UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WAVETAMER GYROS, LLC,
`Petitioner,
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`v.
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`SEAKEEPER, INC.,
`Patent Owner.
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`Cases IPR2017-01931 and IPR2017-019961
`Patents 8,117,930 B2 and 7,546,782 B2
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`
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`Before LORA M. GREEN, MICHAEL W. KIM, and PATRICK R. SCANLON,
`Administrative Patent Judges.
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`GREEN, Administrative Patent Judge.
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`DECLARATION OF DAVID E. BENNETT
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`1 This paper addresses issues that are the same in the identified cases. The
`word-for-word identical paper is filed in each proceeding identified in the
`heading. References to exhibits refer to Exhibits in IPR2017-01931.
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WAVETAMER GYROS, LLC,
`Petitioner,
`
`v.
`
`SEAKEEPER, INC.,
`Patent Owner.
`
`Cases IPR2017-01931 and IPR2017-019961
`Patents 8,117,930 B2 and 7,546,782 B2
`
`
`
`
`Before LORA M. GREEN, MICHAEL W. KIM, and PATRICK R. SCANLON,
`Administrative Patent Judges.
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`GREEN, Administrative Patent Judge.
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`DECLARATION OF DAVID E. BENNETT
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`1 This paper addresses issues that are the same in the identified cases. The
`word-for-word identical paper is filed in each proceeding identified in the
`heading. References to exhibits refer to Exhibits in IPR2017-01931.
`
`
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`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
`
`
`DECLARATION OF DAVID E. BENNETT
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`Declarant states:
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`1.
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`I, David E. Bennett, am a registered patent attorney and have
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`practiced exclusively in the field of intellectual property law for more than 30
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`years. I am lead counsel in this proceeding.
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`2.
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`Our firm opened a matter involving the investigation of U.S. Patent
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`Nos. 8,117,930 (the ‘930 patent, Exhibit 1001) and 7,546,782 (the ‘782 patent,
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`Exhibit 1042) on or about August 13, 2015, but I was not involved until about
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`December 15, 2016. At that time Larry Coats, a member of our firm, asked me to
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`review an invalidity analysis regarding the ‘930 and ‘782 patents prepared by
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`Brandee N. Woolard, an associate in our firm. I was provided printed copies of
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`numerous references including U.S. Patent No. 6,973,847 (the Adams patent,
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`Exhibit 1006), German Patent DE 19909491 A1 (Jäger, Exhibit 1010), and
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`Statutory Registration H312 (Parker, Exhibit 1017). The Adams patent discloses
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`the basic elements of a gyroscopic boat stabilizer, while the Jäger and Parker
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`references disclose the use of interleaved fins to dissipate heat from a rotating heat
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`generating component. Adams and Jäger were eventually used in the asserted
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`grounds for challenge. Parker was not.
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`3.
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`The Adams patent was filed on June 4, 2003 by the Patent Owner in
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`this case and has the same inventors as the ‘930 and ‘782 patent. The application
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`2
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`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
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`that lead to the grant of the Adams patent was published on December 9, 2004 as
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`U.S. Publication No. 2004/0244513 (the Adams publication, Exhibit 1043), which
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`is more than one year prior to the filing date of the ‘930 and ‘782 patents. The
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`Adams publication is prior art under 35 U.S.C. §102(b). The specification and
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`drawings of the Adams publication are nearly identical to the Adams patent cited
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`in the petitions. While the Adams patent is technically not prior art, the subject
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`matter disclosed in the Adams patent is prior art
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`4.
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`During my initial review in mid-December 2016, I recognized that the
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`application for the Adams patent was published on December 9, 2004, which is
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`more than one year prior to the filing date that the ‘930 and ‘782 patents, and that
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`the Adams publication was available as prior art under 35 U.S.C. §102(b).
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`Because I already had a printed copy of the Adams patent, I proceeded with my
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`initial review using the printed copy of the Adams patent and reported back to Mr.
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`Coats who was advising our client. At that time, I expected that the Adams
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`publication would be used as prior art to show the basic elements of a boat
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`stabilizer if any post issuance proceedings were instituted.
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`5.
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`I did not do any further work on the matter until mid-January 2017.
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`Mr. Coats requested that I conduct a patent search and provide further assistance
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`with the analysis of the ‘930 and ‘782 patents. On February 6, 2017, Ms. Woolard
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`and I conducted a patent search in the United States Patent Office focusing on the
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`3
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`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
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`use of interleaved fins for cooling bearings and other rotating components. We
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`were not concerned at this time with prior art in the field of boat stabilizers because
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`we expected to use Adams publication in any invalidity challenges to show the
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`basic elements of a boat stabilizer. Our attention was focused on finding prior art
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`related to interleaved fins that could be combined with the Adams publication to
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`make strong invalidity arguments. During this subsequent search, we identified
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`more than 30 references related to bearing cooling and interleaved fins that
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`required further analysis. The patent to Bimshas (Exhibit 1012) cited in the
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`petitions was among the references identified in this search.
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`6.
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`Following the patent search, Mr. Coats asked me to prepare petitions
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`for inter partes review for the ‘930 and ‘782 patents. I began to draft the petitions
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`and prepare the claim charts in late February 2017, approximately ten (10) weeks
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`after my initial evaluation in December 2016. In preparing the petitions, I referred
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`to the references that I had previously printed and annotated, including the Adams
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`patent. I did not spend time thinking about the prior art status of Adams. In my
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`mind, I knew that the subject matter disclosed by the Adams patent was prior art.
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`My attention instead was focused on developing the legal theories for invalidity,
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`understanding the scientific principles of heat transfer, working with the expert
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`witness to conduct simulations to support our invalidity arguments, and drafting
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`the petitions. One area requiring a lot of attention was developing arguments
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`4
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`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
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`regarding the functional limitations in claims 2 and 13 of the ‘782 patent that the
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`heat transfer between the interleaved fins be “primarily by gaseous conduction.” I
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`spent more than 150 hours on these issues. With my attention fixated on these
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`issues, I overlooked the need to substitute the Adams publication for the Adams
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`patent and mistakenly cited the Adams patent rather than the Adams publication in
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`the petitions.
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`7.
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`I was unware of the mistake in the petitions until I received Patent
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`Owner’s Preliminary Response on November 17, 2017 and have acted
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`expeditiously to correct the mistake. Although Patent Owner was provided drafts
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`of the petitions prior to filing, Patent Owner elected not to point out the mistake
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`before the petitions were filed. We contacted counsel for Patent Owner on
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`November 20, 2017, and requested his consent to file a motion to terminate the
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`current proceeding so that a corrected petition could be subsequently filed, or to
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`file a second petition along with motion for joinder. On November 21, 2017, I
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`received an email from counsel for Patent Owner indicating that Patent Owner
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`opposed our proposals. On November 27, 2017, after the Thanksgiving holiday, I
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`had a telephone conference with counsel for Patent Owner during which he
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`reaffirmed Patent Owner’s opposition to Petitioner’s proposals.
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`8.
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`Petitioner has a strong case for invalidity based on the Adams
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`publication. The Adams publication discloses the basic structure of the claimed
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`5
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`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
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`gyroscopic boat stabilizer without the interleaved fins for cooling the flywheel
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`bearings. The Sibley (Exhibit 1009), Bimshas (Exhibit 1012) and Jäger (Exhibit
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`1010) references cited in the petitions all disclose interleaved fins for cooling
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`bearings or other rotating heat generating elements. Sibley, in particular, discloses
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`the use of interleaved fins to cool the bearings of a flywheel contained within a
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`vacuum enclosure. The Adams publication itself provides an explicit motivation
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`to apply the teachings of Sibley, Bimshas and Jäger to the Adams’ boat stabilizer.
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`Exhibit 1043, ¶[0047] (“Provision for cooling the flywheel bearings may be
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`necessary at very high tip speeds.”).
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`9.
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`I am an experienced patent attorney with more than 30 years of
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`experience in the practice of patent law. I am knowledgeable about the provisions
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`of 35 U.S.C. §102 and understand what constitutes prior art. However, I made an
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`uncharacteristic and inadvertent mistake by conflating the Adams patent with the
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`Adams publication when I prepared the petitions. I believe that it is in the interest
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`of justice and fairness to grant the motion to dismiss the original petitions and
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`authorize the filing of corrected petitions.
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`10.
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`I hereby acknowledge that any willful false statement made in the
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`declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment, or both.
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`6
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`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
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`11.
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`I declare that all statements made in this declaration of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true.
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`COATS & BENNETT, P.L.L.C.
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`David E. Bennett
`Registration No.: 32,194
`Attorney for the Petitioner
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`7
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`
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`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
`
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4)
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`The undersigned hereby certifies that a true copy of the foregoing
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`DECLARATION OF DAVID E. BENNETT was served on December 18, 2017 by
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`filing this document through the Patent Trial and Appeal Board End to End (PTAB
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`E2E) as well as providing a courtesy copy via e-mail to the following attorneys of
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`record for the Patent Owner listed below:
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`Lead Counsel
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`Back-up Counsel
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`Back-up Counsel
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`
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`Edward J. Kelly (Reg. No. 38,936)
`Ropes & Gray
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`T: 617-951-7532
`F: 617-235-9492
`Edward.Kelly@ropesgray.com
`Regina Sam Penti (Reg. No. 67,362)
`ROPES & GRAY LLP
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`T: 617-951-7814
`F: 617-235-9492
`Regina.Penti@ropesgray.com
`Scott A. McKeown
`Reg. No. 42,866
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, NW
`Washington, DC 20006-6807
`T: 202-508-4740
`F: 617-235-9492
`Scott.McKeown@ropesgray.com
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`8
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`
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`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
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`Dated:
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`December 18, 2017
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`Respectfully submitted,
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`By:
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`/Kenyatta Upchurch/
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`COATS & BENNETT, PLLC
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`9
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`
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