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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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,
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`Petitioner
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`v.
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`UNITED STATES GYPSUM COMPANY,
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`Patent Owner
`_____________
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`Case No. IPR2017-1086
`Patent No. 6,632,550
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`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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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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`Case IPR2017-1086
`Patent 6,632,550
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`Pursuant to the Order issued August 2, 2017 (Paper No. 9), Petitioner submits
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`this Reply to Patent Owner’s Preliminary Response (Paper No. 8, “POPR”) to
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`address a single issue: whether U.S. 5,980,628 (“Hjelmeland”) is prior art to the ’550
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`patent. Hjelmeland qualifies as a § 102(a) reference to the ’550 patent as of its
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`publication date of December 5, 1996. It also qualifies as a § 102(e) reference to the
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`’550 patent as of its May 14, 1996 filing date. Both dates are prior to the earliest
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`possible—but not established—priority date of the ’550 patent of August 21, 1997,
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`and Patent Owner appears unable to dispute this. Moreover, even if the Board were
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`to accept Patent Owner’s argument that Hjelmeland’s § 102(e) date is actually
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`March 6, 1998, Patent Owner failed to satisfy its burden to establish that the ’550
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`patent is entitled to an August 21, 1997 priority date. Thus, even under Patent
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`Owner’s view of § 102(e), Hjelemeland still qualifies as prior art to the ’550 patent.
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`I.
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`HJELMELAND IS PRIOR ART UNDER 35 U.S.C. § 102(a)
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`In contrast to Patent Owner’s assertions, Hjelmeland qualifies as prior art
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`under 35 U.S.C. § 102(a) based on its PCT publication date well before the alleged
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`earliest priority date of the ’550 Patent. 35 U.S.C. § 102(a) states in part that
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`something qualifies as prior art if it was “described in a printed publication in this or
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`a foreign country, before the invention thereof by the applicant for patent….” 35
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`U.S.C. § 102(a). As noted in the Petition, Hjelmeland was published as a PCT
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`1
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`Case IPR2017-1086
`Patent 6,632,550
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`publication on December 5, 1996—over eight months before the earliest priority
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`application for the ’550 Patent was filed. See Petition, 19. Because Hjelmeland
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`resulted from a national stage domestication of the PCT application under 35 U.S.C.
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`§ 371, Hjelmeland is necessarily the same as the PCT publication. See Ex. 2003, 2.
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`For example, as shown in Hjelmeland’s transaction history appended to the POPR,
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`the first event in the domestic prosecution of Hjelmeland was the November 25,
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`1997 receipt of a “371 Request.” Ex. 2003, 2. According to § 371(c)(2), a § 371
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`request shall consist of “a copy of the international application,” and the transaction
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`history reveals that this is precisely what occurred in this instance. Thus, the record
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`demonstrates that Hjelmeland is merely a copy of the PCT publication and, as such,
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`was publicly available as of December 5, 1996.
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`In its POPR, Patent Owner addressed the PCT publication date of December
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`5, 1996, as an operative date under § 102(a) but asserts that “the December 1996
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`date is too late for the publication to qualify as prior art under §§ 102(a) or 102(b).”
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`POPR, 16-17, FN3. This statement is incorrect with regard to § 102(a), as the PCT
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`application published prior to the alleged earliest possible priority date of the ’550
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`Patent, and Patent Owner made no effort to demonstrate that it is able to swear
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`behind Hjelmeland’s 102(a) publication date of December 5, 1996. If Patent Owner
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`desired to establish that Hjelmeland’s publication date post-dates the invention date
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`2
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`of the challenged patents, it could have done so in its POPR. The fact that it elected
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`Case IPR2017-1086
`Patent 6,632,550
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`not to do so suggests strongly that it is not able to do so.
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`II. HJELMELAND IS PRIOR ART UNDER 35 U.S.C. § 102(e)
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`A.
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`§ 102(e) Was Amended To Resolve This Precise Scenario
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`There can be no reasonable dispute that the teachings of Hjelmeland were
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`known to a PHOSITA well prior to the earliest possible priority date of the ’550
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`patent; Hjelmeland was published months before the earliest possible priority date
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`and was filed in the USPTO prior to this date as well. To sidestep this fact, however,
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`Patent Owner relies on technicalities under laws that were superseded nearly two
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`decades ago. These technicalities ran counter to the purpose of the American patent
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`system, as recognized by Congress in amending § 102(e) in the AIPA.
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`Before the AIPA was enacted, the effective U.S. filing date of an international
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`application was the date when the application satisfied all requirements of
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`paragraphs (1), (2), and (4) of 35 U.S.C. § 371. These technicalities had the
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`unfortunate effect of denying U.S. patents the benefit of a “search of the best prior
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`art.” H.R. REP. NO. 106-287, pt. 1, at 31 (1999). Congress recognized this problem
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`and enacted the AIPA to, in part, “make[] technology which is accessible to citizens
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`of other countries available to Americans as well.” Id. at 30. In this regard, the
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`AIPA “ensure[d] that American inventors will be able to see the technology that our
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`foreign competition is seeking to patent much earlier.” Id. at 53. In other words,
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`3
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`Case IPR2017-1086
`Patent 6,632,550
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`Congress recognized the flaws inherent in the pre-AIPA § 102(e) and amended the
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`statute to avoid the precise outcome that Patent Owner advocates for here. Now,
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`nearly 20 years after the relevant prosecution events in this case, the Board should
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`decline to apply an overly restrictive version of § 102(e) that Congress recognized
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`in 1999 to be flawed. Instead, the Board should determine whether the teachings of
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`Hjelmeland were known prior to the earliest possible priority date of the ’550
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`patent—which they were—and then determine whether that knowledge supports the
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`arguments set forth in the Petition.
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`B.
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`The Board Can Consider Hjelmeland To Be Prior Art Even Under
`Patent Owner’s Interpretation Of § 102(e)
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`Even if it is only entitled to a March 6, 1998 date under § 102(e), Hjelmeland
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`still qualifies as prior art based on the record before the Board. Patent Owner
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`asserted that the ’550 Patent is entitled to a priority date of August 21, 1997, but it
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`failed to perfect its priority claim in the POPR. Instead, Patent Owner summarily
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`concluded that this date is the priority date, notwithstanding the fact that the patent
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`is the result of a continuations-in-part. See, e.g., POPR, 2, 17, 19. At no point did
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`Petitioner demonstrate or even argue that the challenged claims are entitled to the
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`priority date of the earliest application, which merely represents the earliest possible
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`priority date. “[E]ntitlement to a priority date for any claim is a matter for which
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`[Patent Owner] bears the burden of proof.” Institution Decision, Liberty Mut. Ins.
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`4
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`Case IPR2017-1086
`Patent 6,632,550
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`Co. v. Progressive Casualty Ins. Co., CBM2013-00009 (P.T.A.B. Mar. 28, 2013),
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`Paper 10 at 10 (concluding that Patent Owner failed to meet its burden where the
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`Patent Owner “made only a conclusory statement, without any explanation or
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`justification” that its claims were entitled to an earlier priority date). The application
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`that issued as the ’550 patent was filed on February 16, 1999, which is nearly one
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`year after the § 102(e) date to which the Patent Owner argues the Hjelmeland
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`reference is entitled. The priority applications are not in the record, and Patent
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`Owner did not demonstrate how the claims of the ’550 patent relate back to these
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`applications. Thus, based on the record before the Board, Hjelmeland qualifies as
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`prior art even if Patent Owner was correct that it has a March 6, 1998 § 102(e) date.
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`As a result, the Board may properly consider Hjelmeland.
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`III. CONCLUSION
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`For at least the above reasons, Hjelmeland qualifies as prior art to the ’550
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`Patent under 35 U.S.C. § 102(a) and/or 35 U.S.C. § 102(e). The teachings of
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`Hjelmeland were known prior to the earliest possible priority date of the ’550 Patent,
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`and the Board can and should properly consider Hjelmeland to be prior art to the
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`’550 patent.
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`Date: August 7, 2017
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` Respectfully submitted,
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`By: /Ross R. Barton/
`Ross R. Barton (Reg. No. 51,438)
`S. Benjamin Pleune (Reg. No. 52,421)
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`5
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`Case IPR2017-1086
`Patent 6,632,550
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned hereby certifies service on the Patent Owner of a copy of this Reply
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`via electronic means to counsel for USG at krfink@fitcheven.com.
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`Date: August 7, 2017
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`/Ross R. Barton/
`By:
`Ross R. Barton (Reg. No. 51,438)
`S. Benjamin Pleune (Reg. No. 52,421)
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`6
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