Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 39
`Entered: August 29, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
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`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`
`Case IPR2016-01462
`Patent 8,324,295 B2
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`Tel: 571-272-7822
`
`Paper 39
`Entered: August 29, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`
`Case IPR2016-01462
`Patent 8,324,295 B2
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
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`IPR2016-01462
`Patent 8,324,295 B2
`
`INTRODUCTION
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`Reactive Surfaces Ltd., LLP (“Petitioner”) filed a Petition (Paper 1,
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`“Pet.”) requesting inter partes review of claims 1–27 of U.S. Patent No.
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`8,324,295 B2 (Ex. 1001, “the ’295 patent”). Toyota Motor Corporation
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`(“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”).
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`On February 9, 2017, we instituted trial to determine whether claims 1–9,
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`13–20, and 22–27 are unpatentable as obvious. Paper 14 (“Dec.”); see
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`Paper 16 (correcting list of claims on which trial was instituted); Paper 23
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`(denying request for rehearing).
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`After we instituted trial, Patent Owner filed a Response to the
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`Petition, and Petitioner filed a Reply. Paper 27 (“Resp.”); Paper 35
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`(“Reply”). On August 24, 2017, Patent Owner contacted the Board by email
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`and requested permission to file a sur-reply addressing a proposed claim
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`construction Petitioner offered for the first time in its Reply. Patent Owner
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`also requested permission to file a motion to strike certain arguments
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`presented in Petitioner’s Reply or, in the alternative, a sur-reply addressing
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`those arguments on the merits.
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`ANALYSIS
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`Petitioner’s Reply proposes a construction for the claim term
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`“emulsion.” Reply 6–7. Neither party proposed previously a construction
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`for this term. Pet. 12–14; Prelim. Resp. 24–26; Resp. 13–16. We did not
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`find it necessary to construe this term expressly in our Institution Decision.
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`Dec. 5–7. Accordingly, the proposal to construe “emulsion” in the Reply is
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`the first time the construction of this term has arisen as an issue in this
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`proceeding. Patent Owner argues that it should be permitted to address this
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`new proposed construction in a sur-reply. Petitioner does not oppose the
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`2
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`IPR2016-01462
`Patent 8,324,295 B2
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`filing of a sur-reply addressing this issue. Therefore, we grant the request
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`and authorize Patent Owner to file a sur-reply addressing Petitioner’s
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`proposed construction of the term “emulsion.”
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`Patent Owner next argues that it should be permitted to file a motion
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`to strike certain portions of Petitioner’s Reply and of the Reply Declaration
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`of Dr. Douglas M. Lamb or, in the alternative, that it should be permitted to
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`file a sur-reply addressing the arguments appearing in those portions of
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`Petitioner’s Reply. In particular, Patent Owner argues that it was improper
`
`for Petitioner to address two prior-art references, Exhibits 1019 and 1021,
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`for the first time in the Reply, necessitating either a response to the
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`discussion of those references or striking that discussion from the record.
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`Petitioner opposes either permitting a motion to strike or permitting a sur-
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`reply on this issue.
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`The two references in question are discussed in different ways in
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`Petitioner’s Reply. Petitioner cites Exhibit 1019 as evidence that “Patent
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`Owner’s assertion that, ‘[s]ince the prior art neither recognized the problem
`
`nor identified a predictable solution, no amount of “routine optimization” -
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`the only obviousness rationale suggested by either Petitioner or the Board -
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`would have led an ordinarily skilled person to the claimed invention’ lacks
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`merit.” Reply 2–3 (quoting Resp. 1). This is quite clearly the use of a piece
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`of prior art to rebut an argument offered by Patent Owner. Although it is
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`likely that Petitioner could have discovered Exhibit 1019 before it filed its
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`Reply, there was no reason to make the exhibit of record until after Patent
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`Owner argued that the inventor of the challenged patent was the first to
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`discover the problem the patent purports to solve. See, e.g., Resp. 1.
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`Petitioner had no duty to anticipate every argument Patent Owner might
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`3
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`IPR2016-01462
`Patent 8,324,295 B2
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`make in its Response and preemptively rebut all of those arguments in the
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`Petition. Replies are expressly permitted to “respond to arguments raised in
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`the corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b).
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`Accordingly, we do not consider Petitioner’s discussion or citation of
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`Exhibit 1019 to raise a new issue beyond the appropriate scope of its Reply.
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`As such, we do not authorize the filing of a sur-reply addressing this issue.
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`Patent Owner also argues that Petitioner’s discussion of Exhibit 1021
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`raises a new issue beyond the proper scope of its Reply. Petitioner cites
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`Exhibit 1021 as evidence that a person of ordinary skill in the art would have
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`had a “reasonable expectation of success at combining the teachings of
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`McDaniel ’853 and Fritzsche to arrive at the claimed process of Claim 13 [of
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`the challenged patent].” Reply 23–24. Although Patent Owner argues in the
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`Response that “Petitioner has not suggested” that a person of ordinary skill
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`in the art would have had a “reasonable expectation of being able to
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`formulate a stable composition,” Resp. 55, this is not an affirmative
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`argument raised for the first time in the Response, to which Petitioner must
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`be able to respond in a relatively unfettered manner in the Reply. Instead, it
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`is an argument that the Petition is defective because it fails to address all the
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`requirements of an obviousness challenge. When Patent Owner argues in its
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`Response that something is missing in the Petition, Petitioner is entitled to
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`rebut that argument, but Petitioner cannot, without consequence, use the
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`Reply as a means to fill in the holes that Patent Owner points out. Here, the
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`Petition contains no mention of “reasonable expectation of success,” or any
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`similar phrase. Accordingly, a remedy for the introduction of a new issue in
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`the Reply is warranted. We are not persuaded, however, that the proper
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`remedy is to exclude this particular issue from the proceeding altogether.
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`4
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`IPR2016-01462
`Patent 8,324,295 B2
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`The question of whether a person of ordinary skill in the art would have had
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`a reasonable expectation of success in combining the teachings of the prior
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`art is central to the issue of obviousness, on which we instituted trial.
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
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`68 (Fed. Cir. 2016) (showing obviousness requires showing “both ‘that a
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`skilled artisan would have been motivated to combine the teachings of the
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`prior art references to achieve the claimed invention, and that the skilled
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`artisan would have had a reasonable expectation of success in doing so’”)
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`(quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
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`1360 (Fed. Cir. 2012)). Accordingly, our preference is for a remedy that
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`preserves this issue in the proceeding, while giving Patent Owner an
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`opportunity to respond, rather than a remedy that removes this issue from the
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`trial altogether. Therefore, we authorize Patent Owner to file a sur-reply
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`addressing Petitioner’s discussion of Exhibit 1021 and the reasonable
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`expectation of success at pages 23 and 24 of the Reply.
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`CONCLUSION
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`We authorize Patent Owner to file a sur-reply addressing two issues:
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`the construction of “emulsion” proposed by Petitioner and Petitioner’s
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`discussion of Exhibit 1021 and the reasonable expectation of success at
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`pages 23 and 24 of the Reply. Patent Owner’s sur-reply shall be filed no
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`later than two weeks after the entry of this Order, and it shall be limited to
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`six (6) pages in length. Patent Owner shall not introduce any new evidence
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`to accompany the sur-reply.
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`5
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`IPR2016-01462
`Patent 8,324,295 B2
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`It is hereby
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`ORDER
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`ORDERED that Patent Owner is authorized to file a sur-reply
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`addressing (1) Petitioner’s proposed construction of the term “emulsion” and
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`(2) Petitioner’s discussion of Exhibit 1021 and the reasonable expectation of
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`success at pages 23 and 24 of the Reply;
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`FURTHER ORDERED that Patent Owner’s sur-reply shall be limited
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`to six (6) pages in length;
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`FURTHER ORDERED that Patent Owner shall file its sur-reply no
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`later than two weeks after the entry of this Order; and
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`FURTHER ORDERED that no new evidence shall be filed to
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`accompany the sur-reply.
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`6
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`IPR2016-01462
`Patent 8,324,295 B2
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`PETITIONER:
`
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons@ivcpatentagency.com
`
`Jonathan D. Hurt
`MCDANIEL & ASSOCIATES, PC
`jhurt@technologylitigators.com
`
`Mark A.J. Fassold
`Jorge Mares
`WATTS GUERRA LLP
`mfassold@wattsguerra.com
`jmares@wattsguerra.com
`
`
`PATENT OWNER:
`
`Joshua A. Lorentz
`Richard Schabowsky
`John D. Luken
`Oleg Khariton
`DINSMORE & SHOHL LLP
`joshua.lorentz@dinsmore.com
`richard.schabowsky@dinsmore.com
`john.luken@dinsmore.com
`oleg.khariton@dinsmore.com
`
`
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`7
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