UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
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`TOYOTA MOTOR CORPORATION,
`Petitioner,
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`v.
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`SIGNAL IP, INC.,
`Patent Owner.
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`_________________________
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`Case No. IPR2016-01382
`U.S. Patent No. 5,732,375
`_________________________
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`PETITIONER’S REPLY TO PRELIMINARY RESPONSE
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
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`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
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`SIGNAL IP, INC.,
`Patent Owner.
`
`_________________________
`
`Case No. IPR2016-01382
`U.S. Patent No. 5,732,375
`_________________________
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`
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`PETITIONER’S REPLY TO PRELIMINARY RESPONSE
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`The Board should not reject the petition under §§ 314(a) and 325(d) because
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`it addresses the Board’s reasons for denying the earlier petition. The Board should
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`instead reach the merits of the petition, which show that claim 11 is unpatentable.
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`Contrary to Patent Owner’s argument, it is not “inequitable” to use a Board
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`decision as a “‘roadmap’ to preparing a better petition.” Microsoft v. Bradium,
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`IPR2016-449, Paper 9 (July 27, 2016) at 9. Indeed, “it is unrealistic to assume a
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`second petition will not attempt to address deficiencies of an earlier petition, and
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`there is no established per se rule requiring that [the Board] deny institution based
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`on a ‘roadmap’ test.” Id.; Ford v. Paice, IPR2015-606, Paper 14 (Nov. 9, 2015) at
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`8 n.7 (“[I]t is not per se unlawful or inequitable for a party to rely on a prior
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`decision to its benefit in order to wage additional challenges on the same patent
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`where sufficient justification exists for the subsequent challenge and it does not
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`amount to an abuse of process.”); Coalition for Affordable Drugs v. Biogen,
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`IPR2015-1993, Paper 20 (March 22, 2016) at 23.
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`Instead, the Board has “discretion to consider the merits of a second petition,
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`apart from any refusal to institute on the basis of a first petition.” Id. In particular,
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`the Board can consider “whether the arguments in the Petition and the disclosures
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`in the references are distinguished substantively from those in the initial petition,”
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`Microsoft at 9, and whether the merits of the petition, including any new prior art,
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`are “persuasive.” See Medtronic v. Robert Bosch, IPR2014-488, Paper 17 (Sept.
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`1
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`
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`11, 2014) at 12; Nestle USA v. Steuben Foods, IPR2014-1235, Paper 12 (Dec. 22,
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`2014) at 7; Coalition at 22. In this case, the petition and expert declaration include
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`additional explanation and evidence, including new prior art (Tokuyama ’166 (Ex.
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`1017)), that “are distinguished substantively” from the earlier petition because they
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`squarely address the Board’s reasons for denying that petition. Petition at 32-43;
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`Declaration (Ex. 1009) at 35-46. In particular, the new Tokuyama ’166 reference
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`directly addresses the Board’s reasoning for the “all the sensors” element. Given
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`the material differences, and the resulting strength of the petition, the Board should
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`address the merits, based on the more developed and focused record.
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`The Board can also consider whether the petitioner has harassed or unduly
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`prejudiced the patent owner by overwhelming it with “an unreasonable number of
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`challenges to patentability.” Microsoft at 8. In doing so, the Board has recognized
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`that the one-year bar in § 315(b) “provides a self-limiting mechanism that protects
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`Patent Owner from prejudice resulting from serial attacks by the same Petitioner.”
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`Id. There is no harassment or prejudice here. Like the petitioner in Microsoft,
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`Petitioner “acted expeditiously after being sued” and filed only two petitions: the
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`first within months of the lawsuit, and the second before the one-year bar. Id.
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`Further, Petitioner did not withhold the additional explanation and evidence
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`from its first petition. Petitioner did not anticipate that the Board would conclude
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`that: (i) Tokuyama’s microprocessor does not assign binary 1 values to sensors that
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`2
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`are ON and does not add those values in determining whether 4 sensors are ON;
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`and (ii) the array of sensors S1 to S9 in Tokuyama is not “all the sensors” in the
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`claimed “array of force sensors on the passenger seat.” After reviewing the
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`Board’s decision, Petitioner appreciated that the additional evidence, including
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`Tokuyama ’166, addressed these two issues the Board considered dispositive.
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`Finally, Patent Owner cites Board decisions that refused to consider a
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`second petition that addressed the reasons for denying an earlier petition.
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`However, in several cases there was no material difference in the prior art or
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`arguments (see Butamax v. Gevo, IPR2014-581, Paper 8 (Oct. 14, 2014) at 8-10;
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`Samsung v. Rembrandt, IPR2015-114, Paper 14 (Jan. 28, 2015) at 6-7) or the
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`patent owner was being overwhelmed with numerous petitions on multiple claims
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`and grounds (see id. at 2-3; Conopco v. Procter & Gamble, IPR2014-628, Paper 21
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`(Oct. 20, 2014) at 11-12). Unlike in those cases, here Petitioner filed only two
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`petitions against one claim, and the second petition is materially different because
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`it includes new prior art and directly addresses the issues the Board considered
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`dispositive, thereby better focusing the issues for the Board on the merits.
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`Dated: November 10, 2016
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`Respectfully submitted,
`/ George E. Badenoch /
`George E. Badenoch (Reg. No. 25,825)
`ANDREWS KURTH KENYON LLP
`One Broadway, New York, NY 10004-1007
`Tel.: (212) 425-7200 / Fax: (212) 425-5288
`Counsel for Petitioner
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`3
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that a true
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`and correct copy of Petitioner’s Reply to Preliminary Response was served on the
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`Patent Owner’s attorneys of record via email, on November 10, 2016, at the
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`following addresses:
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`Tarek N. Fahmi (Reg. No. 41,402)
`Holly J. Atkinson (Reg. No. 69,934)
`Jason A. LaBerteaux (Reg. No. 65,724)
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`jason.laberteaux@ascendalaw.com
`patents@ascendalaw.com
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`Dated: November 10, 2016
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`/ Mark A. Chapman /
`Mark A. Chapman (admitted pro hac vice)
`ANDREWS KURTH KENYON LLP
`One Broadway, New York, NY 10004-1007
`Tel.: (212) 425-7200 / Fax: (212) 425-5288
`Counsel for Petitioner
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