`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVETAMER GYROS, LLC,
`Petitioner
`
`v.
`
`SEAKEEPER, INC.,
`Patent Owner
`____________
`
`Case IPR2017-01931 and IPR2017-019961
`Patent 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.
`
`
`PATENT OWNER’S OPPOSITION TO MOTION TO DISMISS THE
`PETITIONS AND AUTHORIZE FILING OF CORRECTED PETITIONS
`
`
`
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in the
`heading. Unless otherwise indicated, references to exhibits or papers refer to
`Exhibits and Papers in IPR2017-01931.
`
`
`
`

`

`Pursuant to the Board’s December 11, 2017 Order (Paper 8), Patent Owner
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`Seakeeper, Inc. (“Seakeeper”) submits this Opposition to Petitioner’s Motion To
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`Dismiss The Petitions And Authorize Filing Of Corrected Petitions (Paper 9).
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`Petitioner Wavetamer Gyros, LLC (“Wavetamer”) has not met its burden of showing
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`it is entitled to the requested relief. First, Wavetamer does not explain why dismissal
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`under 37 C.F.R. § 42.71(a) is appropriate. Second, Wavetamer did not receive
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`permission from the Board to seek “authoriz[ation]” to file “corrected petitions.”
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`Now that Wavetamer has seen Seakeeper’s preliminary response (“POPR”)
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`and recognizes its petitions are fatally deficient, Wavetamer brazenly seeks a second
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`bite at the apple, even though the PTAB has now issued its precedential decision
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`in General Plastic, which prevents this exact form of harassment. But the Board
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`should not penalize a patent owner for filing a POPR, nor establish a route to allow
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`a petitioner not liking its chances—especially after seeing a patent owner’s
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`arguments—to simply reload to avoid an adverse Board ruling and start over.
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`Wavetamer, which has touted its legal expertise before the PTAB and has
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`conceded that it has been preparing these Petitions for two years, now admits it only
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`became aware of a significant legal error in both petitions after reading Seakeeper’s
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`POPR. See, e.g., Paper 9 at 2-3; Paper 10 ¶¶ 2, 7. It would be unjust to allow
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`Wavetamer to escape the consequences of its flawed petitions, especially when those
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`flaws have been identified to the Board by Seakeeper’s legal work. Although
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`
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`1
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`

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`Wavetamer seeks to characterize these flaws as mere oversights, the record
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`demonstrates that Wavetamer committed a significant legal error by failing to
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`establish correctly the legal status of a critical document it relies on as “prior art.”
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`The PTAB has confronted many such cases—for example, when petitioners have
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`failed to establish that non-patent literature was publicly accessible, or that the
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`publication should get a priority date of a provisional filing.2 In other words, there
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`is nothing special about Wavetamer’s situation. Wavetamer simply filed petitions
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`that, at least in significant part, are legally deficient and will fail. It would set a
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`dangerous precedent to allow a petitioner to get an early dismissal for the sole
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`purpose of using its earlier failures as a roadmap to file follow-on petitions.
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`Accordingly, Seakeeper urges the Board to deny Petitioner’s motion.
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`I.
`
`BACKGROUND
`On May 25, 2017, Petitioner sent Seakeeper’s investors a letter and a draft
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`IPR petition for U.S. Patent No. 7,546,782 (“’782 patent”), to which the
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`challenged ’930 patent claims priority. See Ex. 2001. Petitioner stated that his legal
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`team was preparing to file the enclosed IPR petition, that “settling later won’t help
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`2 See, e.g., GoPro, Inc. v. Contour IP Holding LLC, IPR2015-01078, Paper No. 59
`(P.T.A.B. Feb. 16, 2017) (Petitioner failed to meet burden of proving reference was
`prior art); ServiceNow, Inc., v. Hewlett-Packard Co., IPR2015-00716, Paper No. 13
`(P.T.A.B. Aug. 26, 2015) (same).
`
`
`
`2
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`

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`you much,” since “[i]t won’t put [the IPR] back in the bottle,” but that, “[o]n the
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`other hand, it’s unlikely this material will get discovered if buried now…….” Id. at
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`1. Petitioner added that “[o]ur 4-member team gives this about a 95% chance of
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`prevailing,” and that his expert “says it’s 100%.” Id. “Our team,” he added, “has
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`done 5 IPR’s thus far. They won them all.’” Id. at 2.
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`Seakeeper did not accede to Wavetamer’s threatening suggestion that it settle
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`and “bury” the petition. In August, 2017, Wavetamer filed its Petitions in IPR2017-
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`01931 (’930 patent) and IPR2017-01996 (’782 patent). Paper 1; IPR2017-01996,
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`Paper 1. The Petitions rely on the same references, same expert, and many of the
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`same arguments. See, e.g., Paper 1; IPR2017-01996, Paper 1. Wavetamer’s primary
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`reference for all grounds in the ’930 Petition is U.S. Patent No. 6,973,847 (“Adams
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`patent”). See Ex. 1006. In the ’782 Petition, Wavetamer relied on the Adams patent
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`as what it calls “the primary reference for the strongest grounds.” Paper 9 at 1-2.
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`On November 17, 2017, Seakeeper filed a POPR in IPR2017-01931. See
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`Paper 7. Seakeeper argued in part that the Petition: (1) is “fatally deficient” because
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`the Adams patent is not prior art; (2) fails because secondary considerations—which
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`Petitioner failed even to mention—demonstrate that the ’930 patent is not obvious;
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`and (3) violates the 14,000-word limit in 37 C.F.R. § 42.24(a)(1)(i). See id. at 1-5.
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`After reviewing Seakeeper’s POPR, Petitioner conceded that Seakeeper was
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`correct, that “the Adams patent is not prior art,” and that—in light of Seakeeper’s
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`3
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`

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`arguments—both petitions are “potentially devastat[ed].” See, e.g., Paper 9 at 1-2.
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`After reviewing the POPR, Wavetamer sought permission from the Board to file a
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`motion to dismiss. See Paper 8 at 2. The Board authorized Petitioner to file “a
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`motion to dismiss in each proceeding, explaining . . . why dismissal is appropriate.”
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`Id. at 5. The Board also pointed the parties to Gen. Plastic Indus. Co., Ltd. v. Canon
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`Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) (hereinafter
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`“Gen. Plastic”), and noted that “Petitioner should consider addressing those factors
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`when it refiles its petitions.” Paper 8 at 3. Finally, the Board noted that Wavetamer
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`had “asked for guidance” regarding whether its claim charts in the petitions should
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`be included in the petition word count, and the Board confirmed that it “cannot rely”
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`on information in the claim charts not included in the word count. Id. at 3-4.
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`II. WAVETAMER IS NOT ENTITLED TO DISMISSAL
`Wavetamer fails to carry its burden under 37 C.F.R. § 42.20(c) of establishing
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`it is entitled to dismissal of the petitions under 37 C.F.R. § 42.71(a). Indeed, while
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`Wavetamer makes a series of unconvincing arguments as to why it should be
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`permitted to file “corrected” follow-on petitions, Wavetamer makes no real
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`arguments for why dismissal here is appropriate and why it would otherwise be
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`prejudiced. The arguments that it does make are unavailing.
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`For example, Wavetamer suggests incorrectly that dismissal is appropriate as
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`a “just, speedy, and inexpensive resolution” of this proceeding. Paper 9 at 3 (citing
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`4
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`

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`37 C.F.R. § 42.1(b)). But there is nothing “just” about dismissal here. Wavetamer
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`is trying to avoid the consequences of its own mistakes. Wavetamer is worried that,
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`absent dismissal, its own legal errors will have an even greater negative impact on
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`follow-on petitions. This is a request for special treatment, not justice. But it is
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`Wavetamer, and not Seakeeper, that made Seakeeper’s patents an issue. Seakeeper
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`brought no suit against Wavetamer—an entity that admits that it makes no
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`products—that Wavetamer needs to defend. Seakeeper is just a patent holder
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`defending its patent rights. Accordingly, it would be just to allow this petition to
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`proceed to a decision on institution. Moreover, Wavetamer has refused the more
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`speedy and inexpensive path of requesting adverse judgment, which it could have
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`sought “at any time during [the] proceeding.” See 37 C.F.R. § 42.73(b).
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`Wavetamer is similarly incorrect when it alleges that it is being denied “a day
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`in court.” Paper 9 at 6. Again, it is Wavetamer, and not Seakeeper, that has put
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`Seakeeper’s patents at issue. Moreover, in the absence of a final written decision
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`under 35 U.S.C. § 318(a), Wavetamer will not be estopped from raising any prior art
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`it wishes in district court. See 35 U.S.C. § 315(e). Moreover, to the extent it wishes
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`to proceed before the PTO, as Wavetamer—which has already filed two re-
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`examination requests against Seakeeper’s patents, see Paper 11 ¶ 3—surely knows,
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`it can seek re-examination as well.
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`Wavetamer also claims, incorrectly, that dismissal of the petitions will not
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`5
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`prejudice Seakeeper. Paper 9 at 6.3 In fact, Seakeeper would be prejudiced.
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`Seakeeper
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`incurred significant expense
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`in evaluating and responding
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`to
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`Wavetamer’s two petitions. See Ex. 2017 ¶ 2, IPR2017-01996, Ex. 2002 ¶ 2.
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`Seakeeper prepared and filed a POPR that makes clear that both of Wavetamer’s
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`petitions are fundamentally flawed—and, having reviewed Seakeeper’s analysis,
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`Wavetamer agrees. See Paper 9 at 2-3. Accordingly, Wavetamer has determined
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`that it will no longer pursue these petitions, but it is seeking to avoid a decision from
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`the Board denying institution or the effects of an adverse judgment under 37 C.F.R.
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`§ 42.73(b)(4) after admitting that they have “abandon[ed] the contest.” One of the
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`General Plastic factors includes whether, at the time of filing of a second petition,
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`Petitioner had received the Board’s institution decision. See Gen. Plastic at 16.
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`Again Wavetamer merely seeks to avoid a decision that will weigh against it in a
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`General Plastic analysis. Moreover, allowing refiling, or granting early dismissal,
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`will be burdensome and expensive for Seakeeper, and denies Seakeeper the benefit
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`of its incurred legal expense. See Ex. 2017 ¶ 4, IPR2017-01996, Ex. 2002 ¶ 2.
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`Most importantly, Wavetamer is incorrect when it argues that the fundamental
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`3 Bizarrely, in support of this argument, Wavetamer argues that the issue here is
`Seakeeper’s fault, as Seakeeper “was provided drafts of the petitions prior to filing
`and … elected not to point out the mistakes before he [sic] petitions were filed.”
`Paper 9 at 6 (emphasis added). Of course, it is not the responsibility of a patent
`owner faced with a demand for settlement to point out the fundamental legal errors
`in the work product provided by a potential petitioner.
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`6
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`

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`legal flaw in its petitions is just an inadvertent and minor error that does not go to
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`the merits of the case. See Paper 9 at 3-6. This is not just a minor error. Instead,
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`Wavetamer has filed with its petitions, and regularly relied upon and cited, a
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`document that Wavetamer concedes (but only after Seakeeper argued the point in its
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`brief) is simply “not prior art.” Id. at 1. Wavetamer now takes the position, after
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`the fact, that this failure occurred because of a lack of attention, and that it always
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`intended to use the Adams publication. See id. at 3-4. However, the petitions,
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`declarations, and exhibits all refer explicitly to the Adams patent, and the Adams
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`publication appeared nowhere in the record. See, e.g., Paper 1; Ex. 1003; IPR2017-
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`01996, Paper 1; IPR2017-01996, Ex. 1003. Notably, moreover, the attorney who
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`admits that he drafted the petitions never states in his Declaration that he recognized
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`that the Adams patent is not prior art, or that he checked whether the Adams patent
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`and challenged patents were from the same inventive entity.4 See Paper 10 ¶ 6.
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`Wavetamer’s assertion that Seakeeper is seeking “to gain an unfair advantage
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`from a technical mistake” Paper 9 at 6-7, is baffling. Wavetamer made serious legal
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`4 The junior attorney on the case separately states that she noticed the identity of the
`inventors and was aware that the Adams patent was not prior art, but she was not
`responsible for drafting the petitions. See Paper 11 ¶¶ 5, 8. The evidence leaves
`open whether the drafting attorney checked the identity of inventors of the
`challenged patents against the inventors of the Adams patent. The Adams patent
`published the month before the priority date of the ’782 and ’930 patents, but does
`not qualify as prior art under 35 U.S.C. 102(a) or (e) because they are all by the same
`inventors. See Paper 7 at 14-19. By instead relying only on the dates of the Adams
`patent, one could wrongly believe it was prior art under 102(a) or 102(e).
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`7
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`errors in petitions it worked on over the course of two years. See Paper 10 ¶¶ 2, 6;
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`Paper 1. Wavetamer is trying to escape the consequences of its errors by using
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`Seakeeper’s POPR as a roadmap to fix its mistakes in a follow-on petition. There is
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`nothing “unfair” about Wavetamer being held to the Rules governing IPRs.
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`III. WAVETAMER IS NOT ENTITLED TO AUTHORIZATION TO FILE
`FOLLOW-ON PETITIONS
`Wavetamer has similarly not met its burden under 37 C.F.R. § 42.20(c) of
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`establishing that it is entitled to the second part of its requested relief—
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`“authoriz[ation]” to file follow-on petitions fixing the errors that Wavetamer learned
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`of only after they were pointed out in Seakeeper’s POPR. See Paper 9. As noted
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`above, while Wavetamer had permission from the Board to file a motion to dismiss,
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`Wavetamer did not have permission to file a motion to “Authorize Filing of
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`Corrected Petitions.” See Paper 8. As such, Wavetamer’s motion itself violates the
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`Board’s rules, see 37 C.F.R. § 42.20, and should be denied on those grounds alone.5
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`Furthermore, the relief that Wavetamer is seeking is both improper and
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`premature. Whether Wavetamer’s follow-on petitions should be allowed to proceed
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`in light of General Plastic and 35 U.S.C. § 325(d) is a question that should be
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`addressed by the Board if and when Wavetamer files such follow-on petitions.6 That
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`5 While the Board mentioned General Plastic, the Board stated only that “Petitioner
`should consider addressing those factors when it refiles its petitions.” Paper 8 at 3.
`6 For this reason too, Wavetamer’s citation of Zhongshan Broad Ocean Motor Co.
`Ltd. eta al. v. Nidec Motor Corp., IPR2015-00762, Paper 16 (P.T.A.B. Oct. 5. 2015),
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`8
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`decision will take into account the disposition of these petitions, and what
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`Wavetamer does to fix the errors pointed out by Seakeeper and the Board.
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`Regardless, the General Plastic factors here demonstrate that follow-on
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`petitions are inappropriate. For example, Factor 1 is whether the “same petitioner
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`previously filed a petition directed to the same claims of the same patent.” Gen.
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`Plastic at 16. Wavetamer states this is exactly what it will do. See Paper 9 at 1.
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`Factors 2 and 4 concern when Wavetamer learned of the prior art it will assert
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`in a second petition—presumably the Adams publication—in relation to the filing
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`of the first and second (follow-on) petitions. See Gen. Plastic at 16. Wavetamer’s
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`attorneys have stated that they were aware of this reference just under two years
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`before filing the first petition, see Paper 11 ¶¶ 2-3, which means (even if they file
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`immediately) well over three years before a future second petition.
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`Factor 3 concerns whether, at the time of filing of the second petition “the
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`petitioner already received the patent owner’s preliminary response to the first
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`petition or received the Board’s decision on whether to institute review in the first
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`petition.” Gen. Plastic at 16. Wavetamer has received and learned from Seakeeper’s
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`POPR in IPR2017-01931, and (as its motion makes clear) is using that POPR as a
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`guide in IPR2017-01996 as well. Moreover, Wavetamer has sought and received
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`“guidance” in a Board Order regarding its word limit violations. See Paper 8 at 3-4.
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`see Paper 9 at 7, is inapposite.
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`9
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`Factor 5 is whether the petitioner provides “adequate explanation” for the time
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`elapsed between the filings of the first and follow-on petitions. Gen. Plastic at 16.
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`But Wavetamer’s explanation is not “adequate”—they have instead conceded that
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`they are using Seakeeper’s POPR (and possibly the Board’s guidance on word count)
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`to try to fashion better petitions. See, e.g., Paper 9 at 2-3.
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`Factor 6 concerns the finite resources of the Board. See Gen. Plastic at 16.
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`Here, Wavetamer is consuming significant resources to try to adjust its fatally flawed
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`petitions to make out a stronger case. Moreover, if the Board permits Wavetamer to
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`use Seakeeper’s POPR as a roadmap to fix its petitions, the Board will be
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`disincentivizing patent owners from raising errors such as this in POPRs, and thus
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`will be further burdening the Board’s limited resources.
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`Factor 7 concerns the timing requirements of the final determination, see Gen.
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`Plastic at 16, which might become relevant should Wavetamer attempt to later join
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`a follow-on petition with one of its existing petitions.
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`IV. CONCLUSION
`Accordingly, for the reasons above, Seakeeper requests that the Board deny
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`Wavetamer’s motion in its entirety. Even if the Board grants the motion to dismiss,
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`moreover, Seakeeper asks that the Board reserve for if and when Wavetamer files
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`follow-on petitions the determination of whether Wavetamer is permitted to do so.
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`December 26, 2017
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`
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`Respectfully submitted by: /Edward J. Kelly/
`
`
`
`
` Attorney for Patent Owner
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`10
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this OPPOSITION TO MOTION TO
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`DISMISS THE PETITIONS AND AUTHORIZE FILING OF CORRECTED
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`PETITIONS was served by filing this document through the Patent Trial and Appeal
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`Board End to End (PTAB E2E) as well as providing a courtesy copy via e-mail to
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`the following attorneys of record for the Petitioner listed below:
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`Lead Counsel:
`
`David D. Bennett (Reg. No. 32,194)
`COATS & BENNETT, PLLC
`1400 Crescent Green, Suite 300
`Cary, NC 27518
`T: 919-854-1844
`F: 919-854-2084
`dbennett@coatsandbennett.com
`
`Back-up Counsel: Brandee N. Woolard (Reg. No. 68,785)
`COATS & BENNETT, PLLC
`1400 Crescent Green, Suite 300
`Cary, NC 27518
`T: 919-854-1844
`F: 919-854-2084
`bwoolard@coatsandbennett.com
`
`
`Dated:
`
`December 26, 2017
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`Respectfully submitted,
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`By:
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`
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`/Crena Pacheco/
`Name: Crena Pacheco
`ROPES & GRAY LLP
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