UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GRIT ENERGY SOLUTIONS, LLC,
`Petitioner
`
`
`v.
`
`
`OREN TECHNOLOGIES, LLC,
`Patent Owner.
`
`______________
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`______________
`
`
`JOINT BRIEF ON REMAND
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GRIT ENERGY SOLUTIONS, LLC,
`Petitioner
`
`
`v.
`
`
`OREN TECHNOLOGIES, LLC,
`Patent Owner.
`
`______________
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`______________
`
`
`JOINT BRIEF ON REMAND
`
`
`
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`GRIT ENERGY’S OBVIOUSNESS ARGUMENTS ................................... 1
`A.
`Constantin as the Primary Reference ................................................... 1
`B.
`Eng Soon as the Primary Reference ..................................................... 3
`III. OTHER ISSUES RAISED IN THE REMAND DECISION ......................... 5
`
`
`i
`
`
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`
`I.
`
`Introduction
`In Grit Energy Solutions, LLC, v. Oren Technologies, LLC, 957 F.3d 1309
`
`(Fed. Cir. 2020) (the “Remand Decision”), the Court of Appeals for the Federal
`
`Circuit (the “Federal Circuit”) “conclude[d] that Constantin does disclose the ’341
`
`configuration [as defined in the Remand Decision]” and “vacate[d] and remand[ed]
`
`for the Board to reconsider Grit Energy’s obviousness arguments[, s]ome of [which]
`
`relied on Constantin as the primary prior art reference, and others relied on Eng Soon
`
`as the primary prior art reference.” 957 F.3d at 1323. The Remand Decision then
`
`addressed reasons the Board gave for rejecting Grit Energy’s obviousness
`
`arguments. Id. at 1323-24.
`
`Pursuant to the Board’s July 24, 2020 order (Paper 31), the parties jointly
`
`submit this paper to identify where in the briefing and the hearing transcript1 the
`
`parties addressed issues raised in the Remand Decision.
`
`II. Grit Energy’s Obviousness Arguments
`A. Constantin as the Primary Reference
`The parties identify the following locations in the briefing and the hearing
`
`transcript for their arguments and evidence addressing whether the challenged
`
`claims are unpatentable as obvious with Constantin as the primary reference:
`
`
`1 The parties received permission via e-mail from the Board on August 28, 2020, to
`
`identify locations in the hearing transcript.
`
`1
`
`
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`
`For Petitioner:
`
`
`
`Petition (Paper 2) sections IV.B (page 6), IX.A.3 – IX.A.4 (pages 39-
`
`52), IX.A.6 – IX.A.7 (pages 56-57), IX.A.7.(a)(2) (pages 60-61),
`
`IX.A.7.(b) – IX.A.7.(d) (pages 61-64), and IX.B (pages 64-77).
`
`
`
`
`
`Reply (Paper 17) sections VI – VII (pages 22-23).
`
`Petitioner’s Rehearing Request (Paper 28) sections I (page 2) and IV
`
`(pages 13-15).
`
`For Patent Owner:
`
`
`
`Patent Owner Response (Paper 15) sections IV.B (pages 27-28), VI
`
`(pages 29-30), and VI.E – VI.F (pages 56-61).
`
`
`
`
`
`2
`
`
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`
`B.
`Eng Soon as the Primary Reference
`The parties identify the following locations in the briefing and the hearing
`
`transcript for their arguments and evidence addressing whether the challenged
`
`claims are unpatentable as obvious with Eng Soon as the primary reference:
`
`For Petitioner:
`
`
`
`Petition sections IV.B (page 6), IX.A (pages 20-21), IX.A.1 – IX.A.2
`
`(pages 21-39), IX.A.5 (pages 52-55), IX.A.7 (page 57), IX.A.7.(a)(1)
`
`(pages 58-60), IX.A.7.(2)(b) – IX.A.7.(2)(d) (pages 61-64), and IX.B
`
`(pages 64-77).
`
`Reply sections I (page 1), III (pages 3-11), IV (page 11), IV.C (pages
`
`17-19), and V – VII (pages 19-23).
`
`
`
`
`
`page 4, line 9 – page 6, line 26,
`
`Hearing Transcript (Paper 26) at:
`o
`o
`o
`
`page 16, line 13 – page 18, line 3, and
`
`page 39, line 14 – page 45, line 18.
`
`
`
`Petitioner’s Rehearing Request (Paper 28) sections I (pages 1-2),
`
`II (pages 2-5), III.B (pages 11-13), and IV (pages 13-15).
`
`For Patent Owner:
`
`
`
`Patent Owner Response sections IV.A (pages 26-27), VI (pages 29-30),
`
`VI.A – VI.B (pages 30-38), VI.C.3 (pages 43-46), and VI.D – VI.F
`
`3
`
`
`
`(pages 49-61).
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`
`
`
`page 19, lines 11-20
`
`page 24, lines 1-15,
`
`page 27, line 4 – page 34, line 9,
`
`Hearing Transcript at:
`o
`o
`o
`o
`o
`
`page 35, lines 4-8, and
`
`page 36, line 1 – page 38, line 7.
`
`
`
`
`
`4
`
`
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`
`III. Other Issues Raised in the Remand Decision
`In the Remand Decision, the Federal Circuit stated:
`
`The Board provided three reasons for rejecting Grit Energy’s arguments
`relying on Eng Soon as the primary reference: (1) these arguments relied on
`Constantin for disclosing the ’341 configuration, Final Written Decision, at
`22-23 [Reason One]; (2) “Patent Owner present[ed] persuasive evidence that
`swapping the location of Eng Soon’s pin and receptacle would result in a more
`expensive system,” id. [Reason Two]; and (3) Grit Energy’s contentions were
`inadequate because “it is not enough to argue that a [skilled artisan] could
`modify Eng Soon in a manner that meets the claims, without adequately
`explaining why a [skilled artisan] would make the modifications,” Decision
`Denying Rehearing, at 9-10 [Reason Three].
`
`957 F.3d at 1323. The Federal Circuit concluded that Reason One was “unsupported
`
`by substantial evidence.” Id.
`
`Patent Owner comments on Reason Two and Reason Three: The Federal Circuit
`
`also concluded that Reason Two and Reason Three did not “provide an independent
`
`basis for affirmance” (id.), but invited the Board to consider these issues on remand
`
`(id. at 1323-24).
`
`Petitioner comments on Reason Two and Reason Three: The Federal Circuit
`
`stated Reason Two “might cut against the force of Grit Energy’s second argument
`
`(i.e., that the swap would have reduced the cost of the system), [but] does not
`
`necessarily detract from Grit Energy’s first argument [‘(1) because the proposed
`
`swap amounts to nothing more than reorganizing familiar elements according to
`
`5
`
`
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`known methods to yield predictable results’] [and] is insufficient to reject each of
`
`Grit Energy’s arguments as to why a skilled artisan would have been motivated to
`
`make the proposed swap.” 957 F.3d at 1323-24. The Federal Circuit “reject[ed]”
`
`Reason Three because “Grit Energy’s contention is and was that its proposed
`
`modification amounts to nothing more than reorganizing familiar elements
`
`according to known methods to yield predictable results. E.g., Petition, at 53-54.
`
`Such a contention is contemplated by KSR. See KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 416 (2007).” 957 F.3d at 1324.
`
`The parties identify the following locations in the briefing and the hearing
`
`transcript for arguments and evidence directed to Reason Two and Reason Three:
`
`For Patent Owner:
`
`Patent Owner Response sections VI.C.3 (pages 43-46) and VI.D (pages
`
`49-56).
`
`
`
`
`
`page 22, line 19 - page 23, line 6,
`
`page 24, lines 1-13,
`
`Hearing Transcript at:
`o
`o
`o
`o
`o
`
`page 27, line 9 - page 29, line 4,
`
`page 32, lines 10-14, and
`
`page 36, line 1 – page 38, line 7.
`
`
`
`
`
`6
`
`
`
`For Petitioner:
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`
`
`
`
`
`Reply sections IV.C and V.
`
`Hearing Transcript at:
`o
`o
`
`page 5, line 20 – page 6, line 26, and
`
`page 16, line 13 – page 17, line 3.
`
`Dated: August 28, 2020
`
`/s/ Gianni Cutri/
`Gianni Cutri (Reg. No. 52,791)
`KIRKLAND & ELLIS LLP
`
`Lead Counsel for Patent Owner
`
`
`
`/Mark T. Garrett/
`Mark T. Garrett (Reg. No. 44,699)
`NORTON ROSE FULBRIGHT US LLP
`
`Lead Counsel for Petitioner
`
`7
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August
`
`28, 2020, a copy of JOINT BRIEF ON REMAND was served on Lead and Backup
`
`Counsel for Patent Owner via email (by consent) to:
`
`Lead Counsel: Gianni Cutri (Reg. No. 52,791)
`gcutri@kirkland.com
`
`
`Backup Counsel: Adam Kaufmann (Reg. No. 66,276)
`adam.kaufmann@kirkland.com
`
`
`
`
`Kyle Kantarek (Reg. No. 74,441)
`kyle.kantarek@kirkland.com
`
`/Mark T. Garrett/
`Mark T. Garrett (Reg. No. 44,699)
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
