Case IPR 2016-00023
`Patent Owner Preliminary Response
`
`
`
`Filed on behalf of Seymour Levine
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`THE BOEING COMPANY
`Petitioner,
`
`v.
`
`SEYMOUR LEVINE
`Patent Owner
`
`________________
`
`Case IPR2016-00023
`
`Patent RE039,618
`
`_________________
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`06012-00001/7575726.2
`
`
`Patent Owner Preliminary Response
`
`
`
`Filed on behalf of Seymour Levine
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`THE BOEING COMPANY
`Petitioner,
`
`v.
`
`SEYMOUR LEVINE
`Patent Owner
`
`________________
`
`Case IPR2016-00023
`
`Patent RE039,618
`
`_________________
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`06012-00001/7575726.2
`
`
`
`Case IPR 2016-00023
`Patent Owner Preliminary Response
`
`TABLE OF CONTENTS
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`Page
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`I.
`
`INTRODUCTION ........................................................................................... 1
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`II.
`
`THE BOARD SHOULD DENY THIS PETITION UNDER § 325(d) .......... 2
`
`A.
`
`B.
`
`Boeing’s Second Petition Presents the Same Art and the Same
`Argument as Its Original Petition ......................................................... 2
`
`Boeing’s Second Petition Should be Denied for the Same
`Reason Its Proposed Motion for Supplemental Information
`Should be Denied .................................................................................. 6
`
`III. CONCLUSION .............................................................................................. 10
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`06012-00001/7575726.2
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`Case IPR 2016-00023
`Patent Owner Preliminary Response
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`TABLE OF AUTHORITIES
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`Cases
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`Page
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc
`Case IPR2013-00581 (PTAB Oct 14, 2014) (Paper 8) ............................ 2, 4, 5, 8
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd
`Case IPR2013-00324 (PTAB Nov. 21, 2013) (Paper 19) ................................ 2, 8
`
`Maxlinear, Inc. v. Cresta Technolohy Corp
`Case IPR2015-00591 (PTAB June 15, 2015) (Paper 9) ....................................... 8
`
`Mitsubishi Plastics, Inc., v. Celgard, LLC
`Case IPR2014-00524 (PTAB Nov. 28, 2014) (Paper 30) .................................... 6
`
`Rackspace US, Inc. v. PersonalWeb Technologies, LLC
`Case IPR2014-00057 (PTAB Apr. 30, 2014) (Paper 16) ..................................... 7
`
`Unilever, Inc. v. Procter & Gamble Co
`Case IPR2014-00506 (PTAB July 7, 2014) (Paper 17)........................................ 5
`
`Vitaulic Co. v. The Viking Corp
`Case IPR2015-00423 (PTAB Aug 4, 2015) (Paper 16) ....................................... 7
`
`ZTE Corp. v. ContentGuard Holdings, Inc
`Case IPR2013-00454 (PTAB Sept. 25, 2013) (Paper 12) ................................ 4, 9
`
`ZTE Corp. v. ContentGuard Holdings, Inc
`Case IPR2013-00139 (PTAB Jul 30, 2013) (Paper 27)....................................... 6
`
`Statutes
`
`35 U.S.C. § 314(a) ..................................................................................................... 8
`
`35 U.S.C. § 325(d) ............................................................................................passim
`
`37 C.F.R. § 42.1(b) .................................................................................................... 9
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`37 C.F.R. § 42.108(b) ................................................................................................ 8
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`
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`06012-00001/7575726.2
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`ii
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`Case IPR 2016-00023
`Patent Owner Preliminary Response
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`Patent Owner Seymour Levine (“Levine”) hereby submits this preliminary
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`response to the Petition filed by Petitioner The Boeing Company (“Boeing”),
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`which was accorded a filing date of October 7, 2015 (Paper 5), seeking inter partes
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`review of claims 4, 5, 8, 9, 10, 14 and 16 of U.S. Reissued Patent No. RE39,618
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`(“the ’618 patent”).
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`I.
`
`INTRODUCTION
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`By its own admission, this petition “is identical to the petition in pending
`
`IPR2015-01341, except” that Boeing has supplemented its expert’s declaration
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`specifically “to address purported deficiencies raised in the PO Preliminary
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`Response in IPR2015-01341.” Pet. at 1.
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`On December 21, 2015, the Board instituted review on all challenged claims
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`in IPR2015-01341 (the “’1341 case”), IPR2015-01341, Paper 10, rendering this
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`petition completely redundant. For the reasons discussed below, the Board should
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`exercise its discretion under 35 U.S.C. § 325(d) and deny this petition.
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`The Patent Owner does not repeat here its arguments on the merits as those
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`have already been considered by the Board in the ’1341 case. Patent Owner,
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`nevertheless, expressly reserves its right to address this IPR on the merits should it
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`be instituted in any respect.
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`06012-00001/7575726.2
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`Patent Owner Preliminary Response
`II. THE BOARD SHOULD DENY THIS PETITION UNDER § 325(d)
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`The Director, and, by extension, the Board, has broad discretion to deny a
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`petition for inter partes review that raises substantially the same prior art or
`
`arguments previously presented to the Office:
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`In determining whether to institute or order a proceeding
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`under this chapter, chapter 30, or chapter 31, the Director
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`may take into account whether, and reject the petition or
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`request because, the same or substantially the same prior
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`art or arguments previously were presented to the Office.
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`35 U.S.C. § 325(d).
`
`A. Boeing’s Second Petition Presents the Same Art and the Same
`Argument as Its Original Petition
`
`The Board has invoked this authority numerous times to deny petitions that
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`merely recycle previously presented prior art references and couple them with
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`modified arguments that attempt to address the failings of the petitioner’s first
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`effort. It has done so both when its prior decision denied review and, as here,
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`where the prior decision instituted review. See, for example, Butamax Advanced
`
`Biofuels LLC v. Gevo, Inc., Case IPR2013-00581, slip op. at 9-10, (PTAB Oct 14,
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`2014) (Paper 8) (denying review under § 325(d) where petition sought to add
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`evidence to correct mistake in prior petition where review had been instituted
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`against the same claim); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
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`Case IPR2013-00324, slip op. at 6-7 (PTAB Nov. 21, 2013) (Paper 19)
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`06012-00001/7575726.2
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`2
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`(informative) (denying review under § 325(d) where second petition applied new
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`reference against claim for which review had already been instituted).
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`Case IPR 2016-00023
`Patent Owner Preliminary Response
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`Here, Boeing admits that:
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`This petition is identical to the petition in pending
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`IPR2015-01341, except (a) paragraphs 107-111 of
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`Exhibit 1002 (Helfrick Decl.), exhibits referenced
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`therein, and citations thereto, and (b) further evidence
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`that Exhibit 1013 is a printed publication. This material
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`was added in an abundance of caution to address
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`purported deficiencies raised in the PO Preliminary
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`Response in IPR2015-01341.
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`Pet. at 1.1 The additional paragraphs added to the Helfrick Declaration address a
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`single issue identified in Levine’s Preliminary Response in the ’1341 case,
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`pointing out that Boeing had failed to provide any evidence that the claimed
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`transmitter was “portable” or “positionable” as required by the challenged claims.2
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`Boeing acknowledges that this petition is designed expressly to remedy that
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`1 During the Initial Conference in the ’1341 case, held on January 15, 2016,
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`Boeing indicated that its proposed Motion for Supplemental Information in that
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`case would not include the additional declaration related to Ex. 1013. This
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`response is, therefore, focused on the other evidence Boeing proposes to add by
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`this Petition.
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`2 IPR2015-01341, paper 7, pp. 16-18, 25-26, 28-29.
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`06012-00001/7575726.2
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`3
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`
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`deficiency by adding information that was clearly in Boeing’s possession at the
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`Case IPR 2016-00023
`Patent Owner Preliminary Response
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`time it filed the ’1341 petition.
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`Through this second petition, Boeing seeks, simply, to bolster its case by
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`fixing a mistake identified by Levine in its first petition. The Board should
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`discourage such behavior by denying Boeing’s petition here. ZTE Corp.
`
`v.ContentGuard Holdings, Inc., Case IPR2013-00454, slip op. at 5–6 (PTAB Sept.
`
`25, 2013) (Paper 12)(informative) (“The Board is concerned about encouraging,
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`unnecessarily, the filing of petitions which are partially inadequate.”)
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`The Board has often found two factors, both present here, important in
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`deciding whether to deny a petition under § 325(d): 1) whether the second petition
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`is in direct response to deficiencies in the original petition identified by the Patent
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`Owner or the Board; and 2) whether Petitioner was aware of the new evidence
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`presented when it filed the original petition.
`
`In Butamax, IPR2014-00581, for example, Petitioner’s original petition
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`sought review of claim 5 based on anticipation and obviousness. Review was
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`granted as to obviousness but denied as to anticipation because Petitioner had
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`erroneously relied on a reference it contended was incorporated by reference. In
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`its second petition, Petitioner, expressly responding to the deficiencies identified
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`by the Board, corrected its mistake by adding the reference itself. The Board
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`denied the Petition under § 325(d), noting that “[t]he only difference in the present
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`Patent Owner Preliminary Response
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`proceeding is that Butamax corrects its misstatement of which document is
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`incorporated by reference . . . and includes this document in the record as an
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`exhibit.” Id. at 9-10. The Board further relied on “the fact that Butamax has
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`already succeeded in petitioning the Board to institute inter partes review of claim
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`5 . . . .” Id. at 10. See also, Unilever, Inc. v. Procter & Gamble Co., Case
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`IPR2014-00506, slip op. at 6-8 (PTAB July 7, 2014) (Paper 17) (informative)
`
`(rejecting a second petition seeking review of claims for which review was
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`previously denied because Petitioner presented “no argument or evidence that the
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`seven newly cited references were not known or available to it at the time of filing
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`of the” original petition and also because “the instant Petition uses our prior
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`Decision on Institution to bolster challenges that were advanced, unsuccessfully, in
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`the” original petition.)
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`In each of these cases, despite the new evidence presented, the Board
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`rejected that petition “because[] the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” Butamax, IPR2014-00581 at
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`10, quoting 35 U.S.C. § 325(d). Boeing’s second Petition is the same as its first,
`
`presenting the same grounds, based on the same art against the same claims as the
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`’1341 petition. The only additional material are statements from its expert that
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`could have been included in the ’1341 petition, but were not.
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`06012-00001/7575726.2
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`5
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`Case IPR 2016-00023
`Patent Owner Preliminary Response
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`B.
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`Boeing’s Second Petition Should be Denied for the Same Reason
`Its Proposed Motion to Submit Supplemental Information Should
`be Denied
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`Boeing has embarked on a multi-pronged effort to get Dr. Helfrick’s new
`
`evidence before the Board. In addition to the instant petition, Boeing has requested
`
`permission to file a motion to submit supplemental information in the ’1341 case
`
`or, in the alternative, a motion for joinder in this and the ’1341 case. As Levine
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`expressed during the Initial Conference in the ’1341 case, it opposes Boeing’s
`
`efforts on all fronts. Moreover, because all of Boeing’s efforts are directed to the
`
`same purpose: to add information to the ’1341 case; prior Board decisions denying
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`petitions under § 325(d) as well as those denying motions for supplemental
`
`information should inform the Board’s decision here.
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`The Board often denies motions to submit supplemental information when
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`that information “effectively changes the evidence originally relied upon in a
`
`petition.” Mitsubishi Plastics, Inc., v. Celgard, LLC, Case IPR2014-00524, slip op.
`
`at 5-6 (PTAB Nov. 28, 2014) (Paper 30). In that case the Board denied a request
`
`to add expert declarations used in other cases against the same patent to support
`
`similar grounds, citing Petitioner’s admission that the additional evidence was
`
`intended “to bolster the evidence originally submitted in support of the Petition in
`
`this proceeding.” Id. at 6. See also, ZTE Corp. v. ContentGuard Holdings, Inc.
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`Case IPR2013-00139, slip op. at 2-3 (PTAB Jul 30, 2013) (Paper 27) (denying
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`Case IPR 2016-00023
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`request to file a motion for supplemental information to add two references “that
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`were in the petitioner’s possession at the time of filing of the petition” and were
`
`being submitted to “bolster” petitioner’s position in light of the Board’s claim
`
`construction.); Rackspace US, Inc. v. PersonalWeb Technologies, LLC, Case
`
`IPR2014-00057, slip op. at 4-8 (PTAB Apr. 30, 2014) (Paper 16) (same).
`
`That is exactly what the additional information added in the instant petition
`
`does to information submitted in the ’1341 petition. It “changes the evidence
`
`originally relied on” by Boeing in the ’1341 petition by, for the first time,
`
`providing evidence on the “portable”/“positionable” requirement of the claimed
`
`transmitter. Under the guise of merely flushing out the record, Boeing seeks to
`
`bolster its case against the ’618 patent with information that should have been
`
`submitted with the ’1341 petition but which is being submitted here only in
`
`response to Levine’s Preliminary Response in the ’1341 case. See, Vitaulic Co. v.
`
`The Viking Corp., Case IPR2015-00423, slip op. at 4 (PTAB Aug 4, 2015) (Paper
`
`16) (granting motion to submit supplemental information in part because “the
`
`additional information from [the expert] was not created to address deficiencies
`
`with the Petition raised by Patent Owner.”(emphasis added)).
`
`Contrary to Boeing’s arguments during the Initial Conference in the ’1341
`
`case, a conclusion that Boeing’s motion for supplemental information should be
`
`rejected because it seeks to change the evidence it originally relied on, does not, at
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`06012-00001/7575726.2
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`7
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`the same time, support allowing Boeing to submit that evidence through a second
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`Case IPR 2016-00023
`Patent Owner Preliminary Response
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`petition and avoid denial under § 325(d).
`
`As discussed above, the Board has often relied on § 325(d) to deny a second
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`petition even when it offers completely new evidence, such as new prior art or new
`
`declarations. See, Butamax, IPR2014-00581, Paper 8 (adding new reference);
`
`Intelligent Bio-Systems, IPR2013-00324, Paper 19 (same); Maxlinear, Inc. v.
`
`Cresta Technolohy Corp., Case IPR2015-00591, slip op. at 9 (PTAB June 15,
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`2015) (Paper 9) (rejecting petition relying on new declaration). Moreover, the
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`Board has complete discretion when deciding whether to institute review.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C. §
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`314(a).3 “[B]y stating that the Director—and by extension, the Board—may not
`
`institute review unless certain conditions are met, Congress made institution
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`discretionary. In determining whether to institute an inter partes review, the Board
`
`may ‘deny some or all grounds for unpatentability for some or all of the challenged
`
`claims.’ 37 C.F.R. § 42.108(b).” Intelligent Bio-Systems, IPR2013-00324, Paper 19
`
`
`3 “(a) THRESHOLD.--The Director may not authorize an inter partes
`
`review to be instituted unless the Director determines that the information
`
`presented in the petition filed under section 311 and any response filed under
`
`section 313 shows that there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.”
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`at 4 (emphasis original). That discretion is further guided by § 325(d), as
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`Case IPR 2016-00023
`Patent Owner Preliminary Response
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`discussed above.
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`The Board, therefore, has full discretion to deny institution of review, even if
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`the petition cites information not included in a prior petition. Under § 325(d), the
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`Board considers whether the “same or substantially the same prior art or arguments
`
`previously were presented to the Office.” Here, the instant petition presents the
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`same prior art and the same arguments presented in the ’1341 petition. The
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`additional evidence offered by Dr. Helfrick does not change this fact. Moreover,
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`the Board has complete discretion to deny the instant petition because Boeing will
`
`be unable to explain why it could not have presented this information in the ’1341
`
`petition other then to admit that it is doing so to correct deficiencies identified by
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`Levine.
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`“[T]o secure the just, speedy, and inexpensive resolution of every
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`proceeding,” 37 C.F.R. § 42.1(b), the Board should deny Boeing’s Petition and
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`avoid “encouraging, unnecessarily, the filing of petitions which are partially
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`inadequate.” ZTE Corp., IPR2013-00454, Paper 12 at 5–6.
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`III. CONCLUSION
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`In view of the foregoing, the Petition should be denied in its entirety.
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`Case IPR 2016-00023
`Patent Owner Preliminary Response
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`Date: January 19, 2016
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` Respectfully submitted,
`
`By: /Bruce R. Zisser, Reg. No. 40,884/
` Bruce R. Zisser, Reg. No. 40,884
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`865 S. Figueroa St., 10th Floor
`Los Angeles, CA 90017
`General Tel: (213) 443-3000
`Direct Tel: (213) 443-3434
`Fax: (213) 443-3100
`Email: brucezisser@quinnemanuel.com
`
`Attorney for Patent Owner –
`Seymour Levine
`
`06012-00001/7575726.2
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`10
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`Case IPR 2016-00023
`Patent Owner Preliminary Response
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER
`
`PRELIMINARY RESPONSE TO PETITION PURSUANT TO 37 C.F.R. § 42.107
`
`was served electronically via e-mail on January 19, 2016, in its entirety on the fol-
`
`lowing:
`
`Ryan J. McBrayer (Reg. No. 54,299)
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`RMcBrayer@perkinscoie.com
`
`Chun M. Ng
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`CNg@perkinscoie.com
`
` Respectfully submitted,
`
`By: /Bruce R. Zisser, Reg. No. 40,884/
` Bruce R. Zisser, Reg. No. 40,884
`Lead Attorney for Patent Owner
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`865 S. Figueroa St., 10th Floor
`Los Angeles, CA 90017
`General Tel: (213) 443-3000
`Direct Tel: (213) 443-3434
`Fax: (213) 443-3100
`Email: brucezisser@quinnemanuel.com
`
`
`Attorney for Patent Owner –
`Seymour Levine
`
`
`
`Date: January 19, 2016
`
`
`
`06012-00001/7575726.2
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`11
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