Precedential_Opinion_Panel_Request
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`From:
`Sent:
`To:
`Cc:
`
`Subject:
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`Follow Up Flag:
`Flag Status:
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`Dear Board,
`
`Fleming, Michael <MFleming@irell.com>
`Friday, October 12, 2018 10:04 PM
`Precedential_Opinion_Panel_Request
`jalemanni@kilpatricktownsend.com; drussell@kilpatricktownsend.com;
`dareed@kilpatricktownsend.com; mmorlock@kilpatricktownsend.com;
`arinehart@kilpatricktownsend.com; Zodiac-BE-IPR@kilpatricktownsend.com; #Zodiac-
`BEAero-IPRGroup; Gordnia, Talin
`Precedential Opinion Panel review of the Final Written Decision (Paper 41) in
`IPR2017-01276
`
`Follow up
`Completed
`
`As counsel for Patent Owner, B/E Aerospace, Inc. in IPR2017-01276 regarding U.S. Patent No.
`9,440,742 B2, I write to respectfully recommend Precedential Opinion Panel review of the Final
`Written Decision (Paper 41) in IPR2017-01276. Concurrent with this email, B/E Aerospace,
`Inc. filed a request for a rehearing of the Board’s final decision (Paper 44, “Request for
`Rehearing Following Final Written Decision”). The Request includes a request for an Expanded
`Panel pursuant to Standard Operating Procedure 1 (Rev. 15), § III.M.
`
`I provide the following pursuant to Standard Operating Procedure 2 (Revision 10), § II.C.1:
`
`Based on my professional judgment, I believe the Board panel decision is contrary to the
`following decision of the United States Court of Appeals for the Federal Circuit: Arendi
`S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016); the Trial Practice Guide Update
`(August 2018), § I.G; and the Decision Denying Request for rehearing in IPR2015-01222
`(IPR2015-01222, Paper 43).
`
`Based on my professional judgment, I believe the Board panel decision is contrary to the
`following statute: 35 U.S.C. § 311(b).
`
`Based on my professional judgment, I believe this case requires an answer to one or more
`precedent-setting questions of exceptional importance. There is no dispute that the claim
`limitation at issue in the Rehearing Request is not disclosed in any of the prior art references in
`the record. The PTAB, nonetheless, found that the limitation was known based upon
`confidential drawings, prior use, and prior sale. Confidential drawings, prior use, and prior sale,
`however, are not available evidence to be used in an IPR. The PTAB also found that the
`limitation was met by relying on an expert’s testimony to replace disclosures from prior art
`patents or printed publications. Because the Board’s decision is counter to 35 U.S.C. § 311(b),
`the Federal Circuit precedent in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016)
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`1
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`IPR2017-1276
`Ex. 3001
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`as well as the Trial Practice Guide Update (August 2018), § I.G and at least one other decision
`of the Board (IPR2015-01222, Paper 43), a Precedential Panel review is appropriate and
`necessary. 
`
` 
`Many thanks, 
`
` 
`Mike Fleming 
`
` 
`Michael R. Fleming 
`Irell & Manella 
`Attorney 
`Phone Number: 310‐203‐7915 
` 
` 
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