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Inter Partes Review of U.S. Pat. 9,046,820

Docket IPR2016-01358, Patent Trial and Appeal Board (July 8, 2016)
David Ruschke, Jameson Lee, Jennifer Bisk, Michael Zecher, Scott Boalick, Sheila McShane, Thomas Giannetti, presiding
09/28/2016
09/28/2016 09-28-2016-Patent_Owner Patent Owner Exhibit List None: Patent Owner's 2nd Exhibit List (PUBLIC), Patent Owner Notice None: Patent Owner's Sur-Reply (PUBL...
09/21/2016
09/21/2016 09-21-2016-Petitioner Petitioner Exhibit List None: Petitioner's Listing of Exhibits for IPR2016-01358 (PUBLIC), Petitioner Reply None: Petitioner's Reply To Patent O...
08/29/2016
... 08-29-2016-Patent_Owner Patent Owner Preliminary Response None: Patent Owner's Preliminary Response (PUBLIC), Patent Owner Notice None: Patent Owner's...
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15 Decision Denying Request for Rehearing Petitioner: Decision Denying Petitioners Requests for Rehearing

Document IPR2016-01358, No. 15 Decision Denying Request for Rehearing Petitioner - Decision Denying Petitioners Requests for Rehearing (P.T.A.B. Sep. 6, 2017)
Specifically, Petitioner contends that: (1) the factor of the limited one-year time period for issuing a final written decision should be afforded additional, if not dispositive, weight in light of the legislative history; (2) we abused our discretion by requiring that the prior art “should have been known” at the time the initial petitions were filed; and (3) we erred in considering potential prejudice to Patent Owner because the NVIDIA decision does not list such a factor.
Additionally, although the legislative history reflects recognition of a desire for a “safety valve” to alleviate backlog, it does not limit the exercise of discretion under 35 U.S.C. § 314(a) to only circumstances in which there is a high volume of pending proceedings.
The relevant issue under factor 2 is not, as Petitioner has framed it, whether the prior art references relied on in the follow-on petitions constitute printed publications, but whether they could have been found with reasonable diligence.
We determine that the “surprising” argument is not entitled to consideration, because it was not included in the Replies, which we authorized in order to allow Petitioner to address Patent Owner’s Preliminary Responses that raised the issues of impropriety of follow-on petitions and application of discretion under § 314(a).
For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion, or that we misapprehended or overlooked any issue, in denying institution of inter partes reviews in Cases IPR2016-01357, IPR2016-01358, IPR2016-01359, IPR2016-01360, and IPR2016-01361.
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7 Order Conduct of Proceeding: Order re Petitioners Request for Leave to File Reply

Document IPR2016-01358, No. 7 Order Conduct of Proceeding - Order re Petitioners Request for Leave to File Reply (P.T.A.B. Sep. 14, 2016)
On September 8, 2016, in an email communication, Petitioner requested leave under 37 C.F.R. § 108(c) to file a five-page reply to the Patent Owner’s Preliminary Response in each of these cases.
In that communication, Petitioner referred to certain portions of the Preliminary Response that requested denial of the Petition under 35 U.S.C. §§ 314(a), 324(a), and 325(d).
After due consideration of the matter, and the Board’s recognition of the case-dispositive nature of the issues, we authorize the filing of a Reply to the Preliminary Response, limited to five pages, and strictly limited in scope to the issues identified in the September 8, 2016 communication.
A five- page Sur-Reply from Patent Owner is also authorized, and is limited to the issues addressed in Petitioner’s Reply to the Preliminary Response.
FURTHER ORDERED that the Reply will be limited to five pages, and shall only address the argument raised in the Preliminary Response that the Petition should be denied under 35 U.S.C. §§ 314(a), 324(a), and 325(d).
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13 Rehearing Request in re Petition Institution Decision Denied: Petitioners Request For Rehearing Pursuant To 37 CFR 4271d, And For An Expanded Panel

Document IPR2016-01358, No. 13 Rehearing Request in re Petition Institution Decision Denied - Petitioners Request For Rehearing Pursuant To 37 CFR 4271d, And For An Expanded Panel (P.T.A.B. Dec...
Petitioner therefore requests that an NY 836011v.1 expanded panel of the Board rehear and reverse the Board’s Decision (Paper 12) and address the substantive merits of the Third Petition and, consequently, institute an inter partes review.
On the other hand, the preamble of the challenged claims of the ‘820 patent recite “[a] toner supply container” only and make no mention of a copier or the container being detachably mounted to the copier’s hollow cylindrical driving member.
Here, there was no finding by the Board that the subject Third Petition had to be denied regardless of its substantive merits in order to alleviate an existing backlog of instituted IPRs threatening the Board’s ability to meet the one-year deadline of §316(a)(11).
Nevertheless, the Board determined Nvidia factor (4) to be adverse to Petitioner: As to Koide, General Plastic does not assert, or even suggest, that the reference could not have been found by an earlier NY 836011v.1 reasonable prior art search.
Thus, these cases provide no support for the Board to completely discount the unrebutted evidence of record here that Petitioner General Plastic lacked actual knowledge of Koide until May 4, 2016.
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1012 Exhibit: Declaration of Hui Wen Hsieh in Support of Petitioners Reply

Document IPR2016-01358, No. 1012-11 Exhibit - Declaration of Hui Wen Hsieh in Support of Petitioners Reply (P.T.A.B. Sep. 21, 2016)
This declaration is made in support of Petitioner General Plastic's Reply to Patent Owner's Preliminary Response to be filed in each of lPR20l 6-01357 through IPR2016—0l361.
Except as otherwise indicated below, the facts set forth below are based on my personal knowledge and if called and sworn as a witness, I could and would competently testify thereto.
On or about April 11, 2016, I engaged and instructed Direction International Patent Trademark & Law Office to conduct a search to uncover prior art references that are potentially material to patentability of U.S. Pat. Nos. 9,046,820 and 8,909,094.
On or about April 11, 2016, I also started my own search to uncover prior art references that are potentially material to patentability of U.S. Pat. Nos. 9,046,820 and 8,909,094.
I declare under penalty 0fpcr_§ur§.- under the laws ofthe United States that the foregoirmg is true and correct.
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2108 Exhibit: Exhibit 2108

Document IPR2016-01358, No. 2108-10 Exhibit - Exhibit 2108 (P.T.A.B. Aug. 29, 2016)
I do not disagree with Dr. Sturges’s findings that none of Yoshiki ‘079, Kawamura ‘208, Kato ‘795, Ui ‘574, Matsushita ‘407, Matsuoka ‘806, Russell ‘163, Hilton ‘966, nor Sundberg ‘990 alone anticipates the entirety of the asserted ...
Nonetheless, I treat Dr. Sturges’s arguments as relevant to obviousness, and address them in my analysis of why the ‘012 Patent is obvious, below.
He only dismisses the invalidity contention for this claim element by reiterating over and over again that it cannot be allowed because none of the combinations of prior art provide evidence of invalidity.
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2104 Exhibit: Exhibit 2104

Document IPR2016-01358, No. 2104-6 Exhibit - Exhibit 2104 (P.T.A.B. Aug. 29, 2016)

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