UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case No. IPR2020-01139
`Patent No. 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 SUR-REPLY IN RESPONSE TO PETITIONER’S
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case No. IPR2020-01139
`Patent No. 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 SUR-REPLY IN RESPONSE TO PETITIONER’S
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`Page
`I. THE BOARD SHOULD DENY INSTITUTION UNDER § 325(d) ................. 1
`A. Rabbe is cumulative of at least Wheaton and Oger. ..................................... 1
`B. Yung is cumulative of Yang ’667 and Yang ’342 ........................................ 2
`C. Wheaton, Oger, Yang ’667, and Yang ’342 were considered. ..................... 3
`II. YUNG DOES NOT TEACH THERMOFORMING ....................................... 4
`
`i
`
`
`
`I.
`
`THE BOARD SHOULD DENY INSTITUTION UNDER § 325(d)
`A.
`Rabbe is cumulative of at least Wheaton and Oger.
`There is nothing new in Rabbe (EX1005) that was not disclosed in Wheaton
`
`(EX2015) and Oger (EX2016). Petitioner’s Reply merely shows that Rabbe is also
`
`cumulative of many other references considered during prosecution. See Paper 15
`
`(“Reply”), 2. Petitioner does not dispute that Wheaton and Oger disclosed the same
`
`“basic features” as those in Rabbe. Id. In fact, Petitioner concedes that the features
`
`of Rabbe’s floor tray relied upon in the Petition are “shared not just by Wheaton and
`
`Rabbe, but by myriad references in this crowded field,” including at least six other
`
`references considered by the Examiner during prosecution (Exs. 1012, 1019, 1020,
`
`1023, 1025, and 1026). See Reply, 2; EX1001, Field (56) References Cited.
`
`In deciding whether to deny institution under § 325(d), the Board considers
`
`“the similarities and material differences between the asserted art and the prior art
`
`involved during examination.” Becton, Dickinson and Co. v. B. Braun Melsungen
`
`AG, IPR2017-01586, Paper 8 at 17 (P.T.A.B. Dec. 15, 2017). Neither the Petition
`
`nor the Reply identifies any material difference between Rabbe and the references
`
`considered in prosecution. Petitioner alleges that Rabbe’s “raised edges . . . [that]
`
`conform to the topography of the interior and do not change the aesthetics,” “raised
`
`edges . . . of unequal heights conforming to the interior contour of the vehicle,” and
`
`sides that “perfectly conform to the contour of the vehicle interior at the feet of the
`
`-1-
`
`
`
`driver” distinguish it from Wheaton and Oger. Reply, 3. But these conformance
`
`features are not unique to Rabbe and were disclosed in Wheaton and Oger.
`
`Like Rabbe, Wheaton discloses a floor tray “produced in a size to fit the foot
`
`well[.]” EX2015, 2:1-3. The sides “press outward against the sides of the foot wells
`
`of the vehicle” and the tray is “shaped to conform to the side and rear margins of
`
`a car floor area occupied by a passenger’s feet.” Id., 3:18-25, 3:46-49. Similarly,
`
`Oger describes that “[a]t the front edges of the side parts 6 and 7 of the floor
`
`covering, higher borders or walls 12 and 14 are provided which slope forwardly and
`
`upwardly to lie on the foot rests of the car.” EX2016, 2:10-13. Thus, Wheaton and
`
`Oger, like Rabbe, disclosed sides or raised edges that conform to the vehicle interior.
`
`Rabbe’s disclosure that its sides “perfectly conform” to the vehicle interior
`
`does not render it materially different. As discussed, Wheaton and Oger disclosed
`
`substantially similar conformance features. Additionally, the Examiner considered
`
`many references describing floor trays that “fit your vehicle like a glove” (EX2019,
`
`1-2), “fit perfectly” (EX2020, 2), or are “custom molded for exact fit” (EX2021, 1)
`
`and still allowed the claims. Paper 11 (“POPR”), 34-36. Tellingly, Petitioner does
`
`not address these references, let alone explain why Rabbe’s disclosure is not
`
`substantially similar.
`
`Yung is cumulative of Yang ’667 and Yang ’342
`B.
`Petitioner does not dispute that Yung (EX1006) is substantially the same as
`
`-2-
`
`
`
`Yang ’667 (EX2012) and Yang ’342 (EX2013), both of which were considered
`
`during prosecution. Rather, Petitioner jumps to part two of the Advanced Bionics
`
`test in a belated, superficial attempt to show that the Examiner erred. But Advanced
`
`Bionics makes clear that “[i]f reasonable minds can disagree regarding the purported
`
`treatment of the art or arguments, it cannot be said that the Office erred in a manner
`
`material to patentability.” Advanced Bionics, LLC v. Med-El Elektromedizinische
`
`Gerate GMBH, IPR2019-01469, Paper 6 at 9 (P.T.A.B. Feb. 13, 2020). Petitioner’s
`
`single, conclusory assertion that “the examiner clearly erred in applying Yung”
`
`because Yung allegedly discloses hollow baffles (Reply, 4) is insufficient to
`
`demonstrate that the Office erred in a manner material to the patentability of the
`
`challenged claims. Even if Yung disclosed the claimed arrangement of baffles,
`
`Petitioner fails to address the Examiner’s conclusion that the art does not show “an
`
`obvious combination of hollow baffles as recited in claim 1.” EX1002, 117.
`
`C. Wheaton, Oger, Yang ’667, and Yang ’342 were considered.
`Under Advanced Bionics, previously presented art includes “art provided to
`
`the Office by an applicant, such as on an Information Disclosure Statement (IDS)[.]”
`
`Advanced Bionics, IPR2019-01469, Paper 6 at 7-8. Petitioner wrongly suggests that
`
`Patent Owner admitted Wheaton and Oger were not considered during prosecution.
`
`See Reply, 1-2. But that is incorrect. Wheaton, Oger, Yang ’667, and Yang ’342
`
`were cited in an IDS, along with Office Actions applying Wheaton and Oger to
`
`-3-
`
`
`
`similar claims in other applications and references describing floor trays conforming
`
`to vehicle interiors. See EX1002, 125, 126, 137, 139, 142, 144. The Examiner’s
`
`initials (Id.) and search history (Id., 149-150) evidences that the Examiner
`
`considered these references.1 See, e.g., R.J. Reynolds Vapor Co. v. Fontem Holdings
`
`1 B.V., IPR2018-00626, Paper 7 at 21 (P.T.A.B. Sep. 27, 2018) (stating that an
`
`Examiner’s initials on an IDS form provides “a clear record in the application to
`
`indicate which documents have been considered by the examiner”); Molins PLC v.
`
`Textron, Inc., 48 F.3d 1172, 1184 (Fed. Cir. 1995) (assuming that the Examiner
`
`considered the references based on initials on an IDS absent proof to the contrary).
`
`Gruenwald, which the Petition does not rely on for any specific element of the
`
`claimed floor tray, does not transform Ground 1 into a materially different argument.
`
`II.
`
`YUNG DOES NOT TEACH THERMOFORMING
`Petitioner’s argument that Patent Owner and Dr. Throne mischaracterized
`
`Yung lacks merit. Reply, 4. Yung teaches that the layers of its mat (polyester fabric,
`
`“Polyethylene (PE) or Polyethylene—Vinyl Acetate (EVA) foam,” and a net lining)
`
`1 Pure Storage, Inc. v. Realtime Data LLC, IPR2018-00549, Paper 7, 11 (P.T.A.B.
`
`July 23, 2018) does not state that citation in an IDS cannot support denial under
`
`section 325(d) and is distinguishable because the patentee in that case cited “over
`
`four thousand references” as compared to only “150+” here. Id. at 11; Reply, 1, 3.
`
`-4-
`
`
`
`are “bound” together and “embossed” to form grooves. EX1006, ¶¶10-11, 15, Claim
`
`6. Petitioner does not allege that embossing teaches thermoforming, and Dr. Throne
`
`testified that embossing is a type of compression molding that a POSITA would
`
`expect to be used for Yung’s three-layer structure (which includes materials not
`
`suitable for thermoforming). EX2004, ¶99. Thus, Patent Owner’s characterization
`
`of Yung as teaching “a different technique than thermoforming” is uncontroverted
`
`and not a mischaracterization. EX2004, ¶99. Strong’s description that compression
`
`molding is used “almost exclusively for molding thermosets” is not evidence that
`
`the technique cannot be used with the materials described in Yung. EX2011, 615.
`
`Moreover, Petitioner’s discontent with Patent Owner’s characterization of
`
`Yung does not create a factual issue that favors institution. See Reply, 5. Patent
`
`Owner demonstrated that Petitioner failed to show a motivation to combine Rabbe
`
`and Yung because the Petition failed to explain why Rabbe’s disclosure that its floor
`
`tray is produced from semi-rigid rubber or another material having the same
`
`properties would have prompted a POSITA to (1) use materials having different
`
`properties (described in Yung) or (2) use a process (i.e., thermoforming) that is
`
`incompatible with the materials explicitly described in Rabbe. POPR, 43. Even if
`
`the Board assumes, for purposes of deciding institution, that embossing is not a type
`
`of compression molding, the Board still can and should deny institution based on
`
`Petitioner’s failure to show a motivation to combine the relied-upon references.
`
`-5-
`
`
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`Attorneys for Patent Owner
`
`/David G. Wille/
`David G. Wille
`Reg. No. 38,363
`
`Date: November 30, 2020
`
`-6-
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the
`
`30th day of November, 2020, a complete and entire copy of this PATENT
`
`OWNER’S SUR-REPLY IN RESPONSE TO PETITIONER’S REPLY TO
`
`PATENT OWNER’S PRELIMINARY RESPONSE 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.
`
`November 30, 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
`
`-7-
`
`
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