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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`APEX TOOL GROUP, LLC,
`Petitioner,
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`v.
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`MILWAUKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`________________
`Case No. PGR2020-00056
`Patent 10,422,617
`________________
`__________________________________________________________
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`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Patent Owner’s Sur-Reply
`Patent 10,422,617 – PGR2020-00056
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`TABLE OF CONTENTS
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`I.
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`II.
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`THE FEDERAL CIRCUIT’S RIVERWOOD AND READING &
`BATES CASES CONTROL ........................................................................... 1
`THE ROUTINE DECISION IN INTRI-PLEX MISINTERPRETED
`THE READING & BATES CASE AND IS DISTINGUISHABLE ............... 2
`III. A “COMMON INVENTIVE ENTITY” REQUIREMENT DOES
`NOT RELIEVE PETITIONER OF ITS BURDEN ....................................... 4
`CERTIFICATE OF SERVICE ................................................................................. 6
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`i
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`Patent Owner’s Sur-Reply
`Patent 10,422,617 – PGR2020-00056
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`There is no dispute that the ’617 patent labels Patent Owner’s CAWB 55 deg
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`
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`design as “Prior Art 2.” The disputed issue is whether that label converts Patent
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`Owner’s internal prototype—which was never public—into invalidating prior art.
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`For the three reasons discussed below, the answer is no, and as a result, Petitioner
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`has failed to prove that the CAWB 55 deg design actually qualifies as prior art.
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`I.
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`THE FEDERAL CIRCUIT’S RIVERWOOD AND READING & BATES
`CASES CONTROL
`Petitioner argues that these two controlling Federal Circuit cases should be
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`ignored because Petitioner asserts that they only apply to alleged admissions in
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`Jepson claims and IDS submissions and not to alleged admissions in a patent
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`specification. Paper 12 (“Reply”), 3. Petitioner is wrong. The Federal Circuit
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`confirmed in Riverwood that “the patentee’s discussion of his own patent in the
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`specification section entitled ‘Summary of the Prior Art’ did not constitute an
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`admission that the patent was prior art.” Riverwood, 324 F.3d 1346, 1355 (Fed
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`Cir. 2003) (discussing specification at issue in Reading & Bates); see also Reading
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`& Bates, 748 F.2d 645, 648, 650-651 (Fed. Cir. 1984) (noting that the “’903
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`patent is cross-referenced in the [patent specification] to illustrate and teach an
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`available directional drill device,” yet still holding that the ’903 patent did not
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`qualify as admitted prior art).1 The Federal Circuit did not stop there. Reading
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`& Bates also found that the prosecuting attorney’s admissions did not convert the
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`1 Emphasis in quotations added throughout unless expressly noted otherwise.
`1
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`Patent Owner’s Sur-Reply
`Patent 10,422,617 – PGR2020-00056
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`allegedly admitted prior art into invalidating art. See Reading & Bates, 748 F.2d at
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`651 (“prosecuting attorney’s erroneous admission that the ’903 patent [referenced
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`in specification’s ‘Summary of the Prior Art’ section] is § 103 prior art is not
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`binding on the patentee.”).
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`Petitioner’s contention that Riverwood and Reading & Bates are “narrow
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`decisions” (Reply, 2) is incorrect. Those decisions are binding and—like the
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`“available directional drill device” description of the ’903 patent from Reading &
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`Bates—a “prior art” label does not convert the CAWB 55 deg design into prior art.
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`II. THE ROUTINE DECISION IN INTRI-PLEX MISINTERPRETED
`THE READING & BATES CASE AND IS DISTINGUISHABLE
`Petitioner’s reliance on the PTAB’s routine decision in Intri-Plex is
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`insufficient to overcome binding Federal Circuit precedent. Beyond lacking
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`precedential effect,2 Intri-Plex incorrectly read Reading & Bates too narrowly. See
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`Ironridge v. Rillito River Solar, IPR2017-01681, Paper 11, 17 (concluding that
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`“neither the Federal Circuit, as evidenced by its discussion in Riverwood, nor
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`we read Reading & Bates as narrowly as the panel in Intri-Plex.”).
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`In addition to this legal deficiency, Intri-Plex is also factually
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`distinguishable. The patent owner in Intri-Plex affirmatively agreed with an
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`2 See PTAB SOP 2 (Revision 10), 3 (noting that a “routine decision is binding in
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`the case in which it is made . . . but it is not otherwise binding authority.”).
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`2
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`Patent Owner’s Sur-Reply
`Patent 10,422,617 – PGR2020-00056
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`examiner’s suggestion, during prosecution, that a number of figures were prior art.
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`IPR2014-00390, Paper 83, 22 fn9 (explaining that “‘Prior Art’ labels on Figures 1-
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`3 and 5 were added during prosecution in response to an objection from the
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`Examiner.”); see also IPR2014-00390, Ex. 2002 (Examiner’s objection to
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`“Figures 1-3 and 5” because they “should be designated by a legend such as – Prior
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`Art – because only that which is old is illustrated.”).3 No such affirmative
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`statements were made during prosecution here. Rather than agree with assertions
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`that CAWB 55 deg design is invalidating art, Patent Owner promptly submitted a
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`declaration (Ex. 2002) to clarify it was an internal prototype only and never public.
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`The panel in Intri-Plex also noted that whether or not alleged admitted prior
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`art actually qualified as prior art did not “affect our determination as to what
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`limitations in the claims are satisfied by Admitted Prior Art.” IPR2019-00390,
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`Paper 83, 26-29. Thus, the discussion of when admissions qualify as prior art had
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`no effect on the panel’s decision and is dicta.4
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`3 This fact also distinguishes In re Nomiya, where “appellants, in an amendment to
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`the application and in their briefs on appeal to the board, repeatedly acknowledged
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`that Figs. 1 and 2 illustrate the prior art.” In re Nomiya, 509 F.2d 566, 571 n.6
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`(CCPA 1975). Here, Patent Owner made no such repeated acknowledgements.
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`4 Ironridge also explained that “the panel in Intri-Plex relied on the admitted prior
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`art as ‘probative evidence . . . directed to the level of skill in the art rather than . . .
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`3
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`In short, the Board need not follow Intri-Plex because it misinterprets
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`Patent Owner’s Sur-Reply
`Patent 10,422,617 – PGR2020-00056
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`Reading & Bates, is factually different because it involved affirmative admissions
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`during prosecution, and is merely dicta on the issue of admitted prior art.5
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`III. A “COMMON INVENTIVE ENTITY” REQUIREMENT DOES NOT
`RELIEVE PETITIONER OF ITS BURDEN
`Petitioner’s argument that Patent Owner failed to submit sufficient evidence
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`that the CAWB 55 deg design was from a “common inventive entity” attempts to
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`improperly shift the burden of persuasion to Patent Owner. Reply, 4 (“PO has not
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`established that Prior Art 2 was the work of Jonathan Vitas and Abhijeet Khangar
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`(the named inventors of the ’617 patent) alone.”). Petitioner must establish that the
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`CAWB 55 deg design qualifies as prior art and that burden never shifts. BMW v.
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`Carrum, IPR2019-00903, Paper 9 at 9 (PTAB Oct. 21, 2019). In BMW, the Board
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`found a petitioner had not met its burden to show that descriptions of certain
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`directed to scope and content of the prior art.’” IPR2017-01681, Paper 11, 17.
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`This further demonstrates that Intri-Plex is inapposite because Petitioner has relied
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`on CAWB 55 deg as prior art for its grounds, not for the level of skill in the art.
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`5 Intri-Plex is further factually distinguishable because the ’617 patent provided
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`public notice that the CAWB designs were not another’s work. See Paper 9
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`(“POPR”), 30-32. Petitioner acknowledges that notice, but calls it “attenuated”
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`(Reply, 3 n.1). Even “attenuated” notice is still notice.
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`4
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`problems in a patent specification “were known to others in the art.” Id. The
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`Patent Owner’s Sur-Reply
`Patent 10,422,617 – PGR2020-00056
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`Board made this finding despite having no testimonial evidence on the issue.
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`As in BMW, the Board can find that Petitioner failed to meet its burden
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`because it relied on threadbare assertions and did not show that the CAWB 55 deg
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`design actually qualifies as prior art (it does not). POPR, 27-29. Patent Owner’s
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`additional testimonial evidence (Ex. 2002), which is corroborated by documentary
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`evidence (Ex. 2009), confirms that Petitioner has no reasonable likelihood of
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`success as to any claim challenged using alleged AAPA.6 POPR, 30-32.
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`Dated: August 14, 2020
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`Respectfully Submitted,
`
` / Alexander B. Stein /
`Alexander B. Stein, Reg. No. 71,397
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`6 Petitioner is wrong that a name on a presentation related to CAWB 55 deg (Ex.
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`2009) means that “one of the individuals involved in that design was not an
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`inventor of the ’617 patent.” Reply, 4. The presentation was created at the
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`inventor’s “direction.” Ex. 2002, ¶5. Regardless, the “common inventive entity”
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`requirement was developed pre-AIA, and Petitioner does not cite any authority for
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`extending this requirement to post-AIA patents like the ’617 patent. Compare pre-
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`AIA 35 U.S.C 102(a) (“known or used by others”), 102(e) (“by another”) with
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`post-AIA 35 U.S.C. 102(b)(1)(A) and (B) (“by the inventor or joint inventor”).
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`5
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`Patent Owner’s Sur-Reply
`Patent 10,422,617 – PGR2020-00056
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), a complete copy of this PATENT
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`OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO PATENT OWNER’S
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`PRELIMINARY RESPONSE was provided via email to Petitioner by serving the
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`counsel of record using the following email addresses:
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`Bradley W. Micsky
`(bmicsky@carlsoncaspers.com)
`Nathan D. Louwagie
`(nlouwagie@carlsoncaspers.com)
`apex617pgr@carlsoncaspers.com
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`Dated: August 14, 2020
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`Respectfully Submitted,
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` / Marilyn Doris /
`Marilyn Doris
`Legal Secretary
`Morgan, Lewis & Bockius LLP
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`6
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