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`Filed on behalf of: Jaguar Land Rover Limited
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`Entered: December 19, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`BENTLEY MOTORS LIMITED
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`and
`BENTLEY MOTORS, INC.,
`Petitioner,
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`v.
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`JAGUAR LAND ROVER LIMITED,
`Patent Owner.
`_______________________
`Case IPR2019-01502
`Patent RE46828
`_______________________
`
`PATENT OWNER’S SUR-REPLY
`IN SUPPORT OF
`THE PRELIMINARY RESPONSE
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`IPR2019-01502 (USP RE46828)
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`Patent Owner’s Sur-Reply
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`Exhibit List
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`Exhibit
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`Description
`Defendants’ Preliminary Invalidity Contentions, Jaguar Land Rover
`Ltd. v. Bentley Motors Ltd., No. 2:18-CV-320 (E.D. Va. Nov. 5,
`2019)
`Bob Sorokanich, Wrecked Porsche 959 Sells for $467,500 at
`Monterey Auction, Road & Track (Aug. 24, 2018)
`Amended Complaint for Patent Infringement, Jaguar Land Rover
`Ltd. v. Bentley Motors Ltd., No. 2:18-CV-320 (E.D. Va. Nov. 1,
`2018), ECF No. 31 (“Am. Compl.”)
`David Colman, At Long Last: Federalizing the Porsche 959 Has
`Been a Long Road. Now, at Least, It Can Be Traversed, Autoweek
`(Sept. 14, 2003)
`Reserved
`
`Reserved
`
`CPI Inflation Calculator, Bureau of Labor Statistics,
`https://www.bls.gov/cgi-bin/cpicalc.pl
`VCARS, Dual Queen’s Awards in Diamond Year, AA Cars (Apr.
`23, 2008)
`Kevin Hepworth, First Drive, Daily Telegraph (Sydney, Austl.)
`(Oct. 9, 2004) (Exhibit D to Am. Compl., ECF No. 31-4)
`Land Rover Wins Two Queen’s Awards, The Manufacturer (June 27,
`2008) (Exhibit E to Am. Compl., ECF No. 31-5)
`Richard Russell, Seize Control of All Terrains, Globe & Mail (May
`19, 2005) (Exhibit F to Am. Compl., ECF No. 31-6)
`Jan Prins & David Armstrong, Terrain Response, Land Rover
`Official Magazine (Exhibit G to Am. Compl., ECF No. 31-7)
`Land Rover LR3 Wins Prestigious 2005 Motor Trend SUV of the
`Year, PR Newswire (Oct. 27, 2004) (Exhibit H to Am. Compl., ECF
`No. 31-8)
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`i
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`IPR2019-01502 (USP RE46828)
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`Patent Owner’s Sur-Reply
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`Exhibit
`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
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`2023
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`2024
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`2025
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`Description
`David Booth, 2007 Range Rover A Masterpiece in the SUV Gallery,
`Star Phoenix (Feb. 2, 2007) (Exhibit I to Am. Compl., ECF No.
`31-9)
`John LeBlanc, Nothing in Its Way: The Land Rover LR3 Can Go
`Anywhere You Want Thanks to the New Terrain Response System,
`The Gazette (Montreal) (Nov. 15, 2004) (Exhibit K to Am. Compl.,
`ECF No. 31-11)
`Terrain Response Wins Henry Ford Award: Land Rover Has Won a
`Henry Ford Technology Award for Its Patented Terrain Response
`System, PAGCMS (2005)
`Jaguar Land Rover Limited’s Opposition to Defendants’ Motion to
`Dismiss, Jaguar Land Rover Ltd. v. Bentley Motors Ltd., No. 2:18-
`CV-320 (E.D. Va. Dec. 3, 2018), ECF No. 38
`Motor Trend Names 2005 Sport/Utility of the Year Winner, Motor
`Trend (Oct. 27, 2004)
`Arthur St. Antoine, Long-Term Verdict: 2005 Land Rover LR3 HSE,
`Motor Trend (Oct. 1, 2006)
`John Kiewicz, 2005 SUV of the Year: Land Rover LR3, Motor Trend
`(Oct. 28, 2004)
`Opinion and Order, Jaguar Land Rover Ltd. v. Bentley Motors Ltd.,
`No. 2:18-CV-320 (E.D. Va. June 26, 2019), ECF No. 45
`The Queen’s Awards for Enterprise, Background Note: Business
`Awards, Department for Business, Innovation and Skills Enterprise
`Directorate
`The Queen’s Awards for Enterprise: Innovation, Winner’s List
`(2006-2010)
`Rule 16(b) Scheduling Order, Jaguar Land Rover Ltd. v. Bentley
`Motors Ltd., No. 2:18-CV-320 (E.D. Va. Sept. 25, 2019), ECF No.
`55
`U.S. Patent No. 5,366,041 (“Shiraishi”)
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`ii
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`Patent Owner’s Sur-Reply
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`Exhibit
`2026
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`2027
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`2028
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`2029
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`2030
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`Description
`RM Sotheby’s – 1985 Porsche 959 Paris-Dakar, The Porsche 70th
`Anniversary Auction 2018 (Description of RM Sotheby’s Auction
`Lot No. 196)
`RM Sotheby’s – 1988 Porsche 959 Sport, Paris 2017 (Description of
`RM Sotheby’s Auction Lot No. 131)
`Email from Andrew Kellogg to Brian Murphy Re: Bentley Motors v.
`Jaguar Land Rover IPR2019-01502 (Dec. 5, 2019)
`Email from Jonathan Strang to Robert Colletti Re: IPR2019-01502
`and -01539 (Bentley v. JLR) (Dec. 4, 2019)
`Order, President & Fellows of Harvard College v. Micron
`Technology, Inc., No. 17-1729-LPS-SRF (D. Del. Jan. 8, 2018)
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`iii
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`IPR2019-01502 (USP RE46828)
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`I.
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`Introduction
`The POPR demonstrated that Petitioners failed to demonstrate a reasonable
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`Patent Owner’s Sur-Reply
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`likelihood of prevailing and that discretionary denial is appropriate. Petitioners’
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`Reply did not change anything. The Porsche art still fails to teach all of the Base
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`Claim elements, Petitioners still failed to show that the art—the Porsche 959
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`manual and the ATZ articles—are prior-art printed publications, and discretionary
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`denial is still appropriate. POPR 30-42.
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`With respect to the ATZ articles, Petitioners abandoned their original (albeit
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`conclusory) public-availability argument from the Petition, and impermissibly set
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`forth an entirely new public accessibility theory relying on old, but uncited,
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`evidence. The Board should disregard Petitioners’ untimely arguments and deny
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`the Petition, especially given that Petitioners’ request to submit new evidence was
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`simply an excuse for a do-over. As for the new evidence itself, Petitioners’ have no
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`excuse for their delay and lack of diligence. Further, the belated exhibits had a
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`typographical error, and Petitioners slipped in a fix for that, too, without obtaining
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`Board permission beforehand.
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`In any event, the Board does not need to address any of these issues.
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`Discretionary denial is wholly appropriate, especially in view of Petitioners’ delay
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`and lack of diligence. Petitioners do not contest that they have had the asserted
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`references since September 2017, but delayed filing this IPR until after the Court
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`IPR2019-01502 (USP RE46828)
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`and parties invested significant effort in the case, including the § 101 motion where
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`Patent Owner’s Sur-Reply
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`the Court analyzed much of the objective evidence presented in this IPR.
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`II.
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`Petitioners Failed to Demonstrate Public Availability of the Porsche Art
`Petitioner failed to demonstrate that the Porsche 959 manual and the Porsche
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`ATZ articles are prior-art printed publications. POPR 30-42. Because they need
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`both, the Board may deny institution on the basis of the manual alone. As for the
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`ATZ articles, the POPR established that Petitioners failed to “set forth their case
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`‘with particularity’ as required by 35 U.S.C. § 312(a)(3).” POPR 38-42.
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`“It is of the utmost importance that petitioners in the IPR proceedings adhere
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`to the requirement that the initial petition identify ‘with particularity’ the
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`‘evidence that supports the grounds for the challenge to each claim.’” Acceleration
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`Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (emphasis
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`added); 35 U.S.C. § 312(a)(3)); 37 C.F.R. § 42.104(b). Further, the Board may
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`institute only if “the information presented in the petition” demonstrates a
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`reasonable likelihood of prevailing. 35 U.S.C. § 314(a) (emphasis added).
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`Over Patent Owner’s objections, the Board granted Petitioners leave to file a
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`Reply with the same “declarations” from Mr. Kahn that it filed in the ’01539 IPR
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`(Ex. 2028), but the Board did not (and cannot) waive the statutory requirements of
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`§§ 312 and 314, nor did the Board waive its rule that Petitioners’ “reply may only
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`respond to arguments raised in the [POPR].” 37 C.F.R. § 42.23(b). Accordingly,
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`IPR2019-01502 (USP RE46828)
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`the Board should decide this case on the Petition, not on any untimely Reply
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`Patent Owner’s Sur-Reply
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`arguments and evidence. Wasica Fin. GmbH v. Cont’l Auto. Sys. Inc., 853 F.3d
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`1272, 1286 (Fed. Cir. 2017) (“We also are unpersuaded by [Petitioner’s] attempts
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`to cure the petition’s deficiencies in its subsequent briefing . . . .”); Teoxane S.A. v.
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`Allergan, IPR2017-01906, Paper 15 at 10-13 (Mar. 9, 2018) (disregarding
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`arguments improperly raised in a POPR Reply); Renesas Elecs. Corp. v. Lone Star
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`Silicon Innovations, IPR2017-01869, Paper 33 at 45-46 (Mar. 25, 2019) (sur-reply
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`does not cure improper reply).
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`To be sure, Petitioners far exceeded scope of a proper Reply (and also
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`skirted its eight-page limit by improperly single spacing). In doing so, Petitioners
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`demonstrated that their Petition is sorely lacking in the statutorily required
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`particularity, and that its new exhibits were merely a ruse for a do-over on public
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`availability. Petitioners barely address the new exhibits, instead focusing on new
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`arguments regarding never-before discussed portions of the old ATZ articles.
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`Reply 5-8. Petitioners fault Patent Owner for not concocting and rebutting these
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`arguments in the POPR. Id. But as the Board has long held, “[i]t would be unfair to
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`expect the Patent Owner to conjure up arguments against its own patent and just as
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`inappropriate for the Board to take the side of the Petitioner to salvage an
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`inadequately expressed ground.” Liberty Mut. Ins. Co. v. Progressive Casual Ins.
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`Co., CBM2012-00003, Paper 8 at 14 (Oct. 25, 2012).
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`3
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`IPR2019-01502 (USP RE46828)
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`Patent Owner’s Sur-Reply
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`Sticking to Petitioners’ original, albeit conclusory, argument that the ATZ
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`articles were available in a library, Petitioners still failed to meet their burden even
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`if the Board considers the belated exhibits. Like Mr. Kahn’s unsworn letters, these
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`are not declarations, but out-of-court statements lacking the required perjury
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`warning. 37 C.F.R. §§ 1.68, 42.2, 42.63(a). Mr. Kahn, presumably not a U.S.
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`citizen, refused to be bound by U.S. perjury laws when testifying in a U.S. case. He
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`instead mentions the British “Statutory Declarations Act of 1835,” but there is no
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`indication that it provides equivalent penalties to guarantee trustworthiness.
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`Further, Mr. Kahn is presumably a British layperson, not a U.S. patent attorney.
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`Nonetheless, he uses legal terms such as “catalogued” and “shelved,” without
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`explaining whether the articles could be found by subject matter. His conclusory
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`testimony is especially troubling as all four articles would presumably be
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`“catalogued” under the same subject, but they received different “shelfmarks.”
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`Exs. 1002F-H (“(P)VJ30-G(2)”), Ex.1002I (“1833.00”). Without more, it is
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`impossible to determine what he meant by his conclusory statements.
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`Further, and contrary to Petitioners’ representations to Patent Owner and the
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`Board, Petitioners did not merely substitute the same declarations that they filed in
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`the ’01539 IPR just days after filing this Petition. Exs. 2028, 2029. Rather, they
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`also “correct[ed] a typographical date error.” Reply 8 n.8; Ex. 1002F. This
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`corrected exhibit is dated December 4, but Petitioners failed to note the error in
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`4
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`their December 3 and 4 emails to Patent Owner and the Board. Exs. 2028, 2029. In
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`Patent Owner’s Sur-Reply
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`any event, this exercise highlights two fatal defects in the Petition.
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`First, Petitioners could have corrected—with Board permission—such a
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`typographical error while retaining their filing date (and thus avoiding their one-
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`year bar that expired on August 30, 2019). 37 C.F.R. § 42.104(c). Petitioners
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`cannot, however, keep adding substance until they get it right while retaining their
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`filing date. Axis Commc’ns AB v. Avigilon Fortress Corp., IPR2019-00235, Paper
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`19 at 6-10 (June 4, 2019). Second, Petitioners revealed that they have only their
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`own delay and lack of diligence to blame for their untimely submission: they
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`delayed requesting the originally filed unsworn letters until “the end of July” 2019,
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`and received them a week later on August 7. They received their subsequently
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`requested declarations on August 20, four days after filing this Petition. Petitioners
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`likely discovered the date error sometime after November 27, when they first
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`reached out to Patent Owner (Ex. 2029), and by December 4, they had an updated
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`exhibit. Ex. 1002F. Petitioners have no excuse for their failure to timely seek a
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`proper declaration in the first place, especially given this speedy turnaround with
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`Mr. Kahn—and they had years to obtain a proper declaration.
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`And to be sure, the result is the same even if the Board concludes that the
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`ATZ articles were publicly available. The Porsche art still fails to teach all of the
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`Base Claim elements, the Porsche manual was not publicly available, and as
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`5
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`discussed in the next section, discretionary denial is still warranted.
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`Patent Owner’s Sur-Reply
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`III. The Board Should Exercise Its Discretion and Deny This Defective
`Petition
`Nothing presented in the Reply weighs against a discretionary denial.
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`Rather, Petitioners confirmed that they have no excuse for their delay. They do not
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`dispute that they have had the Porsche references since September 2017, and they
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`admit that they waited until after the Court and the parties invested significant
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`effort, including the Court’s lengthy opinion analyzing much of the same objective
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`evidence presented here. Ex. 2021 at 28-31 (finding that “articles and reviews by
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`third parties praising the Terrain Response technology. . . [and] not[ing] the
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`inventive features” demonstrated that the claims recite an “inventive concept”).
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`Petitioners argue that they will “seriously consider requesting a stay” if the
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`Board institutes this IPR. Reply 2. Petitioners’ waffling simply confirms that they
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`will not seek a stay, consistent with their position in Court. There, Petitioners
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`repeatedly represented they might seek a stay if the IPRs cover all of the asserted
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`claims. Ex. 1059 at 11-12, 17. Because the IPRs do not cover all of the asserted
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`claims (Reply 2 n.5), Petitioners will not seek a stay—at least according to what
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`they told the Court. Further, Petitioners do not cite any cases where the Court
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`stayed litigation pending an IPR that did not cover all of the challenged claims.
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`Indeed, the opposite is true—the Court is less likely to stay when the IPR does not
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`cover the asserted claims. President & Fellows of Harvard Coll. v. Micron Tech.,
`6
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`IPR2019-01502 (USP RE46828)
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`No. 17-1729 (D. Del. Jan. 8, 2018) (Ex. 2030).
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`Patent Owner’s Sur-Reply
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`Petitioners also falsely state that their expert testimony on the merits is “un-
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`contradicted” (Reply 4-5). Dr. Bower’s conclusory testimony on the key factual
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`issue is contradicted by the ’528 patent specification and is due no weight. POPR
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`16-20 (“Dr. Bower simply makes a conclusory assertion without considering the
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`overwhelming intrinsic evidence to the contrary.”).
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`Petitioners focus on Precision Planting (Reply 3-5), but unlike here, that
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`panel was presented with a petition that challenged all of the asserted claims, no
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`§ 325(d) issues, and a Court that had expended practically no effort to date.
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`Precision Planting v. Deere & Co., IPR2019-01048, Paper 17 at 9-19 (Dec. 4,
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`2019). In contrast, the Court (and parties) here have already expended significant
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`effort evaluating much of the objective evidence and found that the claims recite an
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`inventive concept. Ex. 2021 at 28-31.
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`Crucially, oral argument in Precision Planting will occur six weeks before
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`the jury trial, and that panel promised to “to issue a final written decision as soon
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`as practicable after oral argument to assist the District Court.” Precision Planting
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`9-10. Here, the Board need not commit itself to such a heroic effort, as our oral
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`argument would likely fall just before (or after) the 2020 Holiday season, roughly
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`2.5 months after the District Court’s trial date. On that point, Petitioners contend
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`that the jury trial date might change. That is true to some extent in every case, but
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`7
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`IPR2019-01502 (USP RE46828)
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`here, the Court was adamant: “Nope. That’s your trial date.” Ex. 1059 at 35
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`Patent Owner’s Sur-Reply
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`(emphasis added). Therefore, the Board’s decision would not help the trial court,
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`but it would give Petitioners their objective: a second bite at the invalidity apple.
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`Petitioners also rely on Abbott Vascular, but that case presented the Board
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`with a situation that is different than the one here in nearly every respect: (i) the
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`petition was filed just a few months after the complaint was served—even before
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`the defendant/petitioner filed its answer; (ii) the POPR did not challenge the merits
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`of the petition; (iii) the patent owner did not oppose petitioner’s pre-institution
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`motion to stay pending IPR, (iv) the patent owner could not show overlapping
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`invalidity theories because the parties had not yet exchanged invalidity
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`contentions, (v) the petitioner will present in court different invalidity theories
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`based on specific products and unpublished technical information disclosing
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`specific claimed measurements, (vi) the petitioner presented a strong case of
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`unpatentability, (vii) the facts did not warrant a denial under § 325(d) because the
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`art contained specific teachings missing from the art before the Examiner, and
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`(viii) the Court expressly stated its interest in a post-institution stay. Abbott
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`Vascular v. FlexStent, IPR2019-00882, Paper 11 at 21-31 (Oct. 7, 2019); id. Paper
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`9 at 1-10 (Aug. 5, 2019).
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`Accordingly, discretionary denial is appropriate here.
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`IPR2019-01502 (USP RE46828)
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`Patent Owner’s Sur-Reply
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`Respectfully submitted,
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`Dated: December 19, 2019
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`By: / Jonathan M. Strang /
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`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
`
`Clement Naples (Reg. No. 50,663)
`clement.naples@lw.com
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`Telephone: 212.906.1200
`Fax: 212.751.4864
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`Counsel for Patent Owner
`Jaguar Land Rover Limited
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`Patent Owner’s Sur-Reply
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 19th day of
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`December, 2019, a true and correct copy of the foregoing Patent Owner’s Sur-
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`Reply In Support Of The Preliminary Response and Exhibits were served by
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`electronic mail on Petitioner’s lead and backup counsel at the following email
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`address:
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`Edgar H. Haug (Reg. No. 29,309)
`Brian P. Murphy (Reg. No. 34,986)
`Robert E. Colletti (Reg. No. 76,417)
`Georg C. Reitboeck (pro hac vice to be requested)
`Christopher F. Gosselin (pro hac vice to be requested)
`Haug Partners LLP
`745 Fifth Avenue
`New York, NY 10151
`Tel. 212.588.0800
`Fax 212.588.0500
`BentleyIPR@haugpartners.com
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`By: / Jonathan M. Strang /
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
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`Counsel for Patent Owner
`Jaguar Land Rover Limited
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