UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`NEW NGC, INC., dba NATIONAL GYPSUM COMPANY,
`Petitioner
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`v.
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`UNITED STATES GYPSUM COMPANY,
`Patent Owner.
`____________________
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`Case No. IPR2017-01011
`U.S. Patent No. 7,964,034
`____________________
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
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`PATENT OWNER UNITED STATES GYPSUM COMPANY’S
`SURREPLY BRIEF TO PETITIONER’S REPLY BRIEF
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`NEW NGC, INC., dba NATIONAL GYPSUM COMPANY,
`Petitioner
`
`v.
`
`UNITED STATES GYPSUM COMPANY,
`Patent Owner.
`____________________
`
`Case No. IPR2017-01011
`U.S. Patent No. 7,964,034
`____________________
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
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`
`
`PATENT OWNER UNITED STATES GYPSUM COMPANY’S
`SURREPLY BRIEF TO PETITIONER’S REPLY BRIEF
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`
`
`
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`IPR2017-1011
`Patent No. 7,964,034
`This is the second time that Petitioner has moved for leave to change its
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`invalidity contentions in this proceeding. The first time, Petitioner changed its
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`contention regarding the statutory provision for asserting invalidity based on the
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`prior art reference Graux (changing from § 102(a) to § 102 (e)). (Compare Paper 1
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`at 15 (original Petition) with Paper 7 at 15 (Corrected Petition).)
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`Now, after Patent Owner (“USG”) filed its Preliminary Response in which it
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`demonstrated that U.S. Patent No. 5,980,628 (“Hjelmeland”) is not prior art under
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`§ 102(e), Petitioner again moves to change its contentions. Petitioner’s current
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`attempt to change its contentions and add new arguments is too late, unjustified and
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`prejudicial to USG.
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`I.
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`The Petition Does Not Assert The Hjelmeland PCT Publication As Prior
`Art Under § 102(a), and Petitioner’s Reply Brief Fails To Provide Any
`Reason To Allow That New Ground To Be Asserted In A Reply Brief
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`The Board’s August 2, 2017 Order required Petitioner to show where the
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`Petition asserted the Hjelmeland PCT Publication as prior art under § 102(a). (Paper
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`9 at 2.) The Reply fails to make that showing. The Board’s August 2, 2017 Order
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`further required Petitioner to explain why it would be appropriate to consider that
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`new ground, made for the first time in a reply brief. (Id. at 2–3.) The Reply fails to
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`make that showing either. Therefore, the request to consider the new argument that
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`the Hjelmeland PCT publication is prior art under § 102(a) should be summarily
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`denied.
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`1
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`IPR2017-1011
`Patent No. 7,964,034
`II. New Grounds Of Invalidity Are Not Permissible In A Reply Brief
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`It is well-established by the Rules of Practice, Federal Circuit case law, and
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`the Board’s precedent that a petition for IPR must specify with particularity the
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`specific grounds and evidence for challenging invalidity, and thus new grounds
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`and/or new arguments of invalidity may not be asserted in a reply brief. 37 C.F.R.
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`§ 42.104(b)(2) (Rules of Practice); Intelligent Bio-Sys., Inc. v. Illumina Cambridge,
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`Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (affirming exclusion of reply brief raising
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`new argument of invalidity in IPR proceeding); Maxlinear, Inc. v. Cresta
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`Technology Corp., IPR2015-00594, Paper 90 at 29 (PTAB Aug. 15, 2016) (Final
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`Written Decision prohibiting assertion of new § 102(a) argument made for the first
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`time in a reply brief). Under these well-established rules and precedents, Petitioner
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`may not assert its new arguments for invalidity under § 102(a) or (e) in its Reply.
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`III. Petitioner Fails To Show That Hjelmeland Has A § 102(e) Date That Is
`Earlier Than The Date Shown On The Face Of The Patent
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`Petitioner provides no legal support for its new argument that the change in
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`the law under the American Inventors Protection Act of 1999 (“AIPA”) was
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`retroactive regarding the effective § 102(e) date under 35 U.S.C. § 371. The AIPA
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`became effective on November 29, 2000, more than a year after Hjelmeland issued
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`on November 9, 1999. Petitioner cites no statutory provision, legislative history,
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`USPTO precedent, or case law that suggests that the AIPA should be applied
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`retroactively.
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`2
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`IPR2017-1011
`Patent No. 7,964,034
`The legislative history cited by Petitioner does not suggest that the AIPA is
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`intended to be applied retroactively. USPTO practice does not apply the AIPA
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`retroactively, as explained in detail in MPEP § 706.02(a)(2)III (“Patents issued
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`directly, or indirectly, from international applications filed before November 29,
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`2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C.
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`§ 102(e) as in force on November 28, 2000.”); see also “Examination Guidelines for
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`35 U.S.C. § 102(e), as amended by the American Inventors Protection Act of 1999,
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`and further amended by the Intellectual Property and High Technology Technical
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`Amendments Act of 2002, and 35 U.S.C. § 102(g).” (Ex. 2005.)
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`The pre-AIPA § 102(e) date is the earliest of the date of compliance with 35
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`U.S.C. § 371(c)(1), (2) and (4), or the filing date of the later-filed U.S. continuing
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`application that claims the benefit of the international application. (Id. at 1.)
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`Therefore, the face of the Hjelmeland patent is correct in stating that the § 102(e)
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`date is March 6, 1998, the date of compliance with § 371(c)(1), (2) and (4).
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`IV. USG Relied On Petitioner’s Assertion Of The August 21, 1997 Filing
`Date For The ’034 Patent
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`Petitioner makes the baseless argument that Hjelmeland should be considered
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`prior art because the August 21, 1998 filing date of the ancestral continuation-in-
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`part application that led to the ’034 patent, rather than the August 21, 1997 filing
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`date of the original application, should be used in this proceeding. However, the
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`Petition specifically states “Each of the arguments below is made from the
`3
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`IPR2017-1011
`Patent No. 7,964,034
`standpoint of a PHOSITA in the field of the ’034 patent as of the August 21, 1997
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`filing date of the earliest application.” (Paper 7 at 21.) Therefore, the Petition applies
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`the August 21, 1997 effective filing date for the ’034 patent for all of its asserted
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`arguments of invalidity, and makes no argument that the August 21, 1998 CIP filing
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`date should apply. Under these circumstances, USG was and is entitled to rely on
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`the asserted August 21, 1997 filing date stated in the Petition.
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`Petitioner falsely argues that USG “asserted that the ’034 Patent is entitled to
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`a priority date of August 21, 1997.” (Paper 10 at 4.) To the contrary, Petitioner
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`asserted the August 21, 1997 date in its Petition and never stated, suggested or
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`otherwise put USG on notice that it was contending that the ’034 patent was not
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`entitled to the August 21, 1997 effective filing date. USG was not obligated to
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`anticipate Petitioner’s later argument that that the ’034 patent was not entitled to that
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`effective filing date. See, e.g., Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-
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`01093, Paper 69 at 13–14 (PTAB Jan. 7, 2016), wherein the Board stated,
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`[T]he Petition would have put the Patent Owner on notice…but not..on
`notice that Petitioner was contending that the ’794 patent was not
`entitled to priority back to September 2000. Specifically, as Petitioner
`never explicitly stated that [the reference] was prior art under 35 U.S.C.
`§ 102(e), and never argued that the ’794 patent was not entitled to its
`earliest effective filing date, it did not shift the burden of production to
`Patent Owner to demonstrate that the ’794 patent was entitled to its
`earliest effective filing date.
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`4
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`IPR2017-1011
`Patent No. 7,964,034
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
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`CBM2013-00009, Paper 10 at 10 (PTAB Mar. 28, 2013), cited in the Reply at 4-5,
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`is distinguishable because the petition for CBM review, unlike the Petition herein,
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`specifically argued that the patent in dispute was not entitled to an effective filing
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`date of an earlier ancestral application.
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`Petitioner’s new arguments to change the asserted priority date of the ’034
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`patent to assert an earlier § 102(e) date for Hjelmeland and to add a new contention
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`of invalidity under § 102(a) would require an entirely new Preliminary Response by
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`antedating the asserted prior art under §§ 102(a) and (e) with evidence of prior
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`invention that is not currently needed based on the currently-asserted grounds of
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`invalidity in this proceeding. As stated in Maxilinear, “If Petitioner had asserted both
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`§ 102(a) and § 102(e), perhaps Patent Owner would have chosen a different response
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`and the evidence in this proceeding would have developed differently.” Id.
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`V. Conclusion
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`
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`For the reasons stated above, Petitioner’s new arguments, raised for the first
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`time in its reply brief, should not be considered in this proceeding.
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`Date: August 14, 2017
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`
`By: /Karl R. Fink/
`Timothy P. Maloney
`Reg. No. 38,233
`tpmalo@fitcheven.com
`Karl R. Fink
`Reg. No. 34,161
`krfink@fitcheven.com
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`5
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`IPR2017-1011
`Patent No. 7,964,034
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`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
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`6
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`CERTIFICATE OF SERVICE
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`IPR2017-1011
`Patent No. 7,964,034
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of the
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`foregoing PATENT OWNER UNITED STATES GYPSUM COMPANY’S
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`SURREPLY BRIEF TO PETITIONER’S REPLY BRIEF on counsel of record
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`for Petitioner by filing this document through the PTAB E2E System as well as by
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`delivering a copy via email to the following addresses:
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`ross.barton@alston.com,
`ben.pleune@alston.com,
`lauren.burrow@alston.com,
`stephen.lareau@alston.com,
`tasneem.delphry@alston.com,
`adam.doane@alston.com
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`By: /Karl R. Fink/
`Timothy P. Maloney
`Reg. No. 38,233
`tpmalo@fitcheven.com
`Karl R. Fink
`Reg. No. 34,161
`krfink@fitcheven.com
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`
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`Date: August 14, 2017
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`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
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`7
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