Case No. IPR2016-000950
`Patent No. 8,166,739
`
`Filed on behalf of Oxbo International Corporation
`
`By: Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel:
`(612) 371-5383
`Fax: (612) 332-9081
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`H&S MANUFACTURING COMPANY, INC.
`
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION
`
`Patent Owner.
`
`____________
`
`Case IPR2016-00950
`Patent 8,166,739
`____________
`
`
`
`
`PATENT OWNER’S SURREPLY TO PETITIONER’S REPLY
`
`
`Patent No. 8,166,739
`
`Filed on behalf of Oxbo International Corporation
`
`By: Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel:
`(612) 371-5383
`Fax: (612) 332-9081
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`H&S MANUFACTURING COMPANY, INC.
`
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION
`
`Patent Owner.
`
`____________
`
`Case IPR2016-00950
`Patent 8,166,739
`____________
`
`
`
`
`PATENT OWNER’S SURREPLY TO PETITIONER’S REPLY
`
`
`
`Case No. IPR2016-000950
`Patent No. 8,166,739
`
`Petitioner introduced for the first time in its Reply to Patent Owner
`
`Response (Paper 28) the Operator’s Manual for Petitioner’s infringing Tri-Flex
`
`merger (EX1025) and purported AE50 Award Entry Information for the 2004
`
`AE50 Award (EX1026). However, not only are EX1025-1026 not admissible for
`
`the reasons set forth in Papers 35 and 41, those Exhibits do not rebut Patent
`
`Owner’s secondary considerations of nonobviousness.
`
`I.
`
`EX1025 fails to rebut Patent Owner’s secondary considerations of
`nonobviousness
`
`Petitioner incorrectly argues that Dr. Chaplin conflated copying with
`
`infringement, and that EX1025 refutes the copying evidence provided. This is
`
`incorrect. As in the Wyers case cited by Petitioner, copying requires “evidence of
`
`efforts to replicate a specific product.” Wyers v. Master Lock Co., 616 F.3d 1231,
`
`1246 (Fed.Cir.2010). Patent Owner’s evidence included (1) unrebutted testimony
`
`that Petitioner inspected Patent Owner’s patented windrow merger, and (2)
`
`analysis by Dr. Chaplin that Petitioner’s infringing Tri-Flex windrow merger
`
`looked and operated just like Patent Owner’s, including the claimed features of
`
`the ’739 patent. (EX2008, ¶¶ 83-95.)
`
`Petitioner contends that Dr. Chaplin “ignores the claim limitation that the
`
`belt conveyors are ‘operable in either direction independently of the other belt
`
`conveyors.’” (Paper 28, p. 17) (citing EX2008, ¶ 91.) Petitioner argues that the Tri-
`
`1
`
`
`
`Case No. IPR2016-000950
`Patent No. 8,166,739
`
`Flex does not meet that claim limitation because “there is no separate button for
`
`independently controlling the direction of the middle conveyor.” (Paper 28, p. 17,
`
`citing EX1025.) Petitioner’s argument about the lack of a center conveyor button is
`
`misleading. The Tri-Flex center conveyor direction is controlled to operate in
`
`either direction by single tapping or double tapping either directional button. (See
`
`EX1025, p. 23.) To the extent that Petitioner maintains that a dedicated center
`
`button is required to satisfy this limitation, then Petitioner’s prior art also lacks this
`
`limitation. Neither Declementi nor US Honey teach or suggest a center button to
`
`control the direction of a center conveyor.
`
`Petitioner’s attempt to rebut copying by establishing noninfringement is
`
`further belied by the findings of the District Court and the inspection by Dr.
`
`Chaplin. The District Court considered all the evidence, including EX1025, and
`
`found on summary judgment that the Tri-Flex met every limitation of claim 1 of
`
`the ’739 patent. (EX2020 at 33-35, 38.) Addressing the limitation at issue, the
`
`District Court held that it “simply requires that each conveyor be able to operate in
`
`both directions and, if desired, in a direction different than the others.” (EX2020,
`
`p. 35.) Further, Dr. Chaplin inspected the Tri-Flex multiple times and observed
`
`independent operation of the belt conveyors. Indeed, paragraph 91 of Dr.
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`Chaplin’s declaration, cited by Petitioner as purported evidence that he did not
`
`consider this limitation, expressly addresses this limitation. (Paper 28, p. 17)
`2
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`
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`Case No. IPR2016-000950
`Patent No. 8,166,739
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`(citing EX2008, ¶ 91.) Furthermore, in EX2015, Dr. Chaplin states “I have
`
`witnessed the H&S Tri-Flex in operation. Each of the first, second, and third belt
`
`conveyors were operable in either direction independently of the other belt
`
`conveyors. In other words, each of the belt conveyors can operate to the right or
`
`left and in a different direction than each of the other belt conveyors.” (EX2015,
`
`p. 2) (emphasis added.)
`
`Accordingly, even considering EX1025, the Tri-Flex was designed after
`
`review of the patented Oxbo merger, and includes the limitation that Petitioner
`
`alleges is missing. Petitioner’s copying rebuttal therefore fails.
`
`II. EX1026 fails to rebut Patent Owner’s secondary considerations of
`nonobviousness
`
`Petitioner attempts to rebut evidence of industry praise by speculating that
`
`the “AE50 award is not an objective award” and cites to EX1026 in support. (Id.,
`
`p. 19.) Contrary to Petitioner’s argument, EX1026 shows that the award winners
`
`are selected by a “panel of experts in these fields.” (EX1025.) Furthermore, Dr.
`
`Chaplin testified that his opinion of the significant industry praise bestowed by
`
`AE50 award would not change even if the submissions were self-nominated, or if
`
`the descriptions of the awarded products were submitted by the winner. (EX1024,
`
`p. 166:10-25; p.168:22-169:7.) As such, both Dr. Chaplin’s testimony and
`
`EX1026 undercut Petitioner’s argument.
`
`3
`
`
`
`Case No. IPR2016-000950
`Patent No. 8,166,739
`
`
`
`
`
`Date: July 21, 2017
`
`
`
`
`
`
`
`(Trial No. IPR2016-00950)
`
`Respectfully submitted,
`
`MERCHANT & GOULD, P.C.
`
`
`/Andrew J. Lagatta/
`Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould P.C.
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 332-5300
`Fax: (612) 332-9081
`alagatta@merchantgould.com
`OxboIPR@merchantgould.com
`
`ATTORNEYS FOR PATENT OWNER
`
`4
`
`
`
`Case No. IPR2016-000950
`Patent No. 8,166,739
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that “PATENT OWNER’S SURREPLY
`TO PETITIONER’S REPLY” for the above-captioned matter was served in its
`entirety on July 21, 2017, upon the following parties via e-mail:
`
`
`Brad D. Pederson (Reg. No. 32,432)
`Eric H. Chadwick (Reg. No. 42,664)
`PATTERSON THUENTE PEDERSEN, P.A.
`80 South Eighth Street, Suite 4800
`Minneapolis, MN 55402
`Phone: (612) 349-5740
`Facsimile: (612) 349-9266
`chadwick@ptslaw.com
`pedersen@ptslaw.com
`
`Date: July 21, 2017
`
`
`
`
`
`
`
`
`
`(IPR2016-00950)
`
`
`
`Respectfully submitted,
`MERCHANT & GOULD, P.C.
`
`/Andrew J. Lagatta/
`
`
`
`
`
`Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould P.C.
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 332-5300
`Fax: (612) 332-9081
`alagatta@merchantgould.com
`
`
`ATTORNEYS FOR PATENT OWNER
`
`
`
`
`
`
`
`
`
`5
`
`
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