identifies five features of Wheaton that are
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`allegedly shared by Rabbe: (1) “a car floor tray for collecting snow, water, dirt and
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`the like … in the area generally occupied by a passenger’s feet,” (2) the tray is
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`“produced in a size to fit the foot well” in a vehicle, (3) the tray “includes a
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`substantially rectangular mat panel,” (4) the tray “press[es] outward against the sides
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`of the foot wells of the vehicle,” and (5) the tray provides a “waterproof cover for
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`any underlying carpeting” that collects water and may be “removed from the
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`automobile and dumped” for cleaning. POPR, 32-33. But these basic features are
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`shared not just by Wheaton and Rabbe, but by myriad references in this crowded
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`field. See, e.g., EX1003, ¶51 (discussing EX1012), 53-55, 58, 62 (discussing
`
`EX1013, EX1014, EX1015, and EX1017), 64-65 (discussing EX1019 and EX1020),
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`66, 69, 75 (discussing EX1021, EX1023, and EX1024), 92 (discussing EX1025 and
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`EX1026). Likewise, MacNeil claims Rabbe is cumulative of Oger (EX2016)
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`because Oger “discloses a ‘flexible floor covering for automobiles’ that is
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`‘waterproof’ and ‘can be readily lifted and removed from the vehicle to dump water
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`- 2 -
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`IPR2020-01139
`U.S. Patent No. 8,382,186
`collected therein[.]’” POPR, 33. But again, these basic elements are common to
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`
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`many prior art references in this field.
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`Rabbe includes relevant teachings that are not found in either Wheaton or
`
`Oger. For example, neither Wheaton nor Oger disclose a floor tray including “raised
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`edges … [that] conform to the topography of the interior and do not change the
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`aesthetics desired by the manufacturer” or “raised edges … of unequal heights
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`conforming to the interior contour of the vehicle.” EX1005, Abstract, 2:8-10.
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`Notably, Rabbe discloses a floor tray where “the sides…perfectly conform to the
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`contour of the vehicle interior at the feet of the driver.” Id., 1:1-6. These disclosures
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`from Rabbe relate to the claimed panels “substantially conforming to a floor of a
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`vehicle foot well” and “closely conforming to a … foot well wall.” EX1003, ¶89;
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`see also ¶123. Wheaton and Oger lack these important features so they are not
`
`“substantially the same” as Rabbe. Finally, as MacNeil acknowledges (POPR, 30),
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`Yita’s unpatentability ground is not based solely on Rabbe, but includes reliance on
`
`both Gruenwald and Yung. See, e.g., EX1003, ¶123. Thus, the Petitioner presents a
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`different argument to the Office.
`
`Second, MacNeil’s Section 325(d) argument also relies on the fact that Yung
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`(EX1006) was included in an IDS, which itself does not support denial under Section
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`325(d). POPR, 31; Pure Storage, Inc. v. Realtime Data LLC, IPR2018-00549, Paper
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`7, 11 (P.T.A.B. July 23, 2018. Instead, under part two of Advanced Bionics, and as
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`- 3 -
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`IPR2020-01139
`U.S. Patent No. 8,382,186
`the Petition points out (Pet., 25), the examiner clearly erred in applying Yung
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`
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`because Yung discloses the feature of claim 1 provided in the reasons for allowance,
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`which stated that “the prior art does not disclose or show an obvious combination of
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`hollow baffles as recited in claim 1.” EX1002, 117; EX1003, ¶123 (discussing
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`elements 1[h], 1[i], 1[k], and 1[l]).
`
`III. MacNeil Mischaracterizes Yung.
`MacNeil argues that a POSA would not have combined Yung with Gruenwald
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`or Rabbe because, according to MacNeil, Yung “describes the manufacture of a mat,
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`by compression molding, of a non-thermoformable laminated mat body.” POPR, 43
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`(citing EX2004, ¶99). For its interpretation of Yung, MacNeil relies on a single
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`word, “embossed,” in Yung’s claim 6. POPR, 20 (citing EX2004, ¶99 (“This
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`‘embossing’ is the same as compression molding.”)). MacNeil’s expert, Dr. Throne,
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`states that “[t]he express teaching of Yung is that a different technique than
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`thermoforming is used.” EX2004, ¶99 (emphasis added). Yung contains no such
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`teaching, express or otherwise. And the reference Dr. Throne cites does not support
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`his interpretation of Yung.
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`Dr. Throne relies on Strong (EX2011) to conclude that “[a] person of skill in
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`the art would understand that embossing is a compression molding process that
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`involves taking male and female halves of a mold and squeezing the plastic in
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`between it.” EX2004, ¶99 (citing EX2011, 615). But Strong does not equate the term
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`- 4 -
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`IPR2020-01139
`U.S. Patent No. 8,382,186
`“emboss” or “embossing” with compression molding. EX2011, 615. The page from
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`
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`Strong cited by Dr. Throne does not use “emboss” in any form. Id. Strong mentions
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`“embossed” twice and neither refers to compression molding. Id., 726, 732. Insofar
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`as compression molding is a technique used “almost exclusively for molding
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`thermoset materials,” Yung’s selection of polyethylene (a well know thermoplastic)
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`for the “middle plastic plate or layer (20),” suggests Yung’s floormat was not formed
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`by compression molding. EX2011, 615; EX1006, ¶11.
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`At most, MacNeil’s contrary interpretation of Yung creates a factual issue
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`which must be resolved in favor of institution. 37 C.F.R. § 42.108(c); Mylan
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`Pharmas. Inc. v. UCB Pharma GmbH, IPR2016-00510, Paper 12 at 17 (P.T.A.B.
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`July 20, 2016); Yamaha Golf Car Company v. Club Car, LLC, IPR2017-02144,
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`Paper 26 at 5 (P.T.A.B June 26, 2018).
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`IV. CONCLUSION
`MacNeil’s Section 325(d) argument lacks merit because it fails to identify
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`prior art or arguments substantially the same to those considered by the examiner;
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`and in any case, the examiner erred, as shown by Yung. Additionally, MacNeil’s
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`characterization of Yung is incorrect and only creates a factual issue for trial.
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`IPR2020-01139
`U.S. Patent No. 8,382,186
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`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
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`IPR2020-01139
`U.S. Patent No. 8,382,186
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that on November 20, 2020, a true and
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`correct copy of the foregoing PETITIONER’S REPLY TO PATENT
`
`OWNER’S PRELIMINARY RESPONSE was served electronically via e-mail
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`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,
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`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason A. Fitzsimmons/
`
`Jason A. Fitzsimmons (Reg. No. 65,367)
`Attorney for Petitioner
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`
`
`Date: November 20, 2020
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`
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