Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`KAZ USA, INC.,
`Petitioner
`
`v.
`
`BRITA LP,
`Patent Owner
`
`_____________________
`
`CASE IPR2016-01893
`
`U.S. Patent No. 8,167,141
`_____________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107(a)
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`III. 
`
`Introduction ...................................................................................................... 1 
`
`The Board should disregard Petitioner’s claim construction of “Filter
`Rate and Performance (FRAP) factor” ............................................................ 5 
`
`Petitioner’s arguments regarding inherent anticipation by Knipmeyer
`and Rinker belie its simultaneous allegations of lack of priority,
`requiring denial of Grounds 1 and 5-8 ............................................................ 7 
`
`A. 
`
`B. 
`
`C. 
`
`The challenged claims are entitled to claim priority benefit to
`June 30, 2004 ....................................................................................... 10 
`
`Knipmeyer and Rinker do not qualify as prior art to the ’141
`patent claims ........................................................................................ 15 
`
`To the extent that the Board determines that Knipmeyer and
`Rinker do not provide written description support for the ’141
`patent claims, Petitioner’s Grounds 1, 5, 7, and 8, based on
`inherent anticipation by Knipmeyer and Rinker, fail .......................... 16 
`
`IV.  Petitioner’s Grounds based on Cutler ’483 fail to establish a reasonable
`likelihood of prevailing with respect to any challenged claim ...................... 17 
`
`A. 
`
`The Board should deny trial on Ground 2 because Petitioner has
`not met its burden to demonstrate inherent anticipation ..................... 18 
`1. 
`Patent Owner does not bear the burden to disprove
`inherency at this stage ............................................................... 18 
`Petitioner’s inherency argument fails legally ........................... 22 
`
`2. 
`
`(a) 
`
`(b) 
`
`Petitioner fails to demonstrate that Cutler ’483
`inherently discloses the claimed FRAP factor .............. 22 
`
`Petitioner has not demonstrated that Cutler ’483
`discloses all the elements of claim 1 arranged as
`claimed ........................................................................... 25 
`
`B. 
`
`The Board should deny trial on Grounds 3 and 4 because
`Petitioner fails to meet the legal standards for demonstrating that
`the challenged claims would have been obvious ................................ 27 
`
`i
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`Ground 3 fails to demonstrate that the ’141 patent claims
`would have been obvious .......................................................... 28 
`Ground 4 fails to demonstrate that the ’141 patent claims
`would have been obvious .......................................................... 31 
`
`1. 
`
`2. 
`
`V. 
`
`The Grounds are redundant ........................................................................... 32 
`
`VI.  Conclusion ..................................................................................................... 34 
`
`ii
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`Patent Owner Brita LP provides this preliminary response to Petitioner KAZ
`
`USA, Inc.’s Petition for inter partes review of U.S. Patent No. 8,167,141 (“the
`
`’141 patent”; EX1001) in accordance with 37 C.F.R. § 42.107(a).
`
`I.
`
`Introduction
`
`The Board should deny institution because the Petition falls far short of
`
`establishing a reasonable likelihood of prevailing with respect to any challenged
`
`claim. The challenged claims are generally directed to a gravity-fed water filter
`
`comprising at least activated carbon and a lead scavenger, wherein the filter
`
`achieves certain performance metrics. (EX1001, 34:6-26.) The patent arises from
`
`discoveries made by Brita LP, a company known for its innovative household
`
`water filter products.
`
`Brita discovered and developed a new class of gravity-fed water filters that
`
`improve water safety by enhancing lead removal from drinking water while at the
`
`same time achieving flow rates suitable for a home water filtration system. Prior
`
`art water filters did not achieve these objectives because they often did not
`
`maintain their lead extraction properties over the expected life of the water filter
`
`and/or they failed to achieve the flow rates suitable for a gravity-fed water filter.
`
`(EX1001, 3:51 – 5:14.) The claimed gravity-fed water filters are an advancement
`
`over the art as measured by their ability to achieve the specified Filter Rate and
`
`Performance (“FRAP”) factor, which takes into consideration the volume of the
`
`
`
`1
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`filter media (V), the average flow rate over the filter’s lifetime (f), and the
`
`concentration of lead present in effluent at the end of the filter’s lifetime (ce).
`
`The Petition raises eight grounds for challenging various claims of the ’141
`
`patent. Four of these grounds (Grounds 1, 5-8) rely on either Knipmeyer (EX1009)
`
`or Rinker (EX1004), the very applications to which the ’141 patent claims priority.
`
`Because a priority application by definition is not prior art to a patent claiming the
`
`benefit of the earlier application, Petitioner first seeks to sever the priority chain by
`
`asserting that the ’141 patent’s priority applications lack written description
`
`support for the “FRAP factor or its very specific formulaic relationship between
`
`the variables contained therein.” (Paper 1 at 19.) However, Petitioner also alleges
`
`that the FRAP factor “is merely a performance factor that accounts for various
`
`properties and/or characteristics of a tested water filter.” (Id.) It then contradicts its
`
`own assertions by arguing that the same priority applications inherently disclose
`
`and anticipate gravity-fed filters having the claimed FRAP factor. (Id. at 23-29,
`
`58-59.) Petitioner cannot have it both ways. It cannot argue that the inventors
`
`lacked possession of the claimed filters on the one hand, while arguing on the other
`
`hand that the inventors’ disclosure of their filters in the priority documents are
`
`sufficient to anticipate.
`
`If Knipmeyer and Rinker contain an inherent disclosure of gravity-fed water
`
`filters with the properties characterized by the claimed FRAP factor as Petitioner
`
`
`
`2
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`contends, then controlling precedent mandates that the ’141 patent is entitled to
`
`claim priority at least to the earliest filing date of Knipmeyer and Rinker—i.e.,
`
`June 30, 2004. See Kennecott Corp. v. Kyocera Int’l, Inc., 835 F.2d 1419, 1423
`
`(Fed. Cir. 1987) (holding that “[t]he disclosure in a subsequent patent application
`
`of an inherent property of a product does not deprive that product of the benefit of
`
`an earlier filing date.”). As such, neither Knipmeyer or Rinker qualify as prior art
`
`against the ’141 patent and Grounds 1 and 5-8 may be dismissed.
`
`In Ground 2, Petitioner contends that Cutler ’483 (EX1002) anticipates
`
`certain claims of the ’141 patent by inherently disclosing gravity-fed water filters
`
`with properties characterized by the claimed FRAP factor. (Paper 1 at 36-44.) But
`
`as set forth in further detail below, Petitioner only offers evidence that the Cutler
`
`’483 water filters “likely” meet the claimed FRAP factor. This is insufficient as a
`
`matter of law. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency
`
`… may not be established by probabilities or possibilities. The mere fact that a
`
`certain thing may result from a given set of circumstances is not sufficient.”).
`
`Further, Ground 2 improperly asserts anticipation by combining elements from
`
`several discrete examples within Cutler ’483. This contravenes the strict
`
`requirement that proof of anticipation requires disclosure of all elements as
`
`arranged in the claims. See Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359,
`
`1369 (Fed. Cir. 2008); see also Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-
`
`
`
`3
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`01509, Paper 49, at 30-31 (PTAB Mar. 29, 2016) (finding no anticipation of the
`
`challenged claims because the petitioner “pick[ed] and cho[se] among the methods
`
`of operation disclosed in [the prior art] to assemble the claimed subject matter.”).
`
`Accordingly, as a matter of law Petitioner has not shown that it can establish that
`
`Cutler ’483 anticipates any challenged claim. Ground 2 should be denied.
`
`The remaining grounds (Grounds 3 and 4) allege obviousness over Cutler
`
`’483 alone or in various combinations with three other references. (Paper 1 at 44-
`
`57.) The significant defects of Cutler ’483 discussed with respect to Ground 2 also
`
`apply to Cutler ’483 as relied upon for Grounds 3 and 4. In addition, Grounds 3
`
`and 4 also fail because the Petition fails to provide anything more than conclusory
`
`testimony to suggest why a skilled artisan would have had been motivated to
`
`modify Cutler ’483 or any evidence that a skilled artisan would have had a
`
`reasonable expectation of success in doing so.1 In the absence of such evidence,
`
`Petitioner has not met its burden of showing any likelihood of success, and
`
`Grounds 3 and 4 should be denied. See Benitec Biopharma Ltd. v. Cold Spring
`
`Harbor Lab., IPR2016-00014, Paper 7, at 23 (PTAB Mar. 23, 2016) (denying
`
`
`1 Petitioner also relies on Rinker in Ground 4 to challenge claim 10 as obvious.
`
`Therefore, Ground 4 with regard to claim 10 also fails because Rinker does not
`
`qualify as prior art. (See §III.A. and §III.B.)
`
`
`
`4
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`institution of a proffered ground when “Petitioner provide[d] no evidence of
`
`reasonable expectation of success in achieving the claimed invention.”); Arista
`
`Networks, Inc. v. Cisco Sys., Inc., IPR2016-00306, Paper 8, at 17 (PTAB June 6,
`
`2016) (same); see also PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193
`
`(Fed. Cir. 2014) (“A party asserting that a patent is obvious must demonstrate …
`
`that a skilled artisan would have had reason to combine the teaching of the prior art
`
`references to achieve the claimed invention, and that the skilled artisan would have
`
`had a reasonable expectation of success from doing so.”)
`
`In sum, and as discussed in more detail below, none of Petitioner’s Grounds
`
`establish a reasonable likelihood of prevailing with respect to any challenged
`
`claim. Trial should not be instituted, and the Petition should be denied in its
`
`entirety.
`
`II. The Board should disregard Petitioner’s claim construction of “Filter
`Rate and Performance (FRAP) factor”
`
`Petitioner asserts that the term “Filter Rate and Performance (FRAP) factor”
`
`requires a claim construction. (Id. at 20-21.) But Petitioner does not suggest that
`
`the claim language itself requires interpretation. Rather, it asserts that that the
`
`claimed FRAP factor “should be construed as an inherent property of the filter
`
`recited in the Challenged Claims.” (Id. at 22 (emphasis added).) This argument
`
`should be rejected.
`
`Claim 1 recites, in part, “[a] gravity-fed water filter, comprising: filter media
`
`
`
`5
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`including at least activated carbon and a lead scavenger” that achieves a “Filter
`
`Rate and Performance (FRAP) factor of about 350 or less” according to a specific
`
`formula. (EX1001, 34:6-26.) Petitioner contends that “[t]he FRAP factor and its
`
`variables … do not explicitly provide any additional structural or compositional
`
`limitations.” (Paper 1 at 21.)
`
`Petitioner’s argument, thus, reads the FRAP factor out as an explicit
`
`limitation of the claims. Under Petitioner’s interpretation, any “gravity-fed water
`
`filter, comprising: filter media including at least activated carbon and a lead
`
`scavenger” will inherently achieve a FRAP factor of about 350 or less. But this
`
`interpretation is contradicted by the ’141 patent specification which makes clear
`
`that not all such water filters achieve a FRAP factor of about 350 or less. (See
`
`EX1001, Table 5; see also id., Figs. 26 and 27.)
`
`Indeed, Table 5 of the ’141 patent presents FRAP factors for prior art filters
`
`comprised of mixed media, i.e., activated carbon and ion exchange resin that
`
`facilitates removal of lead, that have FRAP factors above 350. (See id., Table 5;
`
`see also id., Figs. 26 and 27.) For example, the German Maxtra filter had a FRAP
`
`factor of 402.3 and each of the three tested PUR 2 filters had FRAP factors in
`
`excess of 700. (See id., Table 5; see also id., Figs. 26 and 27.) Accordingly, it is
`
`not the case that any and all gravity-fed water filters with activated carbon and a
`
`lead scavenger will necessarily achieve the performance as defined by the claimed
`
`
`
`6
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`FRAP factor. Rather, the claims are directed to gravity-fed water filters with
`
`activated carbon and a lead scavenger that achieve the performance requirement of
`
`the recited FRAP factor. Accordingly, Petitioner’s proposed claim construction
`
`should be rejected.
`
`III. Petitioner’s arguments regarding inherent anticipation by Knipmeyer
`and Rinker belie its simultaneous allegations of lack of priority,
`requiring denial of Grounds 1 and 5-8
`
`Grounds 1 and 5-8 of the Petition each hinge upon an unsupported and self-
`
`contradictory challenge to the effective filing date of the ’141 patent. Petitioner
`
`contends that two applications in the ’141 patent’s priority chain—Rinker
`
`(EX1004) and Knipmeyer (EX1009)—are prior art to the ’141 patent claims under
`
`the theory that that the ’141 patent cannot claim the priority benefit of these
`
`applications because they lack sufficient written description support for the
`
`claimed FRAP factor. (Paper 1, at 17-20.) But Petitioner then proceeds to argue
`
`that both Rinker and Knipmeyer inherently disclose gravity-fed water filters that
`
`achieve the FRAP factor and, therefore, anticipate at least some of the ’141 patent
`
`claims. (Id. at 24-29, 58-59.) Petitioner cannot have it both ways: it cannot argue
`
`that the priority applications lack written description to support an element of the
`
`’141 patent claims and also argue that the priority applications anticipate the ’141
`
`patent claims.
`
`The ’141 patent issued from U.S. Patent Application No. 12/207,284, which
`
`
`
`7
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`was filed on September 9, 2008 (“the ’141 application”). (See EX1001, Face Page
`
`at (21) and (22).) The ’284 application is a continuation-in-part of U.S. Patent
`
`Application No. 11/927,372, which was filed on October 29, 2007 (“the ’372
`
`application”). (Id., Face Page at (63).) The ’372 application is itself a continuation-
`
`in-part of U.S Application No. 10/881,517, which was filed on June 30, 2004 (“the
`
`’517 application”). (Id.) The ’372 application and the ’517 application correspond
`
`to Knipmeyer (EX1009) and Rinker (EX1004), respectively. The ’141 patent
`
`claims the priority benefit of both Knipmeyer and Rinker. (See EX1001, Face Page
`
`at (63), 1:5-11.) The priority chain of the ’141 patent, as illustrated by Petitioner, is
`
`reproduced below.
`
`(Paper 1 at 13.)
`
`
`
`8
`
`
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`Petitioner alleges that the ’141 patent is not entitled to claim priority to
`
`Knipmeyer based on the alleged absence of written description support for the
`
`claimed FRAP factor. (Id. at 17-20.) In particular, Petitioner alleges that the
`
`“FRAP factor is merely a performance factor that accounts for various properties
`
`and/or characteristics of a tested water filter.” (Id. at 19.) It further alleges that the
`
`’141 patent priority documents do not “provide sufficient written description
`
`support that reasonably coveys to a POSITA that the alleged inventors of the ’141
`
`patent had, at the time the earlier applications were filed, possession of at least the
`
`FRAP factor or its very specific formulaic relationship between the variables
`
`contained therein.” (Id.)
`
`Petitioner then argues that both Knipmeyer and Rinker disclose specific
`
`examples of filters that meet the claimed FRAP factor. In particular, it argues that
`
`Knipmeyer anticipates certain claims of the ’141 patent because Knipmeyer
`
`“discloses all of the structural or compositional limitations recited within
`
`independent claims 1 and 23 as well as dependent claims 2-12, 16-19, 22, and 24.”
`
`(Id. at 23-24.) And Petitioner also argues that Knipmeyer discloses at least one
`
`filter that achieves the claimed FRAP factor. (Id. at 24.)
`
`With respect to Rinker, Petitioner argues that Rinker “disclose[s] all the
`
`structural and compositional limitations of claims 1, 2, and 23,” as well as the
`
`“remaining limitations in claims 1-12, 17-18, and 22-23.” (Id. at 59-60.) And
`
`
`
`9
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`Petitioner specifically argues that Rinker discloses at least one filter that achieves
`
`the claimed FRAP factor. (Id. at 59.)
`
`For the reasons that follow, this circular logic should be rejected and
`
`Grounds 1 and 5-8 should be denied.2
`
`A. The challenged claims are entitled to claim priority benefit to
`June 30, 2004
`
`The trouble with Petitioner’s argument is that the very limitation that it
`
`argues is missing for purposes of challenging priority is the same limitation it
`
`argues is merely an inherent property of the filters disclosed by Knipmeyer and
`
`Rinker. If Knipmeyer and Rinker sufficiently disclose filters with such
`
`performance properties for purposes of anticipation, then those same filters
`
`demonstrate that the inventors had possession of those filters, so as to satisfy the
`
`written description requirement for priority. See Kennecott, 835 F.2d at 1423.
`
`Accordingly, if the Board credits Petitioner’s arguments that Knipmeyer and
`
`Rinker disclose filters that achieve the FRAP factor, then the ’141 patent claims
`
`can rightfully claim priority benefit to Knipmeyer’s and Rinker’s filing dates, i.e.,
`
`to at least as early as June 30, 2004.
`
`2 Petitioner also relies on Rinker in Ground 4 to challenge claim 10 as obvious.
`
`Therefore, Ground 4 with regard to claim 10 also fails because Rinker does not
`
`qualify as prior art. (See §III.A. and §III.B.)
`
`
`
`10
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`It is well-settled that“[t]he disclosure in a subsequent patent application of
`
`an inherent property of a product does not deprive that product of the benefit of an
`
`earlier filing date. Nor does the inclusion of description of that property in later-
`
`filed claims change this reasonable result.” Kennecott Corp., 835 F.2d at 1423.
`
`This is because “[u]nder the doctrine of inherent disclosure, when a specification
`
`describes an invention that has certain undisclosed yet inherent properties, that
`
`specification serves as adequate written description to support a subsequent patent
`
`application that explicitly recites the invention’s inherent properties.” Yeda
`
`Research & Dev. Co. v. Abbott GmbH & Co. KG, 837 F.3d 1341, 1345 (Fed. Cir.
`
`2016) (citing Kennecott, 835 F.2d at 1423). That is precisely the case here.
`
`In Kennecott, the claims-at-issue in a continuation-in-part (“CIP”) patent
`
`recited a sintered ceramic body “having a predominantly equiaxed microstructure.”
`
`The defendant argued that the claims could not claim the priority benefit of the
`
`CIP’s parent application because the parent application did not explicitly recite the
`
`words “equiaxed microstructure,” and did not explicitly disclose a ceramic body
`
`with an equiaxed microstructure or the requirements for forming such a structure.
`
`Kennecott, 835 F.2d at 1419-20. However, the defendant conceded, and the
`
`undisputed facts showed, that the parent application inherently disclosed multiple
`
`examples of ceramic bodies with equiaxed microstructures. Id. at 1420-21.
`
`Moreover, the defendant admitted that a POSA could readily determine the
`
`
`
`11
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`microstructure of the products disclosed in the parent application. Id. at 1421.
`
`The Federal Circuit in Kennecott found the parent application to provide
`
`written description support for the CIP’s claims based on the inherent disclosure of
`
`sintered ceramic bodies with an equiaxed microstructure. It explained that “the
`
`additional description [in the CIP] was not of a new use, but of the existing
`
`physical structure of the product.” Id. at 1423. As such, “the invention of the [CIP]
`
`claims … is the same product in the [parent] application, and has the same
`
`structure.” Id. Thus, “the inclusion of the existing microstructure as a descriptive
`
`term in the [CIP’s] claims [did] not cause the [CIP’s] claims to lose their
`
`entitlement to the date of the [parent] application.” Id.
`
`Here, the ’141 patent claims are also directed to a product having a certain
`
`performance property—a FRAP factor of about 350 or less. And, as in Kennecott,
`
`the ’141 patent claims issued from a CIP that claims the priority benefit of parental
`
`applications. Petitioner argues that those parental applications, Knipmeyer and
`
`Rinker, disclose gravity-flow filters with properties that meet the claimed FRAP
`
`factor. (Paper 1 at 24-29, 58-59.) Petitioner further argues that that the FRAP
`
`factor is a “measurement of an inherent performance property” and does not
`
`“explicitly provide any additional structural or compositional limitations.” (Paper
`
`1, at 21.) And Petitioner also argues that filters disclosed in Knipmeyer and Rinker
`
`anticipate the claims of the ’141 patent—i.e. the filters described in Knipmeyer and
`
`
`
`12
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`Rinker are the same as the filters claimed by the ’141 patent. (Id. at 23-35, 57-62.)
`
`As such, Petitioner’s own arguments demonstrate that the ’141 patent claims do
`
`not lose their priority benefit to the earlier applications merely because the ’141
`
`patent includes a descriptive term for structures previously disclosed by the priority
`
`applications. Kennecott, 835 F.2d at 1423.
`
`Likewise, in Yeda, the Federal Circuit found that the inherent disclosure of a
`
`patent’s claimed invention in the patent’s priority application entitled the patent to
`
`claim the benefit of the priority application’s earlier filing date. Yeda, 837 F.3d at
`
`1344-45. In that case, the patent-at-issue claimed a protein having an N-terminus
`
`with a specific amino acid sequence. Id. at 1343. But the patent’s priority
`
`application did not expressly describe the full claimed sequence. Id. at 1344.
`
`However, the priority application did disclose part of the claimed sequence, a
`
`protocol for obtaining the protein from a biological source, and additional
`
`properties of the claimed protein, such that it could be identified once obtained. Id.
`
`And the parties also agreed that the only protein containing the partial N-terminus
`
`sequence disclosed in the priority application was the protein claimed in the
`
`subject patent. Id. Thus, the court found it undisputed that the priority application
`
`inherently disclosed the full N-terminus as claimed by the later patent. Id. at 1345.
`
`In deciding that the patent’s claims derived priority benefit from the earlier
`
`priority application, the court found, “[i]t is not necessary for an application to
`
`
`
`13
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`disclose a protein’s complete N-terminus sequence in order to provide an adequate
`
`written description of that protein.” Id. Thus, where “the invention described in an
`
`earlier application was the exact invention claimed by the later patent,” the
`
`doctrine of inherent disclosure applied, and written description was satisfied,
`
`giving the patent’s claims priority benefit to the patent’s priority application. Id.
`
`Here, as in Yeda, Petitioner argues that the invention described in
`
`Knipmeyer and Rinker is “the exact invention claimed,” i.e., inherently anticipates
`
`claims of the ’141 patent. (Paper 1 at 24-29, 58-59.) Consequently, “[i]t is not
`
`necessary for [the ’141 patent’s priority] application[s] to disclose [explicitly the
`
`claimed FRAP factor] to provide an adequate written description” for the ’141
`
`patent claims. Yeda, 837 F.3d at 1345. Accordingly, under Petitioner’s reasoning
`
`that Knipmeyer and Rinker inherently disclose gravity-fed water filters having the
`
`claimed FRAP factor, they also must provide written description support for the
`
`’141 patent claims. Id. And the ’141 patent claims are entitled to claim priority
`
`benefit to Knipmeyer and Rinker’s earlier filing dates. Id.
`
`In sum, Petitioner’s own arguments and controlling authority compel a
`
`conclusion that Knipmeyer and Rinker provide written description for the ’141
`
`patent claims. Kennecott, 835 F.2d at 1423; Yeda, 837 F.3d at 1345. This means
`
`that the ’141 patent claims can claim priority benefit to the ’141 patent’s priority
`
`applications’ filing dates, i.e., to at least June 30, 2004. Lockwood v. Am. Airlines,
`
`
`
`14
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997) (holding that applications in a patent’s
`
`chain of priority must satisfy the requirements of § 112 for the patent to claim the
`
`priority benefit of their filing dates).
`
`B. Knipmeyer and Rinker do not qualify as prior art to the ’141
`patent claims
`
`In light of the result of Petitioner’s arguments discussed above, the ’141
`
`patent claims have an earliest effective filing date of June 30, 2004. As such,
`
`neither Knipmeyer or Rinker qualify as prior art to the ’141 patent claims.
`
`Knipmeyer published on March 15, 2008, and Petitioner only contends that
`
`it is prior art under pre-AIA 35 U.S.C. § 102(a). (Paper 1, at 23.) Because
`
`Knipmeyer published after June 30, 2004, it does not qualify as prior art against
`
`the ’141 patent claims under § 102(a)—and it certainly can not qualify under
`
`§ 102(b). Additionally, Knipmeyer has a filing date of October 29, 2007, the same
`
`date to which the ’141 patent claims can claim priority benefit through Knipmeyer
`
`and long after the June 30, 2004 effective filing date of the ’141 patent claims. So,
`
`Knipmeyer was not filed before June 30, 2004, and does not qualify as prior art
`
`against the ’141 patent claims under § 102(e). Sections 102(c), (f), and (g) are
`
`irrelevant here.
`
`Rinker published on January 5, 2006, and Petitioner only contends that it is
`
`prior art under pre-AIA 35 U.S.C. § 102(b). (Id. at 57.) Because Rinker published
`
`after June 30, 2004, it is not prior art against the ’141 patent claims under § 102(b).
`
`
`
`15
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`Additionally, Rinker has a filing date of June 30, 2004, the same date to which the
`
`’141 patent claims can claim priority benefit through Rinker. So, Rinker was not
`
`filed before June 30, 2004, or published before June 30, 2004, and consequently
`
`does not qualify as prior art against the ’141 patent claims under §102(a) or
`
`§102(e). Sections 102(c), (f), and (g) are irrelevant here.
`
`Because neither Knipmeyer or Rinker qualify as prior art to the ’141 patent
`
`claims under any paragraph of § 102, the Board should deny trial on Grounds 1
`
`and 5-8. See Hughes Network Sys., LLC v. California Inst. of Tech., IPR2015-
`
`00081, Paper 18, at 9-10 (PTAB Apr. 27, 2015) (denying institution of trial
`
`because challenged claims were entitled to a filing date that pre-dated the asserted
`
`prior art); Amazon.com, Inc. v. Personalized Media Comm’ns, LLC, IPR2014-
`
`01533, Paper 7, at 17-20 (PTAB Mar. 26, 2015) (accord).
`
`C. To the extent that the Board determines that Knipmeyer and
`Rinker do not provide written description support for the ’141
`patent claims, Petitioner’s Grounds 1, 5, 7, and 8, based on
`inherent anticipation by Knipmeyer and Rinker, fail
`
`Petitioner asserts in Grounds 1 and 5 that Knipmeyer and Rinker,
`
`respectively, inherently anticipate certain ’141 patent claims. (Paper 1 at 23-29, 57-
`
`59.) And in Grounds 7 and 8, Petitioner relies on its arguments that Rinker
`
`inherently anticipates claim 1, as a basis to argue obviousness of dependent claims
`
`20, 21, and 24 over Rinker and other references. (Id. at 68-71.)
`
`
`
`16
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`But, to the extent the Board finds that Knipmeyer and Rinker do not
`
`inherently disclose gravity-fed water filters with the claimed FRAP factor in a
`
`manner sufficient to provide written description for ’141 patent claims, Petitioner’s
`
`anticipation arguments fail. Indeed, any finding that Knipmeyer and Rinker fail to
`
`inherently disclose gravity-fed water filters with the claimed FRAP factor proves
`
`fatal to a finding of inherent anticipation by Knipmeyer and Rinker. Cf. Kennecott,
`
`835 F.2d at 1423; Yeda, 837 F.3d at 1345.
`
`So, should the Board find that the ’141 patent claims are not entitled to the
`
`benefit of Knipmeyer and Rinker because Knipmeyer and Rinker do not allegedly
`
`inherently disclose gravity-fed water filters that achieve the claimed FRAP factor,
`
`the Board can deny Grounds 1, 5, 7, and 8, as these grounds rely on arguing
`
`inherent anticipation by Knipmeyer and Rinker.
`
`IV. Petitioner’s Grounds based on Cutler ’483 fail to establish a reasonable
`likelihood of prevailing with respect to any challenged claim
`
`In Grounds 2 and 3, Petitioner argues that U.S. Pat. No. 6,200,483 (“Cutler
`
`’483”; EX1002) allegedly inherently anticipates or would have rendered obvious
`
`claims 1-8, 11-19, 22, and 23. (Paper 1 at 36-47.) And in Ground 4, Petitioner
`
`alleges that Cutler ’483 in combination with other art would have rendered obvious
`
`claims 9, 10, 20, 21, 23, and 24. (Id. at 47-57.)
`
`As discussed below, Petitioner’s arguments fail to meet the legal
`
`requirements for anticipation and for obviousness. For instance, first, in arguing
`
`
`
`17
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`inherent anticipation by Cutler ’483 in Ground 2, Petitioner offers no evidence to
`
`support its claim that the gravity-fed water filters disclosed in Cutler ’483
`
`necessarily achieve the claimed FRAP limitation or that Cutler ’483 otherwise
`
`discloses all the elements of claim 1 arranged as claimed. Instead, Petitioner
`
`attempts to shift the burden onto Patent Owner to prove patentability based on a
`
`lack of inherency. This is improper.
`
`Petitioner also attempts to argue that a POSA would have modified Cutler
`
`’483 to arrive at the claimed invention in Grounds 3 and 4. However, Petitioner
`
`provides no support for why a POSA would have had a reason to modify Cutler
`
`’483 or would have done so with a reasonable expectation of success, as required
`
`under the law. Consequently, the Board should deny to institution on Grounds 2-4.
`
`A. The Board should deny trial on Ground 2 because Petitioner has
`not met its burden to demonstrate inherent anticipation
`
`Petitioner’s Ground 2 based on inherent anticipation fails for two reasons: (i)
`
`Petitioner improperly attempts to shift the burden of disproving inherency onto
`
`Patent Owner; and (ii) Petitioner fails to meet the legal standards for proving
`
`inherency and anticipation.
`
`1.
`
`Patent Owner does not bear the burden to disprove
`inherency at this stage
`
`In Ground 2, Petitioner asserts that Cutler ’483 allegedly anticipates claims
`
`1-8, 11-19, 22, and 23 because Cutler ’483, inter alia, purportedly inherently
`
`
`
`18
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01893
`discloses gravity-fed water filters that achieve the claimed FRAP factor. (Paper 1
`
`at 38.) And although it bears the burden of proof and persuasion, Petitioner
`
`attempts to shirk this requirement stating that Cutler ’483 discloses values for (V),
`
`(f), (ce), and (L), “which are all within the ’141 Patent’s disclosed ranges for these
`
`variables. Accordingly, the burden shifts to the Patent Owner to prove that the
`
`FRAP factor is not inherent in the filter of Cutler ’483.” (Paper 1 at 38 (emphasis
`
`added). Petitioner’s burden-shifting argument is legally erroneous. The Board
`
`should deny institution on Ground 2 on this basis.