UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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
`
`Submitted Electronically via the Patent Review Processing System
`
`PATENT OWNER’S AUTHORIZED MOTION TO STRIKE
`
`
`
`
`____________
`
`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
`
`Submitted Electronically via the Patent Review Processing System
`
`PATENT OWNER’S AUTHORIZED MOTION TO STRIKE
`
`
`
`
`
`TABLE OF CONTENTS
`
`2.
`
`INTRODUCTION ........................................................................................... 1
`I.
`LEGAL STANDARD ..................................................................................... 3
`II.
`III. ARGUMENT ................................................................................................... 4
`A.
`Petitioner’s New Argument Regarding Reasonable Expectation
`of Success Should Be Stricken [All Asserted Grounds] ....................... 4
`Petitioner’s New Obviousness Theories on Materials Should Be
`Stricken [All Asserted Grounds] ........................................................... 7
`1.
`Yita’s argument that Rabbe discloses thermoplastic
`elastomers should be stricken ..................................................... 8
`Yita’s reliance upon Yung’s three-layer structure and/or
`an individual foam layer should be stricken. .............................. 9
`Portions of Petitioner’s Exhibits 1041, 1042 and 1043 that are
`Heavily Incorporated by Reference Should Be Stricken [All
`Asserted Grounds] ............................................................................... 10
`
`B.
`
`C.
`
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................... 3, 4, 7, 8, 10
`Cisco Systems, Inc. v. C-Cation Techs., LLC,
`Case IPR2014-00454 (PTAB Aug. 29, 2014) ...................................................... 4
`OTHER AUTHORITIES
`37 C.F.R. § 42.23(b) .................................................................................................. 3
`37 CFR § 42.6(a)(3) ............................................................................................. 3, 10
`77 Fed. Reg. at 48,617 ............................................................................................. 10
`
`
`
`
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`Pursuant to the Board’s September 14, 2021 Order (Paper 69), Patent Owner
`
`MacNeil IP LLC (“MacNeil”) hereby moves to strike the portions of Petitioner Yita
`
`LLC’s (“Yita”) reply brief (Paper 60 or “Reply”) and the accompanying expert
`
`declarations identified herein. Yita filed 55 new exhibits with its reply. EX1039-
`
`EX1093. Omitting the deposition transcripts of MacNeil’s declarants and exhibits
`
`introduced during those depositions, MacNeil conservatively estimates that 43 of
`
`Petitioner’s 55 new exhibits (78%) could have been filed with the Petition, but were
`
`not. Yita’s new evidence includes new declarations from three purported expert
`
`declarants: Dr. Koch (EX1041); Mr. Strachan (EX1042); and Mr. Perreault
`
`(EX1044).
`
`Tellingly, among Petitioner’s reply declarants, only Dr. Koch offered
`
`testimony in support of the Petition (EX1003). There is no new declaration from
`
`Rabbe’s French translator. Instead, Dr. Koch included ten paragraphs (30-31, 40-
`
`47) opining on the translations, going so far (Par. 46) as to give opinions such as
`
`there “is ample context
`
`to
`
`translate
`
`the
`
`term
`
`in
`
`the disputed sentence
`
`differently.” Yita improperly incorporates Dr. Koch’s French translation opinions
`
`by reference. But of course Dr. Koch also repeatedly admitted in his depositions
`
`that he did not speak or know French and was not a qualified French translator.
`
`EX2039, 17:2-11; 52:16-20; 53:15-17; EX2184, 7:18-22; 8:24-9:3. That Dr. Koch,
`
`
`
`1
`
`
`
`and not Yita’s translator, is the witness commenting on translation speaks volumes.
`
`Cumulatively, new declarations amount to 243 pages of new testimony, of which the
`
`reply improperly incorporates by reference 178 pages (over 36,000 words) of
`
`testimony. Petitioner’s reply brief, in contrast, is only 28 pages long (5,599 words).
`
`As detailed herein, Yita’s reply includes improper new arguments, rationales,
`
`and theories that should be stricken because they were not presented or developed
`
`in the Petition. Yita’s reply goes far beyond merely responding to the arguments
`
`raised in the Patent Owner Response and instead attempts to alter Yita’s prima facie
`
`invalidity case—which is something that both the Federal Circuit and the Board have
`
`made clear Yita cannot do. For the reasons discussed below, the Board should at
`
`least strike (a) Section IV of the Reply (pp. 23-25) and relatedly paragraphs 31-77
`
`of Mr. Perreault’s declaration (EX1044); (b) first paragraph of Section III.B.1 of the
`
`Reply (p. 14) and relatedly paragraphs 71-83 and 136-140 of Dr. Koch’s declaration
`
`(EX1041); and (c) the last paragraph on page 21 that extends to the top of page 22
`
`of the Reply and relatedly paragraphs 75-97 of Mr. Strachan’s declaration (EX1042)
`
`and paragraphs 112-115 of Dr. Koch’s declaration (EX1041). Petitioner and its
`
`experts advance completely new theories in these parts of the Reply and the
`
`respective declarations. In addition, the Board should also strike the improperly
`
`incorporated expert testimony identified in Section III(C) of this motion.
`
`
`
`2
`
`
`
`II. LEGAL STANDARD
`Pursuant to 37 C.F.R. § 42.23(b), a petitioner may not bolster its original case-
`
`in-chief with new theories and evidence in its reply brief. Intelligent Bio-Systems,
`
`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). A reply may
`
`not “proceed in a new direction with a new approach as compared to the positions
`
`taken in a prior filing.” Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”),
`
`74. For example, a “[p]etitioner may not submit new evidence or argument in a reply
`
`that it could have presented earlier, e.g. to make out a prima facie case of
`
`unpatentability.” Id. at 73. “Examples of indications that a new issue has been raised
`
`in a reply include new evidence necessary to make out a prima facie case for the
`
`patentability or unpatentability of an original or proposed substitute claim, such as
`
`newly raised rationale to combine the prior art references that was not expressed in
`
`the petition.” Id., 74. “It is also improper for a reply to present new evidence
`
`(including new expert testimony) that could have been presented in a prior filing,
`
`for example newly cited prior art references intended to ‘gap-fill’ by teaching a claim
`
`element that was not present in the prior art presented with the petition.” Id., 74-75
`
`(emphasis added).
`
`In addition, 37 CFR § 42.6(a)(3) prohibits argument that is incorporated “by
`
`reference from one document into another document.” Thus, “parties that
`
`incorporate expert testimony by reference in their petitions, motions, or replies
`
`
`
`3
`
`
`
`without providing explanation of such testimony risk having the testimony not
`
`considered by the Board.” CTPG, 74; see also Cisco Systems, Inc. v. C-Cation
`
`Techs., LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative).
`
`Importantly, “[t]he Board is not required to attempt to sort proper from
`
`improper portions of the reply or sur-reply.” CTPG, 74. Rather, the Federal Circuit
`
`has recognized that “[o]nce the Board identifies new issues presented for the first
`
`time in reply, neither this court nor the Board must parse the reply brief to determine
`
`which, if any, parts of that brief are responsive and which are improper.” Intelligent
`
`Bio-Sys., 821 F.3d at 1369.
`
`III. ARGUMENT
`A.
`Petitioner’s New Argument Regarding Reasonable Expectation of
`Success Should Be Stricken [All Asserted Grounds]
`Claim 1 requires that portions of the panels of the tray be within one-eighth
`
`of an inch of the respective foot well walls. EX1001, Claim 1. That unprecedented
`
`conformance is able to be achieved in part due to MacNeil’s patented method—
`
`described in the ’186 Patent—for digitally measuring a vehicle foot well, creating a
`
`footwell model using the digital data, modifying the footwell model to obtain a tray
`
`model, making a fitment part (“SLA”) from the tray model, adjusting the tray model
`
`from what was learned in the vehicle fitment, and only then machining a mold
`
`based upon that adjusted software tray model.
`
`
`
`4
`
`
`
`Relying on a single paragraph of Dr. Koch’s declaration (EX1003, ¶162) and
`
`the Hemmelgarn reference (EX1035), the Petition alleged that a POSITA could have
`
`used a stationary coordinate measure machine (CMM) to gather three-dimensional
`
`data from a vehicle foot well and simply download the “coordinates” to a
`
`3D-milling machine to create a mold that could be used to thermoform the claimed
`
`floor trays. Petition 67; EX1003, ¶175; EX2185, 85:5-19 (Hemmelgarn’s CMM
`
`machine is stationary). In the Response, MacNeil demonstrated that it was not within
`
`the skill set of a POSITA at the relevant time to manufacture a vehicle floor tray that
`
`conforms within one-eighth of an inch as claimed (because MacNeil had only just
`
`invented the technique), and it would not have been possible to simply download
`
`“coordinates” to a 3D milling machine to create a mold as Petitioner and Dr. Koch
`
`alleged. Response, 1-2, 48-53; EX2126, ¶¶49-63, 92; EX2043, ¶¶144-154, 156. In
`
`fact, Petitioner’s new declarant Mr. Perreault admitted that one can’t just feed the
`
`coordinates obtained from a CMM machine to a machine to make the mold.
`
`EX2185, 95:9-15, 96:19-97:4, 97:16-21.
`
`Yita’s reply presents a new theory concerning reasonable expectation of
`
`success. After the Response pointed out the fatal flaws in Petitioner’s reasonable
`
`expectation of success argument, Yita changed theories and, using the ’186 Patent’s
`
`description as a blueprint, now alleges that a POSITA would have used a portable
`
`CMM called a FaroArm to measure a vehicle footwell, would have used computer
`
`
`
`5
`
`
`
`software, such as Polyworks, to create a 3D representation of the desired product,
`
`and would have created a mold to manufacture the actual product. Reply, 23-25.
`
`To support its new theory, Petitioner filed the new 58-page declaration of
`
`Mr. Perreault. EX1042. In the just over two pages in which the reply addresses
`
`Yita’s new theory of reasonable expectation of success, Yita incorporates by
`
`reference at least paragraphs 31-77 of Mr. Perreault’s declaration, which amounts to
`
`31 pages of Mr. Perreault’s testimony (more than the entire length of Yita’s reply).
`
`Reply, 23-25 (citing EX1044, ¶¶31-77). Mr. Perreault’s declaration, in turn, relies
`
`upon 15 new exhibits ( Exhibits 1060, 1073-1074, 1076-1083, 1086, and 1089-1091,
`
`all of which could have been filed with the Petition. The fact that Yita’s new expert,
`
`Mr. Perreault, did not even consider Hemmelgarn (EX1035)—the reference Yita
`
`originally relied upon to support its expectation of success argument—in forming
`
`his opinions is indicative of Yita’s shift in theory. See EX1044, pp. iii-v.
`
`There is no reason that Yita’s new theory could not have been raised in the
`
`Petition. Yita has obviously been in possession of the ’186 Patent (the disclosure of
`
`which plainly serves as the road map for Yita’s new theory) since well before the
`
`Petition was filed. Yita attempts to explain away its failures by arguing that the steps
`
`described in the ’186 Patent—which serves as the basis for Yita’s new theory—were
`
`“so well-known that there was no reason for Dr. Koch to belabor the point.” Reply,
`
`24. Not only is this statement technically inaccurate as demonstrated in MacNeil’s
`
`
`
`6
`
`
`
`sur-reply and confirmed by Mr. Perreault’s own testimony, it cannot justify
`
`Petitioner’s change in theories at this late-stage of the proceeding.
`
`“It is of the utmost importance that petitioners in the IPR proceedings adhere
`
`to the requirement that the initial petition identify ‘with particularity’ the ‘evidence
`
`that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc.,
`
`821 F.3d at 1369. It was Petitioner’s burden to demonstrate, in the Petition, “both
`
`that a skilled artisan would have been motivated to combine the teachings of the
`
`prior art references to achieve the claimed invention, and that the skilled artisan
`
`would have had a reasonable expectation of success in doing so.” Intelligent Bio-
`
`Sys., 821 F.3d at 1367-68 (emphasis added). Yita failed to meet its burden, and its
`
`belated attempt to “proceed in a new direction” with a “newly raised rationale” and
`
`to “gap-fill” deficiencies in the Petition using new evidence that could have been
`
`presented in the Petition is plainly improper. CTPG, 74.
`
`Accordingly, Yita’s arguments in Section IV of the reply concerning
`
`reasonable expectation of success (Reply, 23-26) and paragraphs 31-77 of
`
`Mr. Perreault’s declaration (EX1044) should be stricken.
`
`B.
`
`Petitioner’s New Obviousness Theories on Materials Should Be
`Stricken [All Asserted Grounds]
`When explaining how the references would be combined, the Petition relied
`
`on the middle layer of Yung—which it contended was polyethylene—as the material
`
`to use for Rabbe’s floor tray. Petition at 65. The Petition stated that “Thus, a POSA
`
`
`
`7
`
`
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`would have sought to use a material like polyethylene, disclosed by Yung, for
`
`Rabbe’s floor tray.” The POR pointed out that (i) Yung’s three-layer structure is
`
`compression molded, not thermoformed; (ii) Yung discloses polyethylene foam—a
`
`material unsuited for making a floor tray with close conformance—and does not
`
`disclose polyethylene; and (iii) Yung does not disclose polyethylene foam as a
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`standalone material, but discloses it as one layer of a three layer laminate, including
`
`fabric and a netting material, that would be unsuitable for thermoforming. Paper 28
`
`(“Response”), 37-43 and 55-62.
`
`Petitioner’s Reply shifts from polyethylene and now seeks to rely upon other
`
`materials. “It is of the utmost importance that petitioners in the IPR proceedings
`
`adhere to the requirement that the initial petition identify ‘with particularity’ the
`
`‘evidence that supports the grounds for the challenge to each claim.’” Intelligent
`
`Bio-Sys., Inc., 821 F.3d at 1369. None of the materials Yita now seeks to rely upon
`
`was identified with particularity in the Petition.
`
`1.
`
`that Rabbe discloses
`Yita’s argument
`elastomers should be stricken
`The Petition alleged that Rabbe’s disclosure that its tray is “produced from
`
`thermoplastic
`
`semi-rigid rubber or another material having the same properties” would have
`
`“disclose[d] or suggest[ed] a polymeric material” and would have “led a POSA to
`
`Yung,” which the Petition alleged teaches vehicle floor trays manufactured with
`
`
`
`8
`
`
`
`rigid or semi-rigid thermoplastic materials. Petition, 36, 61. The Petition did not
`
`contend that Rabbe discloses thermoplastic elastomers.
`
`Yita now contends that “a POSA would have considered Rabbe’s teachings
`
`to include thermoplastic elastomers” and “that thermoplastic materials would qualify
`
`as Rabbe’s other ‘material having the same properties.’” Reply, 13. In making these
`
`two conclusory assertions, the reply improperly incorporates by reference
`
`paragraphs 71-83 and 136-140 of Dr. Koch’s declaration (EX1041). Reply, 13.
`
`Thus, Yita’s reply presents an improper new theory of how a POSITA would
`
`have interpreted Rabbe that was not presented and developed in the Petition. Hence,
`
`there are two grounds to strike this argument and evidence—(1) it is a shift of
`
`position from the petition, and (2) it improperly incorporates argument by reference.
`
`As such, the argument in the first paragraph of Section III.B.1 (Reply, 14) and
`
`paragraphs 71-83 and 136-140 of Dr. Koch’s testimony should be stricken.
`
`2.
`
`Yita’s reliance upon Yung’s three-layer structure and/or an
`individual foam layer should be stricken.
`As noted above, the Petition relied upon polyethylene as the material that one
`
`would have used to make Rabbe’s tray. Now that MacNeil has pointed out the
`
`problems with that theory, Yita tries to shift positions by contending that
`
`thermoforming Yung’s tri-layer structure would have been an “option” and that
`
`“adjust[ing]” polyethylene or polyethylene foam could address any “problems” with
`
`Yung’s specific material. Reply at 21. This argument improperly incorporates 20
`
`
`
`9
`
`
`
`pages of Mr. Strachan’s declaration. Reply at 21, Ex. 1042, ¶¶ 75-97. It also
`
`incorporates by reference paragraphs 112-115 of Dr. Koch’s declaration. Thus,
`
`there are two grounds to strike this argument and evidence—(1) it is a shift of
`
`position from the petition, and (2) it improperly incorporates argument by reference.
`
`In combining the reference, the Petition did not rely upon any kind of foam or
`
`laminate as the material to be used to form Rabbe’s floor tray. Having not identified
`
`these materials with particularity in the petition, Yita cannot now shift positions and
`
`rely upon them now whether they respond to arguments made by MacNeil or not.
`
`When the patent owner points out flaws in the petition, that does not give a petitioner
`
`license to change is theory. See Intelligent Bio-Sys., Inc., 821 F.3d at 1370 (reply
`
`stricken where characterization of reference changed in response to arguments by
`
`patent owner). The last paragraph on page 21 of the Reply should be stricken along
`
`with paragraphs 75-97 of Ex. 1042 (Strachan Declaration) and paragraphs 112-115
`
`of Ex. 1041 (Koch Declaration).
`
`C.
`
`Portions of Petitioner’s Exhibits 1041, 1042 and 1043 that are
`Heavily Incorporated by Reference Should Be Stricken [All
`Asserted Grounds]
`It is improper to incorporate by reference arguments from one document into
`
`another document. 37 C.F.R. § 42.6(a)(3). The improper incorporations in the Reply
`
`not only force the Patent Owner and the Board to “play archeologist with the record,”
`
`77 Fed. Reg. at 48,617, they literally add about 200 pages of expert testimony to a
`
`
`
`10
`
`
`
`28-page Reply. Yet, that is what Petitioner does over and over again, as shown in
`
`the table below. While some summary of expert testimony occurs, Petitioner has
`
`crossed the line in this proceeding. A good example was provided above where
`
`Petitioner incorporates by reference 20 pages of Mr. Strachan’s declaration at the
`
`end of a single sentence at the end of page 21 of the Reply.
`
`As another example, to support its conclusory assertion that a POSA would
`
`have known how to use existing tools to achieve an accurate mold that produced a
`
`closely conforming tray, Petitioner simply incorporates by reference 9 pages of
`
`Mr. Perreault’s declaration. Reply, 24 EX1044, ¶¶ 46-56. It is not possible in the
`
`page limit to address each violation in the table below one by one. While brief
`
`summaries of expert analysis are fine in PTAB briefing, Yita has crossed the line
`
`with some of its Reply brief. With multiple violations, Yita incorporated by
`
`reference 114 pages of Dr. Koch’s declaration, 71 pages of Mr. Strachan’s
`
`declaration, and 58 pages of Mr. Pereault’s declaration in its Reply. MacNeil moves
`
`to strike the paragraphs of the expert declaration improperly incorporated by
`
`reference as set forth in the table below along with the cited corresponding
`
`arguments in the reply.
`
`
`
`11
`
`
`
`Reply
`Page
`No.
`
`p. 2
`(FN1)
`
`p. 6
`
`p. 6
`
`p. 7
`
`p. 11
`
`p. 13
`
`p. 13
`
`p. 14
`
`p. 14
`
`Incorporation by Reference
`
`Incorporates by reference ¶¶ 13-16 of EX1041 for proposition that
`“closely conforming” does not mean within about one-eighth of an
`inch conformance
`
`Incorporating by reference ¶¶26, 40-47 of EX1041 for proposition
`that any mistranslation of Rabbe was immaterial
`
`Incorporating by reference ¶¶ 27, 35-39 of EX1041 for proposition
`that raised edges 2 refer to Rabbe’s side panels
`
`Incorporating by reference ¶¶ 48-53 EX1041 for proposition that
`additional prior art confirms that conforming to a footwell’s contours
`was well known
`
`Incorporating by reference ¶¶ 122-123 and 146-149 of EX1041 for
`proposition that Yung’s teaching of foam particles does not teach
`away from thermoforming a custom-fit floor tray.
`
`Incorporating by reference ¶¶ 71-79, 139-140 of EX1041 for
`proposition that a POSA would have considered Rabbe’s teachings to
`include thermoplastic elastomers
`
`Incorporating by reference ¶¶ 49-54 of EX1042 for proposition that
`there are many thermoplastics with the same semi-rigid, flexible, and
`waterproof properties as semi-rigid rubber
`
`Incorporating by reference ¶¶ 71-76, 83, 122-128, and 134-135 of
`EX1041 and ¶¶ 49-57 of EX1042 for proposition that Rabbe’s
`disclosure would have led a POSA to thermoformable thermoplastic
`materials
`
`Incorporating by reference ¶¶ 63-70 of EX1041 and ¶¶ 47-57 of
`EX1042 for proposition that Rabbe is not limited to thermoset
`stitched or glued from separate pieces and thermoforming floor trays
`was within the basic knowledge of a POSA
`
`
`
`12
`
`
`
`Reply
`Page
`No.
`
`p. 15
`
`Incorporation by Reference
`
`Incorporating by reference ¶¶41-43 and 66-69 of EX1042 and ¶¶ 5-8
`and 84-85 of EX1041 for proposition that thermoformers knew
`techniques to account for undercuts
`
`p. 15, 16 Incorporating by reference ¶¶ 88, 154-155 of EX1041 and ¶¶ 58-61 of
`EX1042 for proposition that Rabbe’s drawings not production level
`plans
`
`p. 16
`
`p. 18
`
`p. 18
`
`p. 21
`
`p. 21
`
`p. 22
`
`Incorporating by reference ¶¶ 92-95 of EX1041 for proposition that
`Yung is not limited to polyethylene foam
`
`Incorporating by reference ¶¶ 94-102 and 142 of EX1041 and ¶¶ 84-
`87 of EX1042 for proposition that further evidence corroborates
`foams were thermoformed
`
`Incorporating by reference ¶¶ 73-83, 91-97 of EX1042 for proposition
`that it was common to thermoform laminate structures even when
`those materials did not have the same melting temperature
`
`Incorporating by reference ¶¶ 141-145 of EX1041 for proposition that
`polyethylene foam would have the elasticity to retain its shape after
`being removed from the vehicle
`
`Incorporating by reference ¶¶ 75-97 of EX1042 for proposition that
`thermoforming Yung’s tri-layer mat was an option that a POSA
`would have been aware of and moots MacNeil’s arguments about
`using polyethylene by itself
`
`Incorporating by reference ¶¶ 129-133 of EX1041 and ¶¶ 69-72 of
`EX1042 for proposition that a POSA would not have viewed the
`thermoforming process as costly
`
`p. 23
`
`Incorporating by reference ¶¶ 158-162 of EX1041 for proposition that
`POSA could have obtained an accurate scan and made a mold
`
`
`
`13
`
`
`
`Reply
`Page
`No.
`
`p. 23
`
`p. 23
`
`p. 24
`
`p. 24
`
`p. 24
`
`p. 24
`
`p. 24
`
`p. 24
`
`p. 24
`
`p. 25
`
`Incorporation by Reference
`
`Incorporating by reference ¶¶ 34-56 of EX1044 for proposition that
`tools used in the ‘186 Patent were commercial products available to
`everyone
`
`Incorporating by reference ¶¶ 31-33 and 57-63 of EX1044 for
`proposition that POSA would have known how to use existing tools
`to achieve an accurate mold that produced a closely conforming tray
`
`Incorporating by reference ¶¶ 36-45, 67-69 of EX1044 for proposition
`that POSA knew of FaroArm
`
`Incorporating by reference ¶¶ 36-45 of EX1044 for proposition that
`POSA would have been aware of portable CMMs
`
`Incorporating by reference ¶¶ 46-56 of EX1044 and ¶¶ 159-160 of
`EX1041 for proposition that CAD software was also well known for
`creating accurate molds from CMM data
`
`Incorporating by reference ¶¶ 46-56 of EX1044 for proposition that
`other software (e.g., Polyworks) available by 2004 used the data to
`form a mold
`
`Incorporating by reference ¶¶ 64-77 for proposition that process used
`well-known steps including those discussed by Mr. Granger
`
`Incorporating by reference ¶¶ 35, 46-56, 65, 70-77 of EX1044 for
`proposition that after finalizing 3D representation in CAD, a mold
`was created to manufacture the actual product
`
`Incorporating by reference ¶¶ 64-77, 57-63 of EX1044 for proposition
`that steps described in Mr. Granger’s declaration were routine steps
`for using CAD to develop a mold
`
`Incorporating by reference ¶¶ 70-77 of EX1044 for proposition that
`POSA would have routinely processed data from a scan to form an
`accurate 3D representation so that an accurate mold could be created
`
`
`
`14
`
`
`
`Reply
`Page
`No.
`
`Incorporation by Reference
`
`p. 25
`
`Incorporating by reference ¶¶ 163-167 of EX1041 for proposition that
`claims do not require 1/16 inch tolerance
`
`For these reasons, the Board should strike the Reply in whole or in part and
`
`any evidence in support of arguments that are either new or incorporated by
`
`reference.
`
`Dated: September 22, 2021
`
`
`
`
`
`Respectfully submitted,
`
`
`By: /David G. Wille/
`David G. Wille
`Reg. No. 38,363
`Lead Counsel for Patent Owner MacNeil
`IP LLC
`
`
`
`15
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the
`
`22nd day of September 2021 a complete and entire copy of this PATENT
`
`OWNER’S AUTHORIZED MOTION TO STRIKE was served on Petitioner via
`
`email at the following correspondence addresses:
`
` walters@LoweGrahamJones.com;
`
` tpowers-PTAB@sternekessler.com;
`
` jfitzsimmons-PTAB@sternekessler.com;
`
` smerrill-PTAB@sternekessler.com;
`
` PTAB@sternekessler.com.
`
`
`Date: September 22, 2021
`
`
`
`/Tracy Engberg/
`Tracy Engberg
`Senior Paralegal
`
`
`BAKER BOTTS L.L.P.
`
`
`
`16
`
`
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