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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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`Apex Tool Group LLC,
`Petitioner,
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`v.
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`Milwaukee Electric Tool Corporation,
`Patent Owner.
`_______________________
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`Case No. PGR2020-00056
`Patent 10,422,617
`_______________________
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`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO PAPER 11
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`PGR2020-00056
`Patent 10,422,617
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`I.
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`TABLE OF CONTENTS
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`The Federal Circuit Decisions Do Not Allow Patent Owner to Negate Its
`Admissions .................................................................................................. 2
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`PO’s Declaration Does Not Establish Prior Art 2 was Made by a “Common
`Inventive Entity” .......................................................................................... 3
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`III. The Petition Met Its Burden of Showing Prior Art 2 is Admitted Prior Art .
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` ........................................................................................................... 5
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`II.
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`PGR2020-00056
`Patent 10,422,617
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`TABLE OF AUTHORITIES
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`Cases
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`In re Nomiya,
`509 F.2d 566, 571 (CCPA 1975) ........................................................................... 1
`Apple Inc. v. Qualcomm Inc.,
`IPR2018-01315, Paper 26 (PTAB Jan. 3, 2020) ................................................... 1
`Intri-Plex Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.,
`IPR2014-00309, Paper 83, 2014 Pat. App. LEXIS 9069,
` (PTAB Mar. 23, 2014) ........................................................................................... 2
`Riverwood Int’l Corp. v. R.A. Jones & Co.,
` 324 F.3d 1346, 1355 (Fed. Cir. 2003) ………………………………………...3, 4
`Reading & Bates Constr. Co. v. Baker Energy Res. Corp.,
` 748 F.2d 645, 649 (Fed. Cir. 1984) ...…………………………………………3, 4
`Samsung Electronics Co. Ltd. v. Rembrandt Wireless Technologies, LP,
` IPR2014-0089, Paper 8 (PTAB Dec. 10, 2014)………………………………….5
`BMW v. Carrum, IPR2019-00903,
` Paper 9 (PTAB Oct. 21, 2019 ….………………………………………………...5
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`PGR2020-00056
`Patent 10,422,617
`Three of the grounds for invalidity in the Petition rely on a tape measure
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`design the ’617 patent identifies as “Prior Art 2”. (Paper 1 at 30-31.) In addition
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`to labeling the design as “Prior Art”, the ’617 patent described it as a “conventional
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`tape measure design.” (Ex. 1001 at 15:43-45.) Prior Art 2 meets all the limitations
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`in independent claim 1 of the ’617 patent except that it discloses a blade with a flat
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`width of 32 mm, while the claim required the flat width be “less than 32 mm”.
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`The Petition cites case law holding that examples in the specification labeled
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`“prior art” should be considered prior art regardless of whether they were shown to
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`be statutory prior art. (Paper 1 at 30-31 (citing e.g. In re Nomiya, 509 F.2d 566,
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`571 (CCPA 1975) and Apple Inc. v. Qualcomm Inc., IPR2018-01315, Paper 26 at
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`22 (PTAB Jan. 3, 2020).) Patent Owner (“PO”) argues this law does not apply
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`because of an alleged legal exception related to the admission being an admission
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`of the patent owner’s own work. (Paper 9 at 28-32.)
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`PO’s argument should be rejected for three reasons. First, as this board has
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`previously held, the Federal Circuit decisions PO cites do not allow a patent owner
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`to negate its admissions by introducing evidence that the admitted prior art was its
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`own work. Those cases were decided on specific facts that do not exist here.
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`Second, even if the PO’s exception exists, it only applies if the prior art was the
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`work of the “same inventive entity”. PO does not establish that Prior Art 2 is the
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`work of the two inventors of the ’617 patent. Third, the Petition made a sufficient
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`1
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`PGR2020-00056
`Patent 10,422,617
`showing to carry its burden for the purposes of this institution decision.
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`I.
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`The Federal Circuit Decisions Do Not Allow Patent Owner to Negate Its
`Admissions
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`PO argues that the Federal Circuit’s decisions in Reading and Riverwood
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`hold that prior art admissions are not binding when the admissions relate to the
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`patent owner’s own work. (Paper 9 at 28-29.) This board has previously rejected
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`this exact argument in a case with indistinguishable facts. See Intri-Plex
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`Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., IPR2014-
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`00309, Paper 83, 2014 Pat. App. LEXIS 9069, at *32 (PTAB Mar. 23, 2014).
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`In Intri-Plex, the patent specification labeled a figure as “Prior Art” and
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`described the figure as “known”. Id., at *27-28. The patent owner attempted to
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`rebut these admissions by citing Riverwood and Reading and submitting inventor
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`testimony establishing the figure represented their own work. Id., at *31-32.
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`The board rejected this argument, holding that Riverwood and Reading were
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`narrow decisions decided on their specific facts. Id. at *32-34 (“We conclude that
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`the rationale expressed in Riverwood relating to the inventor’s own work is limited
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`to the references cited in an IDS and statements made by the applicant in
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`connection with the filing of an IDS.”), *32 (Reading “relates to the narrow issue
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`of whether the preamble of a claim written in Jepsen format should be treated as
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`admitted prior art.”). Further, the board observed that ignoring the patent owner’s
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`2
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`Patent 10,422,617
`clear admission that an example was “prior art” would significantly undermine the
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`public notice function of the patent specification as “the public should be entitled
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`to rely on [the patent owner’s] admissions.” Id., at *36-38.
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`The Board should reach the same decision here. The public notice function
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`of the specification requires that the PO be held to its admissions. That
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`requirement is particularly important in this case because the specific product
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`underlying Prior Art 2 was not identified in the intrinsic record and the public had
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`no way to assess whether the product was statutory prior art beyond trusting the
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`direct statements in the ’617 patent.1 This public notice issue provides an addition
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`distinction from Reading and Riverwood. Both of those cases involved statements
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`about patents that were specifically identified by number. Riverwood Int’l Corp. v.
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`R.A. Jones & Co., 324 F.3d 1346, 1355 (Fed. Cir. 2003) (assessing ’806 patent
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`listed in an IDS); Reading & Bates Constr. Co. v. Baker Energy Res. Corp., 748
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`F.2d 645, 649 (Fed. Cir. 1984) (assessing ’903 patent identified in specification
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`1 PO suggests Petitioner should have inferred that Prior Art 2 was PO’s product
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`based on the specification’s descriptions of different examples. (Paper 9 at 31-32.)
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`The public should not have to make these attenuated inferences. And, regardless,
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`the public would not have been able to assess whether and when the product was
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`sold in the United States.
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`3
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`Patent 10,422,617
`and referenced in Jepson claim). The public could independently assess whether
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`those public patents were prior art. Here, the ’617 patent only identified Prior Art
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`2 with a vague code, so the public could not make the same assessment.
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`II.
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`PO’s Declaration Does Not Establish Prior Art 2 was Made by a
`“Common Inventive Entity”
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`Even if PO is right and Federal Circuit cases allow patent owners to negate
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`their admissions, these cases only apply if the admission was related to the work of
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`“the same inventive entity.” Riverwood Int’l Corp., 324 F.3d at 1356 (“Even
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`though we have concluded that patents issued to the same inventive entity are not
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`prior art by admission or under section 102(e), that does not end the matter at hand.
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`In the present case, the patents-in-suit were not issued to the same inventive
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`entity.”); see also MPEP § 2129; Reading & Bates Constr. Co., 748 F.2d at 651.
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`Prior art is only the work of “the same inventive entity” if all inventors are
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`the same and there are no additional inventors. See Riverwood Int’l Corp., 324
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`F.3d at 1356; MPEP § 2136.04. PO has not established that Prior Art 2 was the
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`work of Jonathan Vitas and Abhijeet Khangar (the named inventors of the ’617
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`patent) alone. PO submitted a declaration of Mr. Khangar, but that declaration
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`does not identify the individuals who designed Prior Art 2 by name. Instead, it
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`vaguely refers to a group of people—“we”. (Ex. 2002.) It appears that at least one
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`of the individuals involved in that design was not an inventor on the ’617 patent.
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`4
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`Patent 10,422,617
`(See PO Ex. 2002, Appendix A (author identified as “JB Dai”).)
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`Therefore, the Riverwood and Reading decisions do not apply to this case
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`and Patent Owner’s admissions about Prior Art 2 are binding.
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`III. The Petition Met Its Burden of Showing Prior Art 2 is Admitted Prior
`Art
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`The Petition observed that the patent expressly designated Prior Art 2 as
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`“Prior Art” and stated it was “conventional”. (Paper 1 at 30-31.) The board has
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`previously held this is sufficient at the institution phase. Samsung Electronics Co.
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`Ltd. v. Rembrandt Wireless Technologies, LP, IPR2014-0089, Paper 8 at 8 (PTAB
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`Dec. 10, 2014) (rejecting argument that “Petitioner has not shown that the ‘alleged
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`admitted prior art is the work of another’”, holding “Petitioner has met its initial
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`burden, however, in demonstrating that the subject matter of the ’228 patent’s
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`Figure 1, and accompanying description, constitutes ‘prior art’ by pointing out that
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`the patent expressly describes the subject matter as such.”).
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`PO cites BMW to argue that these observations are insufficient to meet
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`Petitioner’s burden. (Paper 9 at 29.) In that case, the patent specification included
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`a “mere discussion of problems existing in prior art systems” but did not admit
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`“that these problems were known to others in the art”. BMW v. Carrum, IPR2019-
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`00903, Paper 9 at 9 (PTAB Oct. 21, 2019). This case is completely different: the
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`example was explicitly labeled as “prior art” and called “conventional”.
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`5
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`PGR2020-00056
`Patent 10,422,617
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`Respectfully submitted,
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`/Bradley W. Micsky/
`
`Bradley W. Micsky
`USPTO Reg. No. 57,790
`Carlson, Caspers, Vandenburgh, &
`Lindquist, P.A.
`225 South Sixth Street
`Minneapolis, MN 55402
`612-436-9600
`bmicsky@carlsoncaspers.com
`
`Attorney for Petitioner
`Apex Tool Group, LLC
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`6
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`Date: August 7, 2020
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`CERTIFICATE OF SERVICE (37 C.F.R. §§42.6(e))
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`PGR2020-00056
`Patent 10,422,617
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy of
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`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO PAPER 11
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`is being served electronically on August 7, 2020, in its entirety via email to counsel
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`of record on the following:
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`Patent Owner Lead Counsel
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`jason.white@morganlewis.com
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`Patent Owner Back Up Counsel
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`alexander.stein@morganlewis.com
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`Metco-617Patent-
`PGR@morganlewis.com
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`Respectfully submitted,
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`/Bradley W. Micsky/
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`Bradley W. Micsky
`USPTO Reg. No. 57,790
`Carlson, Caspers, Vandenburgh, &
`Lindquist, P.A.
`225 South Sixth Street
`Minneapolis, MN 55402
`612-436-9600
`bmicsky@carlsoncaspers.com
`
`Attorney for Petitioner
`Apex Tool Group, LLC
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`Date: August 7, 2020
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