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 REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S 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 REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO STRIKE
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`YITA’S REPLY ARGUMENT REGARDING REASONABLE
`EXPECTATION OF SUCCESS IS A NEW THEORY THAT
`SHOULD BE STRICKEN .............................................................................. 2
`III. YITA’S NEW OBVIOUSNESS THEORIES ON MATERIALS
`SHOULD BE STRICKEN .............................................................................. 7
`A. Yita’s argument that Rabbe discloses thermoplastic elastomers
`should be stricken. ................................................................................. 7
`Yita’s reliance upon Yung’s three-layer structure and/or an
`individual foam layer should be stricken. ............................................. 8
`IV. PORTIONS OF YITA’S EXHIBITS 1041, 1042 AND 1044 THAT
`ARE HEAVILY INCORPORATED BY REFERENCE SHOULD BE
`STRICKEN ...................................................................................................... 9
`
`B.
`
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`CASES
`Adobe Inc. v. RAH Color Techs. LLC,
`IPR2019-00628, Paper 124 (P.T.A.B. Aug. 31, 2020) ....................................... 10
`Anacor Pharms., Inc. v. Iancu,
`889 F.3d 1372 (Fed. Cir. 2018) ............................................................................ 7
`Andrea Elecs. Corp, 949 F.3d 697, 706 (Fed. Cir. 2020) .......................................... 5
`Cisco Sys., Inc. v. C-Cation Techs.,
`LLC, IPR2014-00454, Paper 12, 9-10 (P.T.A.B. Aug. 29, 2014) ...................... 10
`Ericsson Inc. v. Intellectual Ventures I LLC,
`901 F.3d 1374 (Fed. Cir. 2018) ........................................................................ 4, 5
`Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc.,
`825 F.3d 1360 (Fed. Cir. 2016) ............................................................................ 6
`Great West Casualty Co. v. Intellectual Ventures II LLC,
`No. IPR2015-01706, 2020 WL 754868 (P.T.A.B. Feb. 14, 2020)....................... 5
`Haag-Streit AG v. Eidolon Optical, LLC,
`IPR2018-01311, Paper 31 (P.T.A.B. Sept. 5, 2019) ............................................. 6
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 2, 4, 8
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ...................................................................................... 1, 7
`Trane U.S. Inc. v. SEMCO, LLC,
`IPR2018-00514, Paper 36 (P.T.A.B. April 17, 2019) ........................................ 10
`Vimeo, Inc. v. Brit. Telecommunications Plc,
`No. IPR2019-00833, 2020 WL 4529709 (P.T.A.B. Aug. 5, 2020) ...................... 5
`
`
`
`ii
`
`
`
`STATUTES
`STATUTES
`35 U.S.C. § 312(a)(3) ................................................................................................. 2
`35 U.S.C. § 312(a)(3) cceecccssecsccssscsccssssecssuccsssuecssussesssssccsrsussersusecessuescersuseersnseecseseeten 2
`
`
`
`
`iii
`ill
`
`
`
`I.
`
`INTRODUCTION
`Petitioner Yita LLC (“Yita”) filed 55 new exhibits with its Reply (Paper 60
`
`(“Reply”)), including hundreds of pages of new expert testimony from Dr. Koch,
`
`Mr. Strachan, and Mr. Perreault that are improperly incorporated by reference in the
`
`Reply. Despite the prohibitions against petitioners raising new arguments and
`
`theories for the first time in a reply brief, Yita’s Reply improperly raises new
`
`arguments and theories concerning reasonable expectation of success, what Rabbe
`
`discloses to a person of ordinary skill in the art (“POSITA”), and how Yung is used
`
`in the proposed combination. Yita’s Opposition (Paper 74 (“Opposition”)) does not
`
`dispute that the vast majority of the new evidence filed with its Reply could have
`
`been filed with the Petition. Rather, the Opposition attempts to frame Yita’s
`
`improper new arguments as (1) following from Yita’s contentions in the Petition, (2)
`
`responsive to arguments raised in Patent Owner MacNeil IP LLC’s (“MacNeil”)
`
`Response, and (3) documenting the alleged state of the art. See generally
`
`Opposition. Yita’s attempts to explain away its new arguments are unavailing.
`
`The Board’s rules are clear: “Petitioner may not submit new evidence or
`
`argument in reply that it could have presented earlier . . . .” PTAB Consolidated
`
`Trial Practice Guide (Nov. 2019) (“CTPG”), 73 (emphasis added); see also SAS
`
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (explaining that “the petitioner’s
`
`petition . . . is supposed to guide the life of the litigation”) (emphasis added).
`
`
`
`1
`
`
`
`Indeed, the law requires a petition to identify “with particularity . . . the evidence
`
`that supports the grounds for the challenge to each claim[.]” 35 U.S.C. § 312(a)(3)
`
`(emphasis added).
`
`Permitting Yita to change its theories at this late stage of the proceeding would
`
`be prejudicial to MacNeil. “Unlike district court litigation—where parties have
`
`greater freedom to revise and develop their arguments over time and in response to
`
`newly discovered material—the expedited nature of IPRs bring with it an obligation
`
`for petitioners to make their case in their petition to institute.” Intelligent Bio-Sys.,
`
`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (affirming
`
`Board’s refusal of reply brief and expert declaration). Accordingly, the Board
`
`should strike the new theories and evidence advanced by Yita in the Reply and the
`
`respective declarations. See generally Paper 72 (“MTS”).
`
`II. Yita’s Reply Argument Regarding Reasonable Expectation of Success Is
`A New Theory That Should Be Stricken
`Yita’s attempts to tie its new Reply argument regarding expectation of success
`
`back to the argument Yita originally presented in the Petition lack credibility. See
`
`Opposition, 6-7. Yita argues that the Petition’s mere reference to “three-dimensional
`
`data modeling of the vehicle footwell” provides adequate support for its new
`
`theory—i.e., that a POSITA would have: used a portable FaroArm to measure a
`
`vehicle footwell; used computer-aided design software to create a 3D-representation
`
`of the desired product; and created a mold to manufacture the product. Id., 6. But
`
`
`
`2
`
`
`
`that is not the case. Plainly, the Petition’s statement concerning “three-dimensional
`
`data modeling of the vehicle foot well” referred only to the process of gathering
`
`three-dimensional data from the vehicle foot well. Petition, 67. Specifically, the
`
`sole paragraph in the Petition addressing this theory discusses only the process of
`
`gathering data points from the vehicle footwell and then “downloading the
`
`coordinates to a 3D milling machine.” Id.
`
`Thus, Yita’s suggestion that its new theory “expressly follow[s]” from Yita’s
`
`contentions raised in the Petition is false, as is Yita’s assertion that “the Petition
`
`never argued for a direct download of scan data to a machine to make the mold.”
`
`Opposition, 6-7. The Petition and Dr. Koch’s declaration (EX1003) never mention
`
`using computer-aided design software, and never suggest that a POSITA would have
`
`used such software to process data from a CMM scan to form an accurate 3D
`
`representation of the desired product so that an accurate mold for a closely
`
`conforming floor tray could be created as Yita contends in its Reply.1 Reply, 23-25.
`
`
`1 The ’186 Patent defines “close conformance” as a difference of about 1/8 of an
`
`inch or less with respect to 90 percent of the surface of the upper 1/3 of the area of
`
`the tray panels. See Paper 70, 14; EX1001, 7:61-8:1. MacNeil’s characterization of
`
`the claimed conformance as “within one-eighth of an inch” in the MTS inadvertently
`
`omitted the qualifier “about” in describing the claimed conformance. MTS, 4-5.
`
`
`
`3
`
`
`
`Yita asks the Board to believe that its mention of “three-dimensional data
`
`modeling of the vehicle foot well” and “creat[ing] a 3D computer model” in the
`
`Petition presented the intermediate design steps in Yita’s new expectation of success
`
`theory with sufficient particularity. Opposition, 7. But the Petition in fact merely
`
`alleged that “[m]any prior-art CMM machines were suitable to conduct a step-by-
`
`step touch and record process that created a 3D computer model of parts with
`
`complex shapes/curvatures, scanning the floor of an existing vehicle and
`
`downloading the coordinates to a 3D milling machine.” Petition, 67 (emphasis
`
`added). This statement, considered alone or in combination with the rest of the brief
`
`paragraph on this topic in the Petition, does not support the new theory in Yita’s
`
`Reply. To find otherwise would render the Board’s rules requiring that arguments
`
`be presented with particularity in the petition, and prohibiting advancing new
`
`theories in reply briefs, meaningless. See Intelligent Bio-Sys., Inc., 821 F.3d at 1369
`
`(“While the Board’s requirements are strict ones, they are requirements of which
`
`petitioners are aware when they seek to institute an IPR.”).
`
`Yita’s reliance on Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374
`
`(Fed. Cir. 2018), is misguided. Opposition, 6, 8. In that case, the petitioner “cite[d]
`
`no new evidence and merely expand[ed] on a previously argued rationale” that was
`
`“expressly contemplated” in the petition. Ericsson, 901 F.3d at 1380-81. Here, in
`
`contrast, Yita’s new theory directly conflicts with the theory set out in the Petition,
`
`
`
`4
`
`
`
`and Yita relies on 31 pages of improperly incorporated new expert testimony from
`
`Mr. Perreault and 15 new exhibits. MTS, 6. Moreover, the Federal Circuit
`
`acknowledged that Ericsson “was a special case” because the applicable claim
`
`construction standard changed after institution—which is not the case here—and
`
`explained that the holding in Ericsson “should not be viewed as changing or
`
`challenging the Board’s practice of limiting the scope of replies pursuant to its
`
`regulations.” Ericsson, 901 F.3d at 1380. Indeed, the Board has repeatedly
`
`distinguished Ericsson on that basis. See, e.g., Vimeo, Inc. v. Brit. Telecomms. Plc,
`
`No. IPR2019-00833, 2020 WL 4529709, at *23 (P.T.A.B. Aug. 5, 2020)
`
`(distinguishing Ericsson based on change in claim construction standard); Great W.
`
`Cas. Co. v. Intellectual Ventures II LLC, No. IPR2015-01706, 2020 WL 754868, at
`
`*12 (P.T.A.B. Feb. 14, 2020) (same).2
`
`Neither is Yita’s argument properly responsive to MacNeil’s arguments in its
`
`Response. Opposition, 7-8. Yita presents no evidence or argument in its Reply brief
`
`to support its original theory that a POSITA would have scanned the vehicle footwell
`
`
`2 Apple Inc. v. Andrea Elecs. Corp. is similarly distinguishable. 949 F.3d 697 (Fed.
`
`Cir. 2020). Unlike Yita, the petitioner’s reply in Apple “[did] not cite any new
`
`evidence” and merely “relie[d] on the same algorithm from the same prior art
`
`reference to support the same legal argument,” not present a new theory. Id. at 706.
`
`
`
`5
`
`
`
`and downloaded the coordinates to a 3D milling machine. Instead, Yita abandons
`
`its original theory in favor of a new theory that relies on the ’186 Patent as a roadmap.
`
`Thus, to the extent Yita’s argument is responsive to MacNeil’s arguments at all, it is
`
`only in the sense that Yita responds by presenting a new theory of expectation of
`
`success. But the Board’s rules prohibit raising new arguments in reply that are part
`
`of a petitioner’s prima facie case, which Yita has done here. See CTPG at 73.
`
`Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d
`
`1360, 1369 (Fed. Cir. 2016), which Yita relies on to suggest that the Board can
`
`properly consider Yita’s new expectation of success argument and new supporting
`
`evidence, is inapposite. Opposition, 8. In Genzyme, the patent owner did not allege
`
`that the petitioner changed its theory mid-proceeding; rather, the patent owner
`
`contended that the Board violated the Administrative Procedures Act (“APA”) by
`
`relying on two references in its final written decision that were not part of the
`
`instituted grounds or discussed in the Board’s institution decision. Genzyme, 825
`
`F.3d at 1365-66. The Federal Circuit found that the Board properly considered the
`
`references in that particular case. Id. at 1369. But Genzyme “does not stand for the
`
`proposition that the Board must consider the teachings of a reference identified for
`
`the first time in a petitioner’s reply, even if ostensibly used to show the state of the
`
`art at the time of the invention.” Haag-Streit AG v. Eidolon Optical, LLC, IPR2018-
`
`
`
`6
`
`
`
`01311, Paper 31 at 7 (P.T.A.B. Sept. 5, 2019).3 Accordingly, the Board should strike
`
`Section IV of Yita’s Reply and the supporting testimony of Mr. Perreault (¶¶31-77
`
`of EX1044) improperly incorporated by reference therein.
`
`A.
`
`III. Yita’s New Obviousness Theories on Materials Should Be Stricken
`Yita’s argument that Rabbe discloses thermoplastic elastomers
`should be stricken.
`Yita fails to rebut the fact that the Petition did not contend that Rabbe discloses
`
`thermoplastic elastomers. MTS, 8-9. The Petition claimed that “[b]ecause Rabbe is
`
`silent on the exact materials and process for making its floor tray, a POSA would
`
`have looked to common materials and processes known in the art[,]” including
`
`thermoplastic materials purportedly taught by Yung. Petition, 36. In its Reply,
`
`however, Yita shifts positions, arguing 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.
`
`
`3 Anacor Pharms., Inc. v. Iancu, relied upon by Yita, also concerns alleged APA
`
`violations by the Board. 889 F.3d 1372, 1379-80 (Fed. Cir. 2018). Unlike Anacor,
`
`Yita’s new evidence is not “a legitimate reply to evidence introduced by” MacNeil
`
`or used to document the knowledge of a skilled artisan, but rather to support Yita’s
`
`new theory of expectation of success that was not in the Petition. Id. at 1380-81.
`
`
`
`7
`
`
`
`This is not an innocuous shift in position—it changes Yita’s theory of
`
`obviousness. Yita previously relied-upon Yung as allegedly disclosing the claimed
`
`“thermoplastic material,” but now—in view of the many deficiencies of Yung—Yita
`
`argues that Rabbe alone discloses this limitation (despite Rabbe only disclosing
`
`thermoset semi-rigid, natural rubber and other materials having the same properties).
`
`This improper new argument does not expressly follow from the arguments
`
`presented in the Petition and, like Yita’s new reasonable expectation of success
`
`argument, is responsive to MacNeil’s arguments only in the sense that Yita responds
`
`by changing its theory of obviousness. 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 and should be stricken.
`
`B.
`
`Yita’s reliance upon Yung’s three-layer structure and/or an
`individual foam layer should be stricken.
`Yita asserts that “Patent Owner mischaracterizes the Petition,” (Opposition,
`
`11) but fails to rebut that, in combining Yung, the Petition did not rely upon any kind
`
`of foam or laminate as the material to be used to form Rabbe’s floor tray. MTS, 9-
`
`10. Having failed to identify these materials with particularity in the petition, Yita
`
`cannot shift positions and rely upon them now whether they respond to arguments
`
`made by MacNeil or not. See Intelligent Bio-Sys., Inc., 821 F.3d at 1370 (reply
`
`stricken where characterization of reference changed in response to arguments by
`
`patent owner).
`
`
`
`8
`
`
`
`IV. Portions of Yita’s Exhibits 1041, 1042 and 1044 that are Heavily
`Incorporated by Reference Should Be Stricken
`Yita asserts that “[t]he Reply provides thorough arguments that are supported
`
`by the cited evidence.” Opposition, 15. Even a cursory review of the Reply,
`
`however, reveals that Yita’s arguments are conclusory and dependent upon improper
`
`incorporation by reference of arguments presented in the cited expert declarations.
`
`Yita’s treatment of Dr. Koch’s baseless opinions regarding Yita’s and
`
`MacNeil’s translations of Rabbe are a prime example. As discussed in the MTS,
`
`despite being admittedly unqualified to do so, Dr. Koch opined on the Rabbe
`
`translations, going so far as to suggest that there is ample context to translate a term
`
`differently in a disputed sentence. MTS, 1, 12; EX1041, ¶¶40-47. Yita cites to
`
`paragraphs 40-47 of Dr. Koch’s declaration (EX1041)—testimony that spans 7
`
`pages—at the end of a conclusory statement that “any mistranslation was
`
`immaterial.” Reply, 6. Yita’s Reply does not discuss the substance of Dr. Koch’s
`
`testimony in the cited paragraphs, and the only other citation to this portion of Dr.
`
`Koch’s testimony in the Reply is part of a citation to more than 30 paragraphs of Dr.
`
`Koch’s declaration. Id., 3 (citing EX1041, ¶¶18-53). Accordingly, Yita’s argument
`
`that “any mistranslation was immaterial” and the portion of Dr. Koch’s declaration
`
`(¶¶40-47 of EX1041) incorporated by reference should be stricken. Reply, 6.
`
`Similarly, Yita’s conclusory statement
`
`that “even under MacNeil’s
`
`constructions, the claims would have been obvious” is supported solely by a citation
`
`
`
`9
`
`
`
`to paragraphs 13-16 of Dr. Koch’s declaration. Reply, 2 n.1. Yita’s Reply does not
`
`discuss the substance of Dr. Koch’s testimony in paragraphs 13-16 of his declaration,
`
`or MacNeil’s constructions, anywhere in the Reply. Thus, Yita’s argument that
`
`“even under MacNeil’s constructions, the claims would have been obvious” should
`
`be stricken along with paragraphs 13-16 of Dr. Koch’s declaration.
`
`These are merely examples of the numerous instances of improper
`
`incorporation by reference in Yita’s Reply. MTS, 12-15. Yita’s practice of citing
`
`declarations “to support conclusory statements that are not otherwise supported”
`
`amounts to improper incorporation by reference. Cisco Sys., Inc. v. C-Cation Techs.,
`
`LLC, IPR2014-00454, Paper 12 at 9 (P.T.A.B. Aug. 29, 2014). Contrary to Yita’s
`
`suggestion (Opposition, 1), the Board has repeatedly granted motions to strike based
`
`on improper incorporation by reference. See, e.g., Trane U.S. Inc. v. SEMCO, LLC,
`
`IPR2018-00514, Paper 36 at 9 (P.T.A.B. Apr. 17, 2019) (striking portion of response
`
`for including “nothing more than improper incorporation by reference”); Adobe Inc.
`
`v. RAH Color Techs. LLC, IPR2019-00628, Paper 125 at 28 (P.T.A.B. Aug. 31,
`
`2020) (striking declaration for including “attorney argument that ultimately is
`
`incorporated by reference in Petitioner’s papers”). The Board should do so here.
`
`Dated: October 6, 2021
`
`Respectfully submitted,
`By: /Chad C. Walters/
`Chad C. Walters (Reg. No. 48,022)
`Counsel for Patent Owner MacNeil IP
`LLC
`
`
`
`
`
`10
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the
`
`6th day of October 2021 a complete and entire copy of this PATENT OWNER’S
`
`REPLY TO PETITIONER’S OPPOSITION TO PATENT OWNER’S
`
`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; and
`
` PTAB@sternekessler.com.
`
`
`
`/Crystle Garbade/
`Crystle Garbade
`Senior Paralegal
`
`BAKER BOTTS L.L.P.
`
`Date: October 6, 2021
`
`
`
`
`
`11
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
