Case IPR2016-01622
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`
`Petitioner
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`
`Patent Owner
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`PATENT OWNER’S BRIEF
`ADDRESSING IMPACT
`OF AQUA PRODUCTS v. MATAL
`
`
`
`
`
`
`
`
`
`
`
`
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`
`Petitioner
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`
`Patent Owner
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`PATENT OWNER’S BRIEF
`ADDRESSING IMPACT
`OF AQUA PRODUCTS v. MATAL
`
`
`
`
`
`
`
`
`
`
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`
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`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
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`AQUA ONLY REDUCES PATENT OWNER’S BURDENS. .................. 1
`
`THE AQUA JUDGES DISAGREE AS TO WHETHER THEIR
`STATEMENTS ON THE BURDEN OF PRODUCTION ARE
`DICTA. ....................................................................................................... 2
`
`
`
` i
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`
`
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`COURT DECISIONS
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Aqua Products, Inc. v. Matal,
`--- F.3d ----, 2017 WL 4399000 (Fed. Cir. 2017) ................................... 1, 2, 3, 4
`
`STATUTES
`
`35 U.S.C. § 316(a)(9) ............................................................................................. 1
`
`35 U.S.C. § 316(d) ................................................................................................. 3
`
`35 U.S.C. § 316(e) .............................................................................................. 3, 4
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`REGULATIONS
`
`37 C.F.R. § 42.121 ................................................................................................. 3
`
`OTHER AUTHORITIES
`
`Rules Of Practice For Trials Before The Patent Trials And Appeals Board,
`77 Fed. Reg. 48,626 (Aug. 14, 2012) ................................................................ 4
`
`
`
`
`
` ii
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`
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`EXHIBIT LIST
`
`Exhibit 2001
`
`Exhibit 2002
`
`Exhibit 2003
`
`Exhibit 2004
`
`Cara Garretson. “More DRAM vendors involved in Justice
`Department probe.” IDG News Service July 21, 2002.
`Computer World, Inc. November 21, 2016.
`“Error Correction Code in SoC FPGA-Based Memory
`Systems.” Altera Corporation April 2012.
`“133 MHz PC SDRAM 64-Bit Non-ECC/Parity 144 Pin
`UNBUFFERED SO-DIMM SPECIFICATION.” Intel, Revision
`1.0C. August 2000
`“PC SDRAM Serial Presence Detect (SPD) Specification.”
`Intel, Revision 1.2B. November 1999.
`Exhibit 2005 Declaration of Nathan Nobu Lowenstein in support of Motion
`for Admission Pro Hac Vice
`Institution Decision, Amerigen Pharms. Ltd. v. Shire LLC,
`IPR2015-02009, Paper 8 (PTAB Apr. 18, 2016)
`Patent Owner’s Motion To Amend, Amerigen Pharms. Ltd. v.
`Shire LLC, IPR2015-02009, Paper 14 (PTAB Jul. 18, 2016)
`Petitioner’s Opposition To Motion To Amend, Amerigen
`Pharms. Ltd. v. Shire LLC, IPR2015-02009, Paper 17 (PTAB
`Oct. 18, 2016)
`Patent Owner Reply To Petitioner’s Opposition, Amerigen
`Pharms. Ltd. v. Shire LLC, IPR2015-02009, Paper 21 (PTAB
`Nov. 17, 2016)
`Petitioner’s Request For Oral Argument, Amerigen Pharms.
`Ltd. v. Shire LLC, IPR2015-02009, Paper 27 (PTAB Dec. 9,
`2017)
`Final Written Decision, Amerigen Pharms. Ltd. v. Shire LLC,
`IPR2015-02009, Paper 38 (PTAB Mar. 31, 2017)
`Exhibit 2012 Deposition Transcript Of Vivek Subramanian (Apr. 19, 2017)
`
`Exhibit 2006
`
`Exhibit 2007
`
`Exhibit 2008
`
`Exhibit 2009
`
`Exhibit 2010
`
`Exhibit 2011
`
`Exhibit 2013
`
`Exhibit 2014
`
`Exhibit 1 To Deposition Transcript Of Vivek Subramanian
`(Apr. 19, 2017)
`Transcript of October 5, 2017 Conference Call
`
` iii
`
`
`
`
`
`Pursuant to the Board’s October 18, 2017 Order (Paper 29), Patent Owner
`
`respectfully submits this brief addressing the impact of Aqua Products, Inc. v.
`
`Matal, 2017 WL 4399000 (Fed. Cir. 2017) (en banc) (“Aqua”), on this proceeding
`
`and that for which Patent Owner bears a burden in accordance with that decision.
`
`I.
`
`AQUA ONLY REDUCES PATENT OWNER’S BURDENS.
`Notwithstanding
`the disagreement over which statements
`
`in Aqua
`
`concerning burden are dicta, see infra § II, two things are clear: (i) Aqua only
`
`reduces, not increases, whatever burdens Patent Owner must meet for its Motion to
`
`be granted; and (ii) Patent Owner’s remaining burden is undisputedly already met.
`
`First, Aqua expressly shifts the burden of persuasion on the patentability
`
`question from Patent Owner to Petitioner. A majority of the judges agree, and no
`
`judges affirmatively disagree, that the other burdens imposed on Patent Owner as
`
`movant—including to show that the proposed claims is non-broadening, supported,
`
`and responsive to an instituted ground, § 316(d)(3), and to produce “a full
`
`statement of the reasons for” granting the Motion that “clearly points out the
`
`patentably distinct features for the proposed new or amended claims”—were
`
`unchallenged, and are unchanged. Id. at *35, *40-41; *42. Thus, Aqua relieves
`
`Patent Owner of the burden of persuasion, and does not impose new countervailing
`
`obstacles to the Motion. Aqua’s only effect is to make the Motion easier to grant.
`
`Second, as was true in Aqua itself, 2017 WL 4399000, *2, *17 n.6 & *27, it
`
`
`
`1
`
`
`
`
`
`is undisputed here that Patent Owner’s remaining burdens under § 316(d) and Rule
`
`42.121 have been satisfied. Petitioner does not dispute that the proposed claim is
`
`supported by the specification, is not indefinite, does not introduce new matter, and
`
`is responsive to an instituted ground; nor that the Motion clearly points out the
`
`features for the proposed new claim that are patentably distinct from the instituted
`
`grounds. Papers 20, 28. Compare Aqua, 2017 WL 4399000, *41 (Reyna op.).
`
`Aqua thus lends only additional (unneeded) support for granting the Motion.
`
`II.
`
`THE AQUA JUDGES DISAGREE AS TO WHETHER THEIR
`STATEMENTS ON THE BURDEN OF PRODUCTION ARE DICTA.
`
`The eleven judges of the Aqua en banc court agree that most statements in
`
`their six opinions are nonbinding dicta. They disagree as to precisely which ones.
`
`The lead opinion by Judge O’Malley, which, except as to its result, was
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`joined by a minority of the eleven judges (O’Malley, Newman, Lourie, Moore, and
`
`Wallach), writes that “[t]he only legal conclusions that support and define the
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`judgment of the court are: (1) the PTO has not adopted a rule placing the burden of
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`persuasion with respect to the patentability of amended claims on the patent owner
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`that is entitled to deference; and (2) in the absence of anything that might be
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`entitled [to] deference, the PTO may not place that burden on the patentee”; and
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`that any other assertions by a different majority of the Court “are just . . .
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`cogitations.” Aqua, 2017 WL 4399000, *26, *28.
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`
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`2
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`
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`
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`Judges Taranto and Reyna, writing for a six-judge majority (Prost, Dyk,
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`Reyna, Taranto, Chen, and Hughes), agree with Judge O’Malley that the “legal
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`conclusions” she identified above are supported by majorities, albeit each by
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`different majorities. Id. at *40 n.8 (Reyna), *42 (Taranto).
`
`Judge Taranto writes that the six-judge majority joining his opinion also
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`reaches “the majority conclusion . . . that certain PTO regulations imposing
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`burdens of production on the patent owner are undisturbed and therefore applicable
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`on remand in this case.” Id. at *42. Judge Reyna, for the same majority, explains:
`
`§ 316(d) and 37 C.F.R. § 42.121 place a default burden of production
`on the patentee. This . . . represent[s] a majority view of the court.
` . . . I would vacate and remand with instruction . . . to review the
`underlying motion to amend by applying only a burden of production
`on the patent owner, as § 316(d) and 37 C.F.R. § 42.121 currently
`permit, . . . and a majority of the court agrees. . . .
`It is important to note that Aqua has not challenged . . . the
`obligations the Patent Office may impose on the patent owner to
`produce evidence pertinent
`to
`the
`required assessment of
`patentability . . . [or] the scope of obligations the Patent Office may
`impose on the patent owner to address particular patentability issues
`in its motion to amend. [§] 316(e) does not address either aspect. . . .
`There is no disagreement that the patent owner bears a burden
`of production in accordance [with] 35 U.S.C. § 316(d). Indeed, the
`Patent Office has adopted regulations that address what a patent
`owner must submit in moving to amend the patent. For instance,
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`
`
`3
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`
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`§ 42.22(a) requires a movant to provide in a motion “a full statement
`of the reasons for the relief requested, . . . “ . . . including a detailed
`explanation of the significance of the amended claims (e.g., a
`statement that clearly points out the patentably distinct features for the
`proposed new or amended claims).”
`These regulations are not called into question by today's
`decision. Contrary to Judge O’Malley’s suggestion, Part III of my
`opinion, joined by a majority of this court, is not “dictum.”
`
`Id. at *35, *40-41 (citations and alterations omitted, quoting 77 FR at 48,626)
`
`The full Court agrees that the other statements in its opinions are not
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`binding. Thus, Judge O’Malley’s other statements, such as that “§ 316(e)
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`unambiguously requires the petitioner to prove all propositions of unpatentability,
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`including for amended claims” and that “[w]hen a petitioner does contest an
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`amended claim, the Board is free to reopen the record to allow admission of any
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`additional relevant prior art,” id. at *1, *17,1 and that “[w]hen the petitioner
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`disputes whether a proposed amended claim is patentable, it simply continues to
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`advance a ‘proposition of unpatentability’ in an ‘inter partes review instituted
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`under this chapter,’” id. at *10 (citations omitted, quoting § 316(e)); are not
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`holdings by a majority of
`
`the en banc Court.
`
` See
`
`id. at *28-29.
`
`
`1 The Board’s suggestion that these statements are majority holdings, Paper
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`25 at 4, is mistaken. See Aqua at *40 n.7 (Reyna); *42, *48 & nn.6-7 (Taranto).
`
`
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`4
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`Date: November 1, 2017
`
`Respectfully submitted,
`____/ Kenneth J. Weatherwax /_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
`
`
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`Case IPR2016-01622
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`by electronic service, by agreement between the parties, on the date signed below:
`
`
`PATENT OWNER’S BRIEF
`ADDRESSING IMPACT OF AQUA PRODUCTS
`
`The names and address of the parties being served are as follows:
`
`IPR37307-0007IP1@fr.com (David Hoffman)
`IPR@sjclawpc.com (Martha Hopkins)
`
`
`
`Respectfully submitted,
`
` / Shawn Chi /
`
`Date: Nov. 1, 2017
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