UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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.
`
`GREEN, Administrative Patent Judge.
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`MOTION TO DISMISS THE PETITIONS AND AUTHORIZE
`FILING OF CORRECTED PETITIONS
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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.
`
`
`
`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.
`
`GREEN, Administrative Patent Judge.
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`
`MOTION TO DISMISS THE PETITIONS AND AUTHORIZE
`FILING OF CORRECTED PETITIONS
`
`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.
`
`
`
`
`I.
`
`Introduction
`
`Petitioner has requested inter partes review of U.S. 8,117,930 (the '930
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`patent, Exhibit 1001) (IPR2017-01931) and U.S. 7,546,782 (the ‘782 patent,
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`Exhibit 1042) (IPR2017-01996). In both petitions, Petitioner's counsel mistakenly
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`cited U.S. 6,973,847 (the Adams patent, Exhibit 1006) rather than identical text in
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`U.S. Patent Pub. No. 2004/0244513 (the Adams publication, Exhibit 1043). The
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`Adams publication is prior art under 35 U.S.C. §102(b). The Adams patent is not
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`prior art.
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`The Board authorized Petitioner to move to dismiss the original petitions and
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`seek approval to file corrected petitions. Patent Owner has filed a preliminary
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`response in IPR2017-01931 but the Board has not issued an institution decision. A
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`preliminary response has not been filed in IPR2017-01996.
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`Petitioner seeks only to correct citations in the petitions and expert
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`declarations by substituting the Adams publication for the Adams patent. No
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`substantive changes will be made. The invalidity grounds as well as the evidence
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`and arguments supporting the grounds will remain the same.
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`There is no prejudice to the Patent Owner. On the other hand, if the Board
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`prohibits Petitioner from correcting the mistake, Petitioner will be seriously
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`harmed. Indeed, considering that the Adams reference is the primary reference for
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`all grounds in the '930 petition and constitutes the primary reference for the
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`
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`1
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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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`strongest grounds in the ‘782 petition, and the potential estoppel effects, failure to
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`correct the petitions is potentially devastating to the Petitioner.
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`II.
`
`Statement of Material Facts
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`Petitioner was formed for the purpose of developing and marketing
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`gyroscopic boat stabilizers that will compete with the boat stabilizers made by
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`Patent Owner. On August 10, 2017, Petitioner filed the petition requesting an inter
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`partes review of U.S. Patent No. 8,117,930. On August 25, 2017, Petitioner filed a
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`second petition requesting an inter partes review of U.S. Patent No. 7,546,782.
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`The Adams patent is cited in all grounds for challenge in IPR2017-01931
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`regarding the ‘930 patent and in the strongest grounds for challenge in IPR2017-
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`01996 regarding the ‘782 patent. The application that led to the Adams patent was
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`filed on June 4, 2003 and published on December 9, 2004 as Publication No.
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`2004/0244513 (the Adams publication). The Adams publication is prior art with
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`respect to the ‘930 and ‘782 patents under 35. U.S.C. 102(b).
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`In the petitions for inter partes review, Petitioner’s counsel mistakenly cites
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`the Adams patent rather than the Adams publication. The expert’s declarations
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`likewise cite the Adams patent rather than the Adams publication. The mistake
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`was inadvertent. [Bennett Decl., ¶¶ 2-6, 9; Woolard Decl., ¶¶ 2-6, 8.]
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`On November 17, 2017, Patent Owner filed its Preliminary Response in
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`IPR2017-01931, which pointed out the error in the petition and declaration, and
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`2
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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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`requested the Board to deny the petition for inter partes review. Petitioner filed
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`this motion expeditiously after the discovery of the error. [Bennett Decl., ¶ 7.]
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`III. Requested Relief
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`Petitioner seeks an order dismissing the petitions in IPR2017-01931 and
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`IPR2017-01996 and authorizing Petitioner to file corrected petitions substituting
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`the Adams publication for the Adams patent in the petitions.
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`IV. Argument
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`1.
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`The Motion To Dismiss Should Be Granted to Allow the
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`Correction of An Inadvertent Mistake In the Petitions.
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`The Board has discretion to “take up petitions or motions for decisions in
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`any order” and to “grant, deny, or dismiss any petition or motion.” 37 C.F.R.
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`§42.71(a); see also, Samsung Electronics, Co., Ltd. Et al v. Nvidia Corp.,
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`IPR2015-01270 (Paper No. 11, December 8, 2015). Further, the Rules governing
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`IPR proceedings “shall be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” 37 C.F.R. §42.1(b).
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`During the early stages of their analysis of the case, Petitioner’s counsel, Mr.
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`Bennett and Ms. Woolard, were provided printed copies of the Adams patent along
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`with several other references and requested by another attorney, Mr. Coats, to
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`provide an initial opinion regarding the validity of the ‘930 and ‘782 patents.
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`[Bennett Decl., ¶ 2; Woolard Decl., ¶ 2.] Petitioner’s counsel recognized that the
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`3
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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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`Adams patent was not prior art, but that the Adams publication qualified as prior
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`art under 35 U.S.C. §102(b). [Bennett Decl., ¶ 4; Woolard Decl., ¶ 3.] The
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`publication data is printed on the face of the Adams patent. Ms. Woolard
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`highlighted the publication date in a printed copy of the Adams patent and verified
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`that the text of the Adams publication was the same as the text of the Adams
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`patent. [Woolard Decl., ¶ 3.] Petitioner’s counsel continued with their initial
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`evaluation using the printed copies of the Adams patent. [Bennett Decl., ¶ 4;
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`Woolard Decl., ¶ 3.]
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`In January, Mr. Coats requested Petitioner’s counsel to perform a patent
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`search and conduct some additional analysis. [Bennett Decl., ¶ 5.] On February 6,
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`Mr. Bennett and Ms. Woolard conducted a patent search for relevant art related to
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`interleaved fins and continued their analysis of the ‘930 and ‘782 patents in light of
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`the new references. [Id.; Woolard Decl., ¶ 4.] They were not concerned at this
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`time with prior art in the field of boat stabilizers because they expected to use the
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`Adams publication in any invalidity challenges to show the basic elements of a
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`boat stabilizer. [Id.] Their attention was focused on finding prior art showing
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`interleaved fins that could be combined with the Adams publication to make strong
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`invalidity arguments. [Id.]
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`Mr. Bennett began drafting the petitions in late February 2017,
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`approximately ten (10) weeks after the initial evaluation. [Bennett Decl., ¶ 6.]
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`4
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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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`While preparing the petitions, Mr. Bennett used copies of the references that he
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`had previously printed and annotated, which included the Adams patent. [Id.] He
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`did not spend time thinking about the prior art status of Adams. [Id.] In his mind,
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`he knew that the subject matter disclosed by the Adams patent was prior art. [Id.]
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`His focus was on the development of the legal theories of the case, understanding
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`the scientific principles of heat transfer, and working with the expert witness to
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`conduct simulations supporting his invalidity arguments. [Id.] Mr. Bennett spent
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`more than 150 hours on these issues. [Id.] With his attention fixated on these
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`matters, he overlooked the need to substitute the Adams publication for the Adams
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`patent in the initial drafts of the petitions and mistakenly cited the Adams patent
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`rather than the Adams publication in the petitions. [Id.] Although at one point Ms.
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`Woolard mentioned the need to provide the expert witness with a copy of the
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`Adams publication, Ms. Woolard did not catch the mistake in the final draft of the
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`petitions. [Woolard Decl., ¶¶ 5&6.]
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`Petitioner should be allowed to dismiss the petitions and to file corrected
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`petitions in order to cure this inadvertent mistake, which amounts to an incorrect
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`citation to the wrong version of a document. The content of the Adams publication
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`and the Adams patent are virtually identical. They include the same specification
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`and the same drawings. While the Adams patent is not technically prior art, the
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`Patent Owner cannot deny that the subject matter disclosed in the Adams patent is
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`5
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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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`prior art. If Petitioner is allowed to file a corrected petition, no new grounds or
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`arguments will be introduced. The correction will simply involve changing the
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`citations to the Adams patent to corresponding citations to the Adams publication.
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`Granting the motion to dismiss will not prejudice the Patent Owner. The
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`Patent Owner was aware of the Adams publication even before the filing of the
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`petitions. Patent Owner owns the Adams patent. Further, Patent Owner was
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`provided drafts of the petitions prior to filing and the Patent Owner elected not to
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`point out the mistake before he petitions were filed. [Bennett Decl., ¶7.] Having
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`to defend the validity of the ‘782 and ‘930 patents on the merits is not prejudicial
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`to Patent Owner.
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`Considerations of fairness and equity favor dismissal of the petitions to
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`permit the filing of corrected petitions. Every party in a legal proceeding should be
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`given a full and fair opportunity to have its case heard on the merits. The Adams
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`patent is used in all grounds for challenge in the ‘930 petition and in strong
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`grounds for challenge in the ‘782 petition. Denying the motion would, in effect,
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`deny Petitioner a day in court to have its arguments regarding the Adams
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`publication heard and leave question of invalidity unresolved. Moreover, in the
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`case of the ‘782 patent, the Petitioner could be estopped from raising a validity
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`challenge based on the Adams publication in any subsequent legal proceedings.
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`By opposing this motion, Patent Owner seeks to gain an unfair advantage from a
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`6
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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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`technical mistake by Petitioner’s counsel and deny Petitioner a full and fair
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`opportunity to have its case heard on the merits.
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`Petitioner’s invalidity arguments based on Adams are compelling. [Bennett
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`Decl., ¶ 8.] The Adams publication discloses the basic structure of the claimed
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`gyroscopic boat stabilizer without the interleaved fins for cooling the flywheel
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`bearings. [Id.] The Sibley (Exhibit 1009), Bimshas (Exhibit 1012) and Jäger
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`(Exhibit 1010) references cited in the petitions all disclose interleaved fins for
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`cooling bearings or other rotating heat generating elements. The Adams
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`publication itself provides an explicit motivation to apply these teaching to the
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`Adam’s boat stabilizer. Exhibit 1043, ¶[0047] (“Provision for cooling the flywheel
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`bearings may be necessary at very high tip speeds.”). “The public interest in
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`securing the just, speedy, and inexpensive resolution of every proceeding would be
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`served in this case more fully by considering the merits of the asserted ground of
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`unpatentability …rather than by denying consideration” based on Petitioner’s
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`mistake. Zhongshan Broad Ocean Motor Co. Ltd et al v. Nidec Motor Corp.,
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`IPR2015-00762, p. 8 (Paper No. 16, October 5, 2015) (allowing second petition to
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`correct mistake).
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`In Presidio Components, Inc. v. AVX Corp., IPR2015-01332 (Paper No. 13,
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`August 21, 2015), the Board noted that “[i]nadvertent mistakes generally not
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`affecting the merits of a case can happen, and we expect the parties to address
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`7
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`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
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`them amicably” Presidio involved a motion to correct under 37 C.F.R. § 42.104.
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`However, technical mistakes may also occur that are not correctible under 37
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`C.F.R. § 42.104. Faced with this situation, the Board in Zhongshan allowed the
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`filing of a second petition as an equitable remedy to correct fatal defects in a
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`petition. The Board should also do so in this case.
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`2.
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`The General Plastic Factors Weigh In Favor of Petitioner’s
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`Motion
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`In General Plastic Industrial Co., Ltd v. Canon Kabushiki Kaisha, IPR2016-
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`01357 (Paper No. 19, September 6, 2017), the Board provided guidelines for
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`exercising its discretion to allow follow-on petitions filed after an adverse
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`institution decision. The Board listed seven factors to consider: (1) whether the
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`same petitioner, patent, and claims are at issue; (2) whether the petitioner knew or
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`should have known of the prior art cited in the second petition when the first
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`petition was filed; (3) whether a Patent Owner Preliminary Response (POPR) or
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`Institution Decision has been received; (4) the time elapsed between knowledge of
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`art filed in second petition and petition filing; (5) whether second petition
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`explained time elapsed since first petition filing; (6) PTAB resources; and (7) one
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`year final determination requirement. The Board did not create a per se rule
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`against second petitions. Instead, the Board stated that “there may be
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`circumstances where multiple petitions by the same petitioner against the same
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`8
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`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
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`claims of a patent should be permitted, and that such a determination is dependent
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`on the facts at issue in the case.” General Plastic, supra at 18.
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`Factors 1 and 2 go to whether the petitioner has already had a fair chance to
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`present its grounds for challenge. In this case, Petitioner simply seeks to correct a
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`mistake in the petitions and to be given a chance to have its arguments heard on the
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`merits rather than be dismissed based on a technical mistake. See, Zhongshan,
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`supra at 7 (“Although the same ground was asserted by Petitioner in IPR2014-
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`01121, institution was denied in the earlier decision not on the merits but because
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`Petitioner failed to include an attesting affidavit with an English translation of [the
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`reference]”). Factor 3 is used to evaluate whether the Petitioner seeks to gain
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`advantage from a prior institution decision or preliminary response filed by the
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`Patent Owner. In this case Petitioner is not seeking to file a second petition with
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`new grounds or new arguments so there is no advantage to Petitioner. Factors 4
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`and 5 are used to evaluate reasons for any delay by Petitioner. Petitioner has
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`explained how the mistake in the petitions occurred and expeditiously filed this
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`motion after discovery of the error. Regarding factor 6, the proceedings are still in
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`the early stages of the proceeding and no decision has been made on institution in
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`either case. The resources of the Board are best utilized by considering the merits
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`of the asserted grounds. Zhongshan, supra at 8. Factor 7 is not applicable in the
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`present case because the no decision has been made on institution.
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`9
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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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`The purpose of the General Plastic factors, is to prevent abuse of the IPR
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`proceedings by petitioners seeking to file serial petitions using prior institution
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`decisions or POPRs as a roadmap to assert new grounds or arguments. “[T]his is
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`not similar to a case in which a petitioner seeks to introduce additional grounds
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`based on additional prior art through a second petition.” Zhongshan, supra at 8.
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`Rather, Petitioner simply wants an opportunity to have its case heard on the merits.
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`The Board has the authority under Rule 42.71(a) to prevent an unfairness to
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`the Petitioner. Granting the motion will not prejudice the Patent Owner, but
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`instead will serve the public interest in seeing that invalid patents are removed and
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`avoid an injustice to Petitioner for a simple technical mistake in the petitions.
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`Conclusion
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`For the forgoing reasons, the Board is respectfully requested to grant
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`Petitioner’s Motion to Dismiss Petitions and Authorize Filing of Corrected
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`Petitions.
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`COATS & BENNETT, P.L.L.C.
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`David E. Bennett ( Reg. No.: 32,194)
`Attorney for the Petitioner
`
`10
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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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`
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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 MOTION
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`TO DISMISS PETITIONS AND AUTHORIZE FILING OF CORRECTED
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`PETITIONS and related Exhibit 1043 was served on December 18, 2017 by filing
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`this document through the Patent Trial and Appeal Board End to End (PTAB E2E)
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`as well as providing a courtesy copy via e-mail to the following attorneys of record
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`for the Patent Owner listed below:
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`Lead Counsel
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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
`December 18, 2017
`Respectfully submitted,
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`Back-up Counsel
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`Back-up Counsel
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`Dated:
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`11
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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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`
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`By:
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`/Kenyatta Upchurch/
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`COATS & BENNETT, PLLC
`
`12
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