UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND THE APPEAL BOARD
`
`__________________________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA)
`LTD., SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO.,
`LTD., ATICO INTERNATIONAL (ASIA) LTD., ATICO
`INTERNATIONAL USA, INC., CHIEN LUEN INDUSTRIES CO.,
`LTD., INC. (CHIEN LUEN FLORIDA), CHIEN LUEN INDUSTRIES
`CO., LTD., INC. (CHIEN LUEN CHINA), COLEMAN CABLE, LLC,
`NATURE’S MARK, RITE AID CORP., SMART SOLAR, INC., AND
`TEST RITE PRODUCTS CORP., Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND,
`Patent Owner
`
`__________________________
`
`
`Case IPR2014-00936
`Patent 7,196,477
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`REVISED PETITION FOR INTER PARTES REVIEW UNDER 35
`U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ. (CLAIMS 1
`- 29 OF U.S. PATENT NO. 7,196,477)
`
`
`
`
`
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND THE APPEAL BOARD
`
`__________________________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA)
`LTD., SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO.,
`LTD., ATICO INTERNATIONAL (ASIA) LTD., ATICO
`INTERNATIONAL USA, INC., CHIEN LUEN INDUSTRIES CO.,
`LTD., INC. (CHIEN LUEN FLORIDA), CHIEN LUEN INDUSTRIES
`CO., LTD., INC. (CHIEN LUEN CHINA), COLEMAN CABLE, LLC,
`NATURE’S MARK, RITE AID CORP., SMART SOLAR, INC., AND
`TEST RITE PRODUCTS CORP., Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND,
`Patent Owner
`
`__________________________
`
`
`Case IPR2014-00936
`Patent 7,196,477
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`REVISED PETITION FOR INTER PARTES REVIEW UNDER 35
`U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ. (CLAIMS 1
`- 29 OF U.S. PATENT NO. 7,196,477)
`
`
`
`
`
`
`Table of Contents
`
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II.
`
`The Petitioner is Statutorily Barred Under 35 U.S.C. 315(a)(1) ..................... 3
`
`A. Petitioner’s Dismissal under Rule 41(a)(1) Cannot Save Petitioner’s
`
`Section 315 (a) Barred Request for an IPR ............................................... 5
`
`B. The Petition Must Be Denied As to All Constituent Members of
`
`Petitioner ................................................................................................. 16
`
`III.
`
`Patent Owner’s Objections to Petitioner’s Expert Declaration ..................... 17
`
`IV. Preliminary Response to Petitioner’s Proposed POSA ................................. 19
`
`V.
`
`Preliminary Response to Petitioner’s Claim Construction ............................ 21
`
`A. “lamp” ..................................................................................................... 22
`
`B. “varying colour” ...................................................................................... 22
`
`C. “desired colour” ....................................................................................... 24
`
`D. “securing means” ..................................................................................... 24
`
`VI. Petitioner’s Grounds 1 – 9 for Unpatentability are Insufficient to
`
`Demonstrate a Reasonable Likelihood that Petitioner Will Prevail
`
`Against the Challenged Claims ..................................................................... 25
`
`A. Legal Standards ....................................................................................... 25
`
`B. The Relevant Prosecution History of the 477 Patent .............................. 26
`
`ii
`
`
`
`C. The Assertions of Ground 1 Are Insufficient to Support Institution
`
`of an IPR .................................................................................................. 27
`
`1. Chliwnyj Does Not Teach Producing a Varying Color .................. 27
`
`2. Wu is Not Combinable in Grounds 1 and 5 ................................... 32
`
`3. Hung is Not Combinable in Grounds 1 and 5 ................................ 36
`
`D. Chliwnyj Cited in Grounds 1 – 8 is Cumulative of a Prior Office
`
`Proceeding, Namely, the Original Prosecution ....................................... 38
`
`E. Wu and Frost are Cumulative of Shalvi .................................................. 41
`
`F. Frost, Relied Upon in Grounds 1 – 4 and Cited During Prosecution
`
`of the 477 Patent, Has Substantially the Same Material Disclosure as
`
`Wu. .......................................................................................................... 43
`
`G. The Assertions of Invalidity in Ground 2 Should Not be Instituted ....... 45
`
`H. The Assertions of Invalidity in Ground 3 Should Not be Instituted ....... 46
`
`I. The Assertions of Invalidity in Ground 4 Should Not be Instituted ....... 46
`
`J. The Assertions of Invalidity in Ground 5 Should Not be Instituted ....... 47
`
`K. The Assertions of Invalidity in Ground 6 - 8 Should Not be
`
`Instituted .................................................................................................. 47
`
`L. The Assertions of Invalidity in Ground 9 Should Not be Instituted ....... 48
`
`M. AU 505 is Much Less Material Than Prior Art Considered During
`
`the Original Prosecution, such as Dowling, Shalvi and Zhang .............. 53
`
`iii
`
`
`
`N. AU 505 is Cumulative of Shalvi and Zhang with Respect to the
`
`“User Operated Switch” and a Light Sensitive Switch ........................... 54
`
`VII. Secondary Considerations Defeat Likelihood of Proving Obviousness ....... 56
`
`VIII. Conclusion ..................................................................................................... 60
`
`IX. Appendix of Exhibits ..................................................................................... 61
`
`
`
`
`
`
`iv
`
`
`
`I.
`
`Introduction
`The Petition for inter partes review (“IPR”) in this case (referred to as the
`
`
`
`“Petition” and cited “Pet., #”) is procedurally and substantively defective.
`
`Petitioner, comprised of Jiawei Technology (HK) Ltd., Jiawei Technology (USA)
`
`Ltd., Shenzhen Jiawei Photovoltaic Lighting Co., Ltd., Atico International (Asia)
`
`Ltd., Atico International USA, Inc., Chien Luen Industries Co., Ltd., Inc. (Chien
`
`Luen Florida), Chien Luen Industries Co., Ltd., Inc. (Chien Luen China), Coleman
`
`Cable, LLC, Nature’s Mark, Rite Aid Corp., Smart Solar, Inc., and Test Rite
`
`Products Corp. (collectively “Petitioner”), seeks to cancel as unpatentable Claims 1
`
`- 29 of U.S. Pat. No. 7,196,477 (the “477 Patent,” see Exhibit (“Exh.”) 1001).
`
`Petitioner, however, is statutorily barred under 35 U.S.C. § 315(a) from pursuing
`
`an IPR, because Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and
`
`Shenzhen Jiawei Photovoltaic Lighting Co., Ltd. (“Jiawei Parties”) previously
`
`jointly “filed a civil action challenging the validity of a claim of the patent,” in the
`
`U.S. District Court for the District of Delaware (Civ. Action No. 12-00154, see
`
`Exh. 2002) “before the date on which [the Petition] for such a review [was] filed.”
`
`35 U.S.C. § 315(a).
`
`On the merits, Petitioner fails to demonstrate that there “is a reasonable
`
`likelihood that [the Petitioner] would prevail with respect to at least one of the
`
`claims challenged in [the Petition].” 35 U.S.C. § 314. The newly-cited art,
`
`1
`
`
`
`“Chliwnyj” (Exh. 1005, U.S. Pat. No. 5,924,784), “Wu” (Exh. 1006, US Pat. Pub.
`
`No. US 2003/0201874), “Hung” (Exh. 1016, PCT Application WO 91/02192),
`
`“Pu” (Exh. 1008, Chinese Pat. Pub. No. CN 2522722Y, Translation), “Xu” (Exh.
`
`1012, Chinese Pat. Publ. No. CN 2541713, Translation) and “ AU 505” (Exh.
`
`1014, AU Pat. App. No. 2002100505 A4), is either less material than or
`
`cumulative to prior art cited during the original prosecution. None of this newly-
`
`cited art discloses “a circuit having at least two lamps of different colours to
`
`produce a desired colour including a varying colour” of Claims 1 and 20
`
`(collectively referred to as the 477 Varying Color Limitations). In fact, some of
`
`the art relied upon by Petitioner, including “Frost” (Exh. 1010, U.S. Pat. No.
`
`5,062,028) and “Shalvi” (U.S. Pat. No. 6,120,165) is the self-same prior art cited
`
`during the original prosecution. In many instances, the newly-cited prior art,
`
`including Chliwnyj, Wu and others, is relied upon for the same features as the
`
`originally cited prior art and, in many instances, is so admitted by Petitioner.
`
`As to limitations requiring a “switch operated to control delivery of electric
`
`power from the battery to operate said circuit [having at least two lamps of
`
`different colours to produce a desired colour including a varying colour],” the
`
`switch being “exposed to provide for access thereto to user” in Claim 1 and “the
`
`switch being exposed to provide access thereto by a user thereby enabling a user to
`
`manipulate the switch to control the delivery of electric power from the battery” in
`
`2
`
`
`
`Claim 20, the newly-cited prior art is cumulative to prior art already considered by
`
`the Examiner. The proposed combination would not have been obvious for the
`
`same reasons that resulted in the original grant, because prior art teaches away
`
`from the proposed combination, and for others reasons, including evidence of
`
`secondary considerations sufficient
`
`to defeat a prima
`
`facie showing of
`
`obviousness. For these reasons, and others explained below, Petitioner has failed
`
`to show “a reasonable likelihood that [the Petitioner] would prevail with respect to
`
`at least one of the claims challenged in [the Petition].” 35 U.S.C. § 314.
`
`II. The Petitioner is Statutorily Barred Under 35 U.S.C. 315(a)(1)
`Under 35 U.S.C. § 311(a), persons who are not the owner of a patent have
`
`the right to file in the United States Patent and Trademark Office (“PTO”) before
`
`the Patent Trial and Appeal Board (“the Board”) a petition to institute an IPR
`
`against a patent. The plain language of § 315(a)(1) states, without qualification or
`
`exception, the following limitation:
`
`An [IPR] may not be instituted if, before the date on which the petition
`for such a review is filed, the petitioner or real party in interest filed a
`civil action challenging the validity of a claim of the patent. 35 U.S.C.
`§ 315(a)(1) (emphasis added).
`Petitioner, which comprises the Jiawei Technology (HK) Ltd., Jiawei
`
`Technology (USA) Ltd., and Shenzhen Jiawei Photovoltaic Lighting Co., Ltd.
`
`3
`
`
`
`(collectively referred to as the Jiawei Parties), among others,1 filed the instant
`
`Petition on June 11, 2014.2 However, over two years earlier, on February 8, 2012,
`
`the Jiawei Parties jointly filed a civil action challenging the validity of at least one
`
`claim of the 477 patent, in the District of Delaware. See Exh. 2002 (referred to as
`
`the “First Filed Action”).3 The First Filed Action was voluntarily dismissed on
`
`May 21, 2012 under Federal Rule of Civil Procedure 41(a)(1) (“Rule 41(a)(1)”).
`
`See First Filed Action, pg. 5. Petitioner did not inform the Board about the prior
`
`filing of the First Filed Action. See Pet., 6 (purportedly certifying that Petitioner
`
`
`1 Other parties are Atico International (Asia) Ltd., and Atico International USA,
`
`Inc., Chien Luen Industries Co., Ltd., Inc. (Chien Luen Florida), and Chien Luen
`
`Industries Co., Ltd., Inc. (Chien Luen China), Coleman Cable, LLC2, Nature’s
`
`Mark, Rite Aid Corp., Smart Solar, Inc., and Test Rite Products Corp.
`
`2 Paper No. 12 states that “[t]he petition for [IPR] in the above proceeding has
`
`been accorded the filing date of June 11, 2014.” It further designates Patent Judge
`
`Justin T. Arbes to manage the proceeding.
`
`3 The First Filed Action challenged the validity of United States Patent Nos.
`
`7,196,477, 7,429,827 ("the
`
`'827 Patent"), 7,336,157, 7,967,465, 8,077,052,
`
`8,089,370 and, 8,104,914.
`
`4
`
`
`
`“is not barred or estopped from requesting [an IPR] challenging the claims of the
`
`477 patent on the grounds identified in this Petition”).
`
`A.
`Petitioner’s Dismissal under Rule 41(a)(1) Cannot Save
`Petitioner’s Section 315 (a) Barred Request for an IPR
`The plain language of Section 315(a)(1) forbids the institution of an IPR “if,
`
`before the date on which the petition for such a review is filed, the petitioner or
`
`real party in interest filed a civil action challenging the validity of a claim of the
`
`patent. “ 35 U.S.C. § 315(a)(1) (emphasis added). Section 315(a)(1), provides no
`
`exceptions.
`
`
`
`Patent Owner acknowledges that, in a prior decision, the Board decided that
`
`“filed a civil action” in Section 315(a)(1) should have an exception, such that
`
`“filed a civil action” should mean “filed a civil action unless such filing is
`
`dismissed under Federal Rule of Civil Procedure 41(a)(1).” See, e.g., Clio USA,
`
`Inc. v. The Procter and Gamble Co., IPR2013-00450, 2014 WL 2528613, *4
`
`(PTAB Jan. 9, 2014) (emphasis added). It is respectfully submitted, however, that
`
`Clio’s engrafted exception to Section 315 (a)(1) impermissibly uses a federal rule
`
`of civil procedure to change the plain meaning of the Congressionally-enacted
`
`5
`
`
`
`Section 315(a)(1). As such, it is respectfully urged that Clio should not be
`
`followed or, if necessary, reversed.4
`
`The federal rules of civil procedure, prescribed by the Supreme Court,
`
`cannot “abridge, enlarge, or modify any substantive right.” Rules Enabling Act, 28
`
`U.S.C. § 2072. Adding a qualification “unless such filing is dismissed under Rule
`
`41(a)(1)” to the plain and unqualified language of Section 315(a)(1), that prohibits
`
`an IPR where the Petitioner has previously “filed a civil action” challenging the
`
`patent’s validity, would use a Rule of Civil Procedure to accomplish what Section
`
`2072 statutorily forbids – “abridge, enlarge, or modify” substantive rights defined
`
`by Section 315(a)(1).
`
`The proposition that Rule 41(a)(1) can be relied upon to remove the
`
`jurisdictional bar imposed by § 315(a) is also inconsistent with the policy and
`
`
`4 The holdings of the Board in prior IPR decisions have not been designated as
`
`binding precedent. See Board of Patent Appeals and Interferences Standard
`
`Operating Procedure (Rev. 7) Publication of Opinion and Binding Precedent, Part
`
`IV
`
`“Procedures
`
`for Adoption of Binding Precedent,”
`
`available
`
`at
`
`http://www.uspto.gov/ip/boards/bpai/procedures/sop2.pdf.
`
` Accordingly,
`
`the
`
`judges as agents of the Board in this matter are free to make their own independent
`
`and correct determination that the Board lacks the jurisdiction to institute an IPR.
`
`6
`
`
`
`purposes of Rule 41(a)(1), as explained by the Supreme Court in Cooter Gell v.
`
`Hartmarx Corp. Rule 41(a)(1) “was designed to limit a plaintiff’s ability to
`
`dismiss an action,” for example to curb abuses of “liberal state and federal rules
`
`[which] allowed dismissals or nonsuits as a matter of right until the entry of the
`
`verdict.” Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 385 (1990). Rule
`
`41(a)(1) “allowed a plaintiff to dismiss an action without the permission of the
`
`adverse party or the court only during a brief period before the defendant had made
`
`a significant commitment of time and money.” Id. at 397. Rule 41(a)(1), however,
`
`was “not designed to give a plaintiff any benefit other than the right to take one
`
`such dismissal without prejudice.” Id. Relying upon Rule 41(a)(1) to resurrect the
`
`lost right to bring an IPR in the Board does exactly what the Supreme Court said
`
`Rule 41(a)(1) cannot do.
`
`In Clio, the Board reasoned that “when a court permits the challenger to
`
`dismiss the declaratory judgment action voluntarily and without prejudice, the
`
`petitioner effectively unmakes that choice [to pursue a declaratory judgment],
`
`because the action is considered never to have existed.” Clio, 2014 WL 2528613,
`
`*4. However, with due respect to the Board in Clio, although Rule 41(a)(1)
`
`provides that a dismissal under its terms is “without prejudice” (to the filing of a
`
`subsequent suit) it does not provide that the first action is considered “never to
`
`7
`
`
`
`have existed.”5 To the contrary, Rule 41(a)(1)(B) expressly provides that: “if the
`
`plaintiff previously dismissed any federal or state-court action based on or
`
`including the same claims, a notice of dismissal operates as an adjudication on the
`
`merits.” Where the first action, if dismissed under Rule 41(a)(1), automatically
`
`causes the second such dismissal to “operate[] as an adjudication on the merits”
`
`pursuant to Rule 41(a)(1)(B), the first such action cannot be “considered to have
`
`never existed.” As pertinent here, the plain language of Section 315(a)(1) provides
`
`for another automatic effect of having “filed a civil action” challenging validity –
`
`prohibiting forever the right to later file an IPR.
`
`The cases relied upon by the Board in Clio for applying Rule 41(a)(1) do not
`
`change the plain meaning of Section 315(a) or justify adding an unstated exception
`
`to it. The Board cited Holloway v. U.S., 60 Fed. Cl. 254, 261 (2004), aff’d 143 F.
`
`App’x 313 (Fed. Cir. 2005), among other cases, for the proposition that “[f]ederal
`
`courts treat a civil action that is dismissed without prejudice as something that de
`
`
`5 “[T]he plaintiff may dismiss an action without a court order by filing a notice of
`
`dismissal before the opposing party serves either an answer or a motion for
`
`summary judgment.” FED. R. CIV. PROC. 41(a)(1)(A)(i).
`
`8
`
`
`
`jure never existed.” Clio, 2014 WL 2528613, *3. (internal quotations omitted).6
`
`But in each case relied upon, the plaintiff sought to avoid a statute of limitations by
`
`having its later filed complaint relate back to the date of an earlier filed, but
`
`dismissed action.7 In each case the court said “no,” because of the intervening
`
`expiration of the statute of limitations, which could not be resurrected by the
`
`
`6 The Board in Clio also cites Bonneville Assoc., Ltd. P’ship v. Barram, 165 F.3d
`
`1360, 1364 (Fed. Cir. 1999) and Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir.
`
`2002) for the same proposition.
`
`7 In Holloway, the court said “the present complaint cannot relate back to
`
`something that de jure never existed,” and “the present claim in this court is time-
`
`barred.” In Bonneville, the court said “[t]he rule [which was similar to Federal
`
`Rule of Civil Procedure 41(a)] merely states the consequence of a voluntary
`
`dismissal without prejudice, namely that the appellant cannot thereafter resurrect
`
`the appeal after the statute of limitations on the cause of action has run.”
`
`Bonneville, 165 F.3d at 1365. In Beck, the court said that “[w]hile [plaintiff’s] first
`
`lawsuit was filed within the limitations period, that suit was voluntarily dismissed
`
`pursuant to [Rule] 41(a), and is treated as if it had never been filed.” These cases
`
`demonstrate that an action that is time-barred cannot be saved by relying on a
`
`prior-action that has been dismissed under Rule 41(a).
`
`9
`
`
`
`subsequent re-filing of the case. In so doing, the courts were relying on Rule
`
`41(a)(1) to preserve rights provided under a statute of limitations, not using Rule
`
`41(a)(1) to abridge, enlarge, or modify those rights.
`
`In Keene v. U.S., Keene Corp. v. United States, 17 Cl. Ct. 146, 157 (1989)
`
`(intermittent history omitted), aff'd sub nom, Keene Corp. v. United States, 508
`
`U.S. 200, 113 S. Ct. 2035, 124 L. Ed. 2d 118 (1993), a plaintiff sought to nullify
`
`the existence of a civil action by dismissing it, in an attempt to avoid the
`
`consequences of a statutory provision, 28 U.S.C. § 1500, that prohibited “filing and
`
`prosecuting the same claims against the United States in courts at the same time.”
`
`This attempt was rejected as ineffective to avoid the effect of the statute. Keene,
`
`17 Cl. Ct. at 157 (“Plaintiffs…argue vigorously that their earlier-filed actions were
`
`not pending for purposes of barring the Claims Court from taking jurisdiction over
`
`their
`
`complaints,
`
`because
`
`the
`
`earlier
`
`actions…had
`
`been
`
`dismissed
`
`voluntarily…when the matter came before the court on defendant’s [motion].”). In
`
`reading the plain language of Section 1500, however, the CFC held that “28 U.S.C.
`
`§ 1500 deprived the Court of Claims of jurisdiction when its petition was filed,
`
`even though Keene voluntarily withdrew the third-party complaint within one
`
`10
`
`
`
`year.”8 Keene, 17 Cl. Ct. at 159. In other words, the dismissal did not fix the
`
`jurisdictional problem that was present at the time that the plaintiff filed its case in
`
`the CFC.
`
`Analogously to Keene, by the plain language of Section 315(a), Jiawei
`
`Parties’ filing of the earlier declaratory judgment civil action irreversibly divested
`
`the Board of jurisdiction to hear a subsequent request for an IPR.
`
`In a related context, this Board has properly refused to read another
`
`proposed exception onto the “filed a civil action” language of Section 315(a)(1);
`
`that it should be modified to read “filed and served a civil action” (emphasis
`
`added). 9 See, e.g., Anova Food, LLC v. Sandau, IPR2013-00114, 2013 WL
`
`5947705, at *3 - *4 (PTAB Sept. 13, 2013) (finding that there is no support for
`
`reading the word “served” into the statute). See also Apple Inc. v. Virnetx, Inc. and
`
`
`8 See also Holloway, 60 Fed. Cl. at 261 (“filing the same action in any court prior
`
`to, or simultaneously with, filing in the Court of Federal Claims divests this court
`
`of jurisdiction over that matter.”).
`
`9 “An [IPR] may not be instituted if the petition requesting the proceeding is filed
`
`more than 1 year after the date on which the petitioner, real party in interest, or
`
`privy of the petitioner is served with a complaint alleging infringement of the
`
`patent.” 35 U.S. Code § 315(b) (emphasis added).
`
`11
`
`
`
`Science Application International Corp., IPR2013-00348 (PTAB Dec. 13, 2013)
`
`(“The plain language of the statute does not specify that a later complaint will
`
`nullify the effect of an earlier complaint for timeliness purposes of a petition.”). It
`
`is respectfully submitted that the Board should likewise follow the plain language
`
`of Section 315(a)(1) here, without reading in unstated exceptions.
`
`“It is well settled law that the plain and unambiguous meaning of the
`
`words used by Congress prevails in the absence of a clearly expressed legislative
`
`intent to the contrary.” Hoechst Aktiengesellschaft v. Quigg, 917 F.2d 522, 526
`
`(Fed. Cir. 1990) (emphasis added). If there is no ambiguity in the statute, an
`
`interpreting body should “turn to the legislative history to see if Congress meant
`
`something other than what it said statutorily.” Ethicon, Inc. v. Quigg, 849 F.2d
`
`1422, 1426 (Fed. Cir. 1988).10 The Court’s duty is “to refrain from reading a
`
`phrase into the statute when Congress has left it out.” Keene Corp. v. United
`
`States, 508 U.S. 200, 208, 113 S. Ct. 2035, 124 L. Ed. 2d 118 (1993).
`
`
`10 The USPTO lacks “general substantive rulemaking power.” See Merck & Co.
`
`v. Kessler, 80 F.3d 1543, 1550 (Fed. Cir. 1996) (refusing to give Chevron
`
`Deference to the USPTO’s interpretations of substantive patent law); see also 35
`
`U.S.C. sec. 2(b)(2)(A).
`
`12
`
`
`
`Here, there is no ambiguity and the legislative history does not support
`
`adding an exception to the Statute’s plain meaning that Congress chose not to add.
`
`From its inception, the AIA was intended to “prohibit[] multiple bites at the apple
`
`by restricting the [party challenging the patent] to opt for only one window one
`
`time.” Exh. 2003, 153 Cong. Rec. E774 (daily ed. Apr. 18, 2007) (Statement of
`
`Rep. Berman) (emphasis added). Had Congress wanted jurisdiction of the Board
`
`that is limited by Section 315(a)(1) to have an exception for dismissals under Rule
`
`41(a)(1), it could have easily provided such an exception or could have otherwise
`
`qualified the strict prohibition. Congress, however, did not do so. “Where
`
`Congress includes particular language in one section of a statute but omits it in
`
`another, it is generally presumed that Congress acts intentionally and purposely in
`
`the disparate inclusion or exclusion.” Keene, 508 U.S. at 208 (quoting Russello v.
`
`U.S., 464 U.S. 16, 23 (1983)). Based on the differences between § 315(b) and §
`
`315(a), it is reasonable to infer that Congress meant exactly what it said in §
`
`315(a)(1). Further, since the question of whether or not a petitioner had “filed a
`
`civil action” can be simply determined by checking the official court records on
`
`“Pacer.gov,” Congress’s “bright line” rule is both rational and sensible.
`
`Introducing an exception for actions filed but dismissed without prejudice
`
`under Rule 41(a)(1) would open the statute to a floodgate of exceptions, thereby
`
`minimizing the effectiveness of the strict, exception-less rule in achieving its
`
`13
`
`
`
`intended purpose. For example, a petitioner-to-be could first file an action in
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`federal district court seeking a declaratory judgment of invalidity, but not serve it,
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`thereby securing the strategic advantage of its choice of a particular desired venue,
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`but preserving its right to dismiss without prejudice under Rule 41(a)(1). Under
`
`the plain language of Section 315(a)(1), the declaratory-plaintiff would be forever
`
`barred from filing for IPR. However, if an exception for a civil action that is
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`subsequently dismissed under Rule 41(a)(1) is to be engrafted onto Section
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`315(a)(1), the declaratory-plaintiff could choose to keep alive the unserved and
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`unanswered action, or to dismiss it under Rule 41(a)(1) at a time of its own
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`choosing in favor of an IPR petition, thereby achieving a strategic ploy clearly
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`prohibited by the actual language of the enacted Section 315(a)(1).
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`If an exception for dismissals without prejudice under Rule 41(a)(1)(i) is to
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`be engrafted onto Section 315(a), there is no reason that the exception should not
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`also apply to other dismissals without prejudice, such as dismissals by stipulation
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`of all the parties under Rule 41(a)(1)(ii), which can also be without prejudice, or by
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`court order under Rule 41(a)(2), which, unless otherwise specified in the order, are
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`also without prejudice. Dismissals under either Rule 41(a)(1)(ii) or Rule 41(a)(2)
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`can arise for a wide variety of reasons, including the removal of subject matter
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`jurisdiction by mootness, by the declaratory-defendant providing a covenant not to
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`sue, as in Already, LLC v. Nike, Inc., 133 S.Ct. 722 (2013), or for any other reason,
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`14
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`
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`as long as the other party stipulates to the dismissal or the court so orders. Since
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`such dismissals without prejudice can occur at any time, even after years of
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`litigation, the Board may then be required to investigate whether the action is still
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`pending at the time that an IPR is filed, the extent to which the court had addressed
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`the merits of the claim prior to its dismissal and/or many other circumstances
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`before deciding the threshold issue of the right to file a Petition.11 This would
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`clearly be unwieldy and unworkable for the Board, as well as contrary to
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`Congress’s purpose in enacting Section 315(a)(1), with its clear, simple, “bright
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`line” rule.
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`For the foregoing reasons, Patent Owner respectfully submits that,
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`notwithstanding Clio, the Board should not read extra-textual limitations into
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`Section 315(a)(1) that are absent and would change substantially its meaning. The
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`Jiawei Parties previously “filed a civil action” seeking a declaratory judgment as to
`
`
`11 This is not merely hypothetical. For example, a declaratory action involving
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`the 477 and 827 patents was actively litigated by another accused infringer for
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`nearly a year before being dismissed under Rule 41(a)(1). See IDC, LLC v.
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`Richmond, et al., 4:08-cv-00111-RAS, Doc. 51 (E.D. Tex. March 23, 2009).
`
`15
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`
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`the validity of at least one claim of the 477 Patent. Pursuant to the plain meaning
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`of Section 315(a), the Board must deny Petitioner’s request for IPR.12
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`B.
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`The Petition Must Be Denied As to All Constituent Members of
`Petitioner
`For purposes of an IPR, all companies listed as Petitioner in the Petition
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`constitute a single party. Fandango, LLC v. Ameranth, Inc., CBM2014-00013,
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`Decision, Paper No. 22, pg. 4 (PTAB Mar. 24, 2014) (denying Apple, Inc. a leave
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`to file a separate IPR petition, where it had already joined other parties as a single
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`petitioner); see also 37 C.F.R. § 42.2 (defining Petitioner as a single party—the
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`party filing a petition). As such, if the Petitioner is statutorily barred, then the IPR
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`must also be barred as to each and every constituent member.
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`A party may remove itself from an IPR proceeding only by 1) filing a joint
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`motion to terminate the proceeding with respect to that party because of a
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`settlement (37 C.F.R. § 42.74) or 2) taking an adverse judgment against that party
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`(37 C.F.R. § 42.73(b)(4)). In this case, there has been no settlement, and no
`
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`12 This interpretation of Section 315(a), in accordance with its plain language,
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`does not affect Petitioner’s substantive rights to challenge validity in court. Under
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`Rule 41(a)(1) and Rule 41(a)(1)(B), Petitioner is still free to assert the same claims
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`in a lawsuit. Indeed, Petitioner has already brought counterclaims for invalidity in
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`the pending district court action and such action is still pending.
`
`16
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`
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`indication that any constituent member of Petitioner is willing to take an adverse
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`judgment. Thus, there is no statutory authority or provision to avoid denying the
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`Petition in its entirety and with respect to each and every constituent member of
`
`Petitioner.
`
`Since the Jiawei Parties are barred by Section 315 (a) from filing an IPR on
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`the basis of having previously “filed a civil action” challenging validity of at least
`
`one claim of the 477 Patent, the Board must likewise deny the request for IPR as to
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`each and every other constituent member of Petitioner as well, as a whole.
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`III. Patent Owner’s Objections to Petitioner’s Expert Declaration
`Patent Owner objects to Petitioner’s reliance on the declaration of Dr.
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`Shackle (Exh. 1002) on the basis that he lacks essential qualifications regarding
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`photovoltaic (i.e., solar) cells, solar powered lights, or other consumer products.
`
`The 477 Patent clearly recites that the claimed inventions relate to solar
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`powered consumer products, namely “solar powered lights that produce light of
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`varying colour.” See 477 Patent, 1: 7-8 and Figures 1 – 9, “the device 10…is
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`configured as a garden light.” Id. at 12 – 13. Despite Dr. Shackle’s declaration that
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`he has “over twenty years experience in the field of lighting electronics, with
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`particular emphasis on light emitting diode (“LED”) drivers and electronic
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`ballasts” (Exh. 1002, ¶ 3), he does not identify any experience with solar powered
`
`lights, solar cells, photovoltaic cells, any other solar powered products, or any
`
`17
`
`
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`consumer products. As such, Dr. Shackle is not qualified to render an opinion in
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`these fields of art, or the ordinary level of skill in these fields.
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`By contrast, Mr. Simon Richmond, the named inventor, has over ten (10)
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`years of relevant experience in solar powered lights and consumer products. See
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`Exh. 2004, Declaration of Simon Nicholas Richmond (“Richm. Decl.”), IDC, LLC
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`v. Richmond, et al., 09-cv-2495 (“IDC Case”), Doc. 104-13, ¶¶ 5-6 (D.N.J.
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`01/03/2011).
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`Dr. Alfred Ducharme, whose pre-existing declaration is also provided, is a
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`named inventor on U.S. Pat. No. 7,064,498 (see Exh. 2016, “the Dowling patent”)
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`(reciting application in “a variety of consumer products and other household
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`items”) (Abstract), and many other color-changing LED lighting patents, and was
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`the Principal Optical Engineer – Engineering/Business Development for Color
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`Kinetics Inc., Boston, MA, the assignee of the Dowling patent. See also Dr.
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`Ducharme’s Professional Background. Exh. 2005, Declaration of Dr. Ducharme
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`on Validity (“Ducharme Decl.”), IDC Case, Doc. 104-12, p.5. Dr. Ducharme led
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`Color Kinetics’ LED Strategies Group; performed all optical design needs for all
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`product lines, as well as creating and designing all new consumer products.
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`Ducharme Decl., “Resume”, p.55. Dr. Ducharme also wrote and won a DOE
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`Phase I SBIR proposal for the development of a system to project uniform
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`illumination for the performance evaluation of photovoltaic cells. Id. at 56.
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`18
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`
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`Because Dr. Shackle lacks essential qualifications regarding photovoltaic
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`cells and consumer products, his declaration should be stricken from the record for
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`failing to meet the requirements for competent expert testimony, or otherwise not
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`relied upon as competent evidence.
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`IV. Preliminary Response to Petitioner’s Proposed POSA
`“It is the person of ordinary skill in the field of the invention through whose
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`eyes the claims are construed.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
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`Cir. 2005). Patent Owner disagrees with Petitioner’s assertion, based on Dr.
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`Shackle’s declaration, that “as of the earliest effective filing date of the 477 Patent
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`claims, a person of ordinary skill in the art (“POSA
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