UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`BENTLEY MOTORS LIMITED
`and
`BENTLEY MOTORS, INC.
`Petitioner
`v.
`JAGUAR LAND ROVER LIMITED
`Patent Owner
`
`
`
`
`U.S. Patent No. RE46,828
`IPR2019-01502
`
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
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`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF AUTHORITIES .......................................................................................................... ii 
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`TABLE OF CONTENTS
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`I. 
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`II. 
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`REPLY TO PATENT OWNER’S DISCRETIONARY DENIAL
`ARGUMENT UNDER 35 U.S.C. § 314(a) .........................................................................1 
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`REPLY TO PATENT OWNER ARGUMENT CHALLENGING
`PRINTED PUBLICATION STATUS OF THE ATZ ARTICLE .......................................5 
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`TABLE OF AUTHORITIES
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`Cases 
`Abbott Vascular, Inc. v. Flexstent, LLC,
`IPR2019-00882, Paper 11 (PTAB Oct. 7, 2019) ................................................................ 5
`
`Bumble Trading Inc. v. Match Group, LLC,
`IPR2019-01000, Paper 10 (PTAB Nov. 6, 2019) ............................................................... 4
`
`Frontier Therapeutics v. Medac,
`IPR2016-00649, Paper 10 (PTAB Sept. 1, 2016) ............................................................... 8
`
`Next Caller v. TRUSTID, Inc.,
`IPR2019-00961, Paper 10 (PTAB Oct. 16, 2019) ...................................................... 1, 3, 4
`
`NHK Spring v. Intri-Plex,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ....................................................... 1, 2, 3
`
`Precis. Planting v. Deere,
`IPR2019-01048, Paper 17 (PTAB Dec. 4, 2019) ............................................................ 3, 4
`
`Telefonaktiebolaget LM Ericsson v. TCL Corp.,
`941 F.3d 1341 (Fed. Cir. 2019)........................................................................................... 8
`
`Voter Verified, Inc. v. Premier Election Sols., Inc.,
`698 F.3d 1374 (Fed. Cir. 2012)........................................................................................... 6
`
`Workspot, Inc. v. Citrix Sys., Inc.,
`IPR2019-01002, Paper 12 (PTAB November 20, 2019) .................................................... 9
`
`Statutes 
`35 U.S.C. § 101 ........................................................................................................................... 2, 4
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`35 U.S.C. § 102(b) .......................................................................................................................... 6
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`35 U.S.C. § 314(a) .......................................................................................................................... 1
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`35 U.S.C. § 315(b) .......................................................................................................................... 2
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`35 U.S.C. § 325(d) ...................................................................................................................... 3, 4
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`Rules 
`Fed. R. Evid. 902(6) ........................................................................................................................ 7
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`I. REPLY TO PATENT OWNER’S DISCRETIONARY DENIAL
`ARGUMENT UNDER 35 U.S.C. § 314(a)1
`The co-pending EDVA patent litigation between the parties is hardly in the
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`“advanced state” contemplated by the NHK Spring2 and Next Caller3 cases relied
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`on by Patent Owner to support a request for discretionary denial under 35 U.S.C.
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`§ 314(a). Prelim. Resp. 48–51. Discovery started only recently because Petitioner
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`had filed a motion to dismiss that District Judge Davis denied on June 26, 2019,
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`and the parties did not serve any discovery before the September 17, 2019 status
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`conference. Ex. 1059, 16:4, 17:23–18:5, 23:4–6. Patent Owner recently stated it
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`may include additional patent claims, which could well extend the schedule.
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`If the Board institutes this inter partes review (“IPR”) and related IPR2019-
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`01539, the EDVA litigation may be stayed. Judge Davis opened the status
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`conference by asking counsel why “shouldn’t this matter be stayed
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`pending . . . that initial [Board] decision about the petition.” Id. at 2:22–3:4. He
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`ended the conference by purposefully scheduling Markman hearing and expert
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`discovery dates “out past the six-month deadline for the institution decision [Feb.
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`25 and March 12, 2020] so that the Court could at that point, if institution takes
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`place, make a decision about whether it wishes to move forward or not.” Id. at
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`1 The Board authorized an 8-page Reply by email on December 5, 2019.
`2 NHK Spring v. Intri-Plex, IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) Prec.
`3 Next Caller v. TRUSTID, Inc., IPR2019-00961, Paper 10 (PTAB Oct. 16, 2019).
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`28:7–24.4 Judge Davis further recognized that the district court case is in a
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`“unique . . . procedural posture” and may be ripe for a stay if the Board institutes
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`an IPR proceeding. Id. at 30:9–19. Petitioner will seriously consider requesting a
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`stay of the EDVA court proceeding if the Board institutes inter partes review in
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`IPR2019-01502 and IPR2019-01539, dependent upon what the Board decides.5
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`Petitioner has not delayed filing this IPR, Patent Owner’s protestations to the
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`contrary notwithstanding. Prelim. Resp. 49. After Petitioner’s motion to dismiss
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`for lack of subject matter eligibility under § 101 was denied, Petitioner filed its
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`Answer to the Amended Complaint on July 10th and the Petition on August 16th,
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`two weeks before the August 30, 2019 § 315(b) bar date. As the Board found in
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`the precedential NHK Spring decision, a Petition filed shortly before the bar date is
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`“timely, and Patent Owner does not apprise us of any tactical advantage, or
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`opportunity for tactical advantage, that Petitioner gained by waiting to file the
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`Petition,” precisely the situation here. NHK Spring at 19; compare with Next
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`Caller, Paper 10 at 3, 15–16 (6-month delay between related IPR petitions). Judge
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`4 Pleadings may be amended until January 24, 2020. Ex. 2024 ¶ 11. Judge Davis
`scheduled a Markman hearing for March 20, 2020, completion of expert
`discovery for July 15, 2020, dispositive motions for July 22, 2020, and a trial
`“currently scheduled” for October 13, 2020, all subject to court-ordered
`“extensions of time.” Ex. 1059, 34:17-35:25; Ex. 2024, 1, ¶¶ 12-14.
`5 Petitioner’s counsel told Judge Davis “we would be fine with a stay” if the claims
`alleged to be infringed are covered by the IPRs. Ex. 1059, 11:23–12:18. Patent
`Owner subsequently added dependent claim 31 to its infringement contentions,
`and claim 31 is not currently covered by this IPR or related IPR2019-01539.
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`Davis even quizzed counsel for both parties about any prejudice if the district court
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`case was stayed. Ex. 1059, 21:8–25:22. The Board will draw its own conclusions,
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`but Petitioner submits there is no prejudice to Patent Owner because:
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` Patent Owner did not serve the complaint for nearly three months,
`while the parties engaged in settlement discussions; and
` Judge Davis pushed back the Markman hearing and expert
`discovery dates to preserve the option to stay the case.
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`Petitioner further submits that the facts of this case are very similar to the
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`
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`recent Precision Planting case.6 In Precision Planting, the Board rejected patent
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`owner’s discretionary denial argument, despite substantial overlap in claims and
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`obviousness theories, because 1) there were claim differences at issue, 2) the
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`district court case was not sufficiently advanced, 3) there were no § 325(d) issues,
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`4) there were no prior petitions challenging the patent, and 5) the Board
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`determined Petitioner was reasonably likely to prevail in having the challenged
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`claims found unpatentable. Precision Planting, Paper 17 at 9. The Board also
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`emphasized that, unlike NHK Spring, the district court “has not issued a claim
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`construction ruling, fact discovery does not close until February 2020, expert
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`discovery ends in June 2020, and dispositive motion briefing is scheduled to be
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`completed in August 2020,” two months before the final written decision deadline.
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`Precision Planting at 15–16; compare with Next Caller at 11–15 (discretionary
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`denial because a Markman decision had issued, final invalidity contentions had
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`6 Precis. Planting v. Deere, IPR2019-01048, Paper 17, 9–24 (PTAB Dec. 4, 2019).
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`been filed, discovery was nearly complete, and a July 2020 trial was “on track”).
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`We have nearly the same fact pattern in the present case, and all five Precision
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`Planting factors favor institution to review the unpatentable claims of U.S. Patent
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`No. RE46,828 (“the ’828 patent”). See also Bumble Trading Inc. v. Match Group,
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`LLC, IPR2019-01000, Paper 10, 40–49 (PTAB Nov. 6, 2019) (IPR instituted
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`despite overlapping invalidity issues, district court denial of § 101 motion, and
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`Markman hearing completed with oral rulings, because discovery was still open,
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`trial was a year away, and no prior petitions, § 325(d) arguments, or claim
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`constructions were offered by patent owner).
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`Addressing the Precision Planting factors, the EDVA trial is “currently
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`scheduled” for October 13, 2020, four months before the February 2021 statutory
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`IPR final decision date. “Courts can, and often do, extend or accelerate deadlines
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`and modify case schedules for myriad reasons.” Precision Planting at 15. Patent
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`Owner’s intent to add new infringement claims could well cause such an extension.
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`And Patent Owner’s make-weight § 325(d) argument, equating Shiraishi
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`(Ex. 2025) to the Porsche 959 Art (Prelim. Resp. 43–45), is a distraction from the
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`central issue of whether the recited “on-road mode” and “at least two off-road
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`modes” patentably distinguish the challenged claims from the prior art.7 The
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`7 Patent Owner’s argument, moreover, presumptively and improperly contends that
`the Porsche 959’s variable control of multiple subsystems are instead a single
`“subsystem” rather than “a plurality of vehicle subsystems,” a contested issue of
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`Patent Office did not consider the Porsche 959 Art or Dr. Bower’s un-contradicted
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`expert testimony on this central point. See e.g., Pet. 3, 8, 9, 17–28 (citing
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`Exs. 1002; 1003; 1004 ¶¶44-46, 48, 184, 185, 190, 191; 1010; 1011; 1021, 425;
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`1022, 308-09).
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`Finally, there is no prior petition challenging the ’828 patent claims, and
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`Petitioner has raised prior public use/on-sale bar defenses in EDVA not raised in
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`the Petition. Ex. 2001, 9, 11, 18, 24; see Abbott Vascular, Inc. v. Flexstent, LLC,
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`IPR2019-00882, Paper 11, 27–31 (PTAB Oct. 7, 2019) (prior use/sale defenses
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`will “enabl[e] the district court to focus its limited trial time on the prior art
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`products, should the need arise” and court stated “[i]f the PTAB institutes IPR, the
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`Court can decide whether a stay is warranted at that time.”). These factors also
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`favor institution, not discretionary denial.
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`In sum, Petitioner submits that discretionary denial is not warranted.
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`II. REPLY TO PATENT OWNER ARGUMENT CHALLENGING
`PRINTED PUBLICATION STATUS OF THE ATZ ARTICLE
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`“When considering whether a given reference qualifies as a prior art ‘printed
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`publication,’ the key inquiry is whether the reference was made ‘sufficiently
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`accessible to the public interested in the art’ before the critical date.” Voter
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`Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012)
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`law and fact. Compare Pet. 20-23 (citing Exs. 1002B, 355-56; 1003, 54; 1004 ¶¶
`44-46, 48 (citing Ex. 1001, Figs. 5 and 6 “Centre Diff Lock” and “Rear Diff
`Lock” subsystems)) with Prelim. Resp. 9–12.
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`(citations omitted). Patent Owner raises several complaints to the public
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`accessibility evidence provided by Petitioner in support of a finding that the four-
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`part ATZ Article describing the Porsche 959 (Exs. 1002A–D) is a prior art printed
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`publication pursuant to 35 U.S.C. § 102(b). Pet. 17–18; Prelim. Resp., 38–42. A
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`careful and objective look at the article itself establishes that ATZ is a longstanding
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`German automotive technical journal, published monthly since it was founded in
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`1898. Exs. 1002A–D (4th page of each exhibit at top).
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`The translated publication, copyright, and table of contents page states that
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`ATZ (“Automobiltechnische Zeitschrift”) is a “[t]echnological-scientific journal
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`for the entire motor vehicle field. Founded in 1898 as ‘Der Motorwagen’ [The
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`Motorized Vehicle] • Organ of the VDI [Association of German Engineers] Motor
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`Vehicle Technology Society and the DIN Road Vehicle Engineering Standards
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`Committee (FAKRA) at the DIN German Institute for Standardization.”
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`Exs. 1002A–D (4th page at top). The publisher, W. Keller & Co., Stuttgart, lists a
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`permanent editorial, production, advertising, and administrative staff for the ATZ
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`Journal, a copyright date of 1986, bibliographic identifiers, and extensive keyword
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`search terms. Id. at 4th page (left column) and 5th page. Part 1 of the ATZ Article
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`was published in ATZ’s May 1986 Volume 88 No. 5 (88th year of publication, fifth
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`month), part 2 in ATZ’s June 1986 Volume 88 No. 6, part 3 in ATZ’s July/August
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`1986 Volume 88 No. 7/8, and part 4 in ATZ’s September 1986 Volume 88 No. 9.
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`Id. Part 1 indicates the ATZ Article was presented at the “XXIth FISITA
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`CONGRESS 2-6 June1986 in Belgrade,” and it was co-authored by Manfred
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`Bantle and Helmuth Bott, a Porsche Board member responsible for engineering
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`and product development. Ex. 1002A (4th page, top); Ex. 1011 ¶2.
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`Patent Owner, without mentioning any of the above information, contends
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`there is insufficient evidence to establish the ATZ Article as a printed publication,
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`even though Petitioner filed a British Library Research Service letter from Mr.
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`Ziaad Khan dated August 7, 2019. Ex. 1002E. Mr. Khan’s letter confirms the
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`“British Library Public Availability Date (PAD)” for the Porsche ATZ Article and
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`attaches British Library—Science Reference Library date-stamped cover pages and
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`table of contents pages. Id. Rather than acknowledge the date-stamped British
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`Library Research Service evidence, Patent Owner argues the evidence is entitled to
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`no weight. Prelim. Resp. 40–41.
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`The ATZ Article is self-authenticating and “require[s] no extrinsic evidence
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`of authenticity in order to be admitted.” Fed. R. Evid. 902(6). Beyond
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`admissibility, the ATZ Article’s indicia of publication are more than sufficient to
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`establish that Exhibits 1002A–D “constitute printed publication prior art, absent
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`additional evidence indicating otherwise.” Frontier Therapeutics v. Medac,
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`IPR2016-00649, Paper 10, 21–22 (PTAB Sept. 1, 2016). Petitioner submits that
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`the ATZ Article, bearing the traditional hallmarks of publication in the German
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`automotive industry, is a publicly accessible printed publication. Patent Owner has
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`not submitted any contrary evidence.
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`Nonetheless, Petitioner now provides four Statutory Declarations executed
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`by Mr. Khan that identify the British Library “Shelfmark (P)VJ30-G(2)” and
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`“1833.00” for the ATZ Article and attest to the dates the British Library received
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`each issue of the journal, catalogued and shelved it, and made it “available for
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`public use.” Exs. 1002F–I.8 Each Statutory Declaration attaches British Library
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`date-stamped cover pages and other pages for each article. Id. Given that the ATZ
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`Journal has been published for more than 120 years and was publicly accessible in
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`the British Library, Petitioner has established that the ATZ Article is a prior art
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`printed publication. See Telefonaktiebolaget LM Ericsson v. TCL Corp., 941 F.3d
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`1341, 1346–47 (Fed. Cir. 2019) (librarian declaration that German journal was
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`“catalogued and shelved with the shelf call number,” “had been published for at
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`least thirty years,” and “the library was accessible to the public” was substantial
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`evidence supporting Board’s public accessibility finding); Workspot, Inc. v. Citrix
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`Sys., Inc., IPR2019-01002, Paper12, 17-20 (PTAB Nov. 20, 2019).
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`Petitioner Bentley Motors respectfully requests that the Board institute both
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`IPRs and cancel ’828 patent claims 21, 24, 30, 32–34, 37, 39, 41–43, 45 and 46.
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`8 Mr. Khan’s Statutory Declaration marked as Exhibit 1002F corrects a
`typographical date error in the first line of paragraph 3 in his earlier declaration.
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`Date: December 12, 2019
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`
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`Respectfully Submitted,
`
`By: /s/Edgar H. Haug
`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, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email: BentleyIPR@haugpartners.com
`
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`The under signed hereby certifies that on December 12, 2019, pursuant to 37
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`C.F.R. § 42.6(e), a complete and entire copy of this Reply to Patent Owner’s
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`Preliminary Response, supporting Exhibits 1002F-I and 1059, and any other
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`motions or filings were served by electronic mail on Petitioner’s lead and backup
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`counsel at the following addresses:
`
`Jonathan M. Strang (Reg. No. 61,724)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`jonathan.strang@lw.com
`
`Clement Naples (Reg. No. 50,663)
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`clement.naples@lw.com
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`
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`
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`By: /s/ Robert E. Colletti
`Robert E. Colletti (Reg. No. 76,417)
`
`HAUG PARTNERS LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email: BentleyIPR@haugpartners.com
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`Counsel for Petitioner
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