`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`BAYER CROPSCIENCE LP
`Petitioner
`
`v.
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`SYNGENTA LIMITED
`Patent Owner
`_______________
`
`Case IPR2017-01332
`Patent 8,404,618 B2
`_______________
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`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`Patent No. 8,404,618
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`IPR2017-01332
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`As the Board authorized, Petitioner responds to Patent Owner’s argument
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`that the Polge patent and Polge PCT (Exs. 1008, 1009) are disqualified under pre-
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`AIA 35 U.S.C. § 103(c)(1) in Grounds 2(a) and 2(b). No evidence shows that the
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`Polge references and the ‘618 patent were owned by or subject to an obligation of
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`assignment to the same person “at the time the claimed invention was made.” Id.
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`First, Owner has not alleged any actual date of invention. See IPR2015-
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`00594, Paper 90, at 24 (owner bears burden of production to establish date
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`invention was made); IPR2016-00198, Paper 12, at 17-18 (“If we do not know the
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`time the claimed invention was made, we cannot determine if the subject matter …
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`was owned or subject to an obligation of assignment … at the time.”). Although
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`the “effective filing date” is the relevant date under the AIA’s common-ownership
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`exceptions in § 102(b)(2)(C) and (c), it is not the relevant date Congress specified
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`under pre-AIA § 103(c)(1) (“time the claimed invention was made”).
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`Second, even if Owner is permitted to rely on the effective filing date of the
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`‘618 patent’s priority application in 2004 as the date of invention, both
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`assignments—Ex. 2007 (for ’618 patent) and Ex. 2008 (for Polge patent)—were
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`executed in 2006, and fail to establish any earlier obligation to assign to anyone,
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`much less to the same entity. The ownership of pre-AIA inventions initially vests
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`in the named inventors, which are not common between the ’618 patent and Polge
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`references. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed.
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`-1-
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`Patent No. 8,404,618
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`IPR2017-01332
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`Cir. 1993). Further, Exhibit 2008 (Mr. Polge’s assignment) is expressly limited to
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`“United States” rights only, and is thus inapplicable to the Polge PCT publication,
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`which designates various non-U.S. states and names “Syngenta Participations AG”
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`of Switzerland as the applicant “for all designated States except US” (Ex. 1009).
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`Third, neither Exhibits 2007 nor 2008 even mentions, much less shows
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`ownership by, Syngenta AG, which Owner contends owns the ‘618 patent and both
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`Polge references. Given the lack of actual ownership by Syngenta AG, Owner
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`implicitly relies on a theory of “beneficial” ownership by virtue of a common
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`corporate parent. However, the mere fact of a common corporate parent does not
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`establish ownership of the property of its subsidiaries. See 35 U.S.C. § 261
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`(“[P]atents shall have the attributes of personal property.”). This argument also
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`ignores Supreme Court precedent reciting the “basic tenet of American corporate
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`law” that “[a] corporate parent which owns the shares of a subsidiary does not, for
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`that reason alone, own or have legal title to the assets of the subsidiary….” Dole
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`Food Co. v. Patrickson, 538 U.S. 468, 474-75 (2003) (emphasis added). These
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`assets include patents held by the subsidiary. See Abraxis Bioscience, Inc. v.
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`Navinta LLC, 625 F.3d 1359, 1366 (Fed. Cir. 2010) (“Common corporate structure
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`does not overcome the requirement that even between a parent and a subsidiary, an
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`appropriate written assignment is necessary to transfer legal title from one to the
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`other.”). This is also the law in Delaware where Syngenta Crop Protection, Inc. is
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`-2-
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`Patent No. 8,404,618
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`IPR2017-01332
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`incorporated (Ex. 2008). See Buechner v. Farben-fabriken Bayer, 154 A.2d 684,
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`686-87 (Del. 1959) (parent company “has no interest of any specific assets of the
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`[wholly-owned subsidiary]” because “[t]he corporation is an entity, distinct from
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`its stockholders even if the subsidiary’s stock is wholly owned by one person or
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`corporation”). And it is the law in the United Kingdom, whose law controls
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`property rights of ‘618 alleged co-owner Syngenta Limited. See, Exh. 1063, at ¶ 8.
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`Neither of the two IPR papers that Owner cites at page 21 of its preliminary
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`response supports Owner’s position. In IPR2014-00552 (Paper 79, at 19), the
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`Board did “not need to reach the question of whether Intersil Sub 1 and Intersil Sub
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`2 are the ‘same person’ under § 103(c).” In IPR2014-00825 (Paper 36, at 12),
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`unlike here, there was a recorded assignment of a prior art patent to Evercom, prior
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`to the making of the claimed invention by Evercom’s own inventors.
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`Only MPEP §706.02(l)(2)(I)—which by its own admission in the Foreword
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`“does not have the force of law”—defies the black letter law of Dole regarding
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`patents held by two wholly-owned subsidiaries (Example 1). The Federal Circuit
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`has never given credence to this MPEP example, and at least one district court has
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`held contrary to it. See Email Link Corp. v. Treasure Island, LLC, 2012 WL
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`4482576 (D. Nev. Sept. 25, 2012) (two patents, owned by two wholly-owned
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`subsidiaries (Email Link and Online New Link, respectively), are not commonly
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`owned, despite having a common corporate parent (Acacia)).
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`-3-
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`Patent No. 8,404,618
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`
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`IPR2017-01332
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`Respectfully submitted,
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`
`
`/Susan E. Shaw McBee/
`Reg. No. 39,294
`MCBEE MOORE WOODWARD &
`VANIK IP, LLC
`Counsel for Petitioner
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`Dated: 5 September 2017
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`By:
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`-4-
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`Patent No. 8,404,618
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`IPR2017-01332
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Reply to
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`Patent Owner’s Preliminary Response, Petitioner’s Updated Exhibit List, and
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`Exhibit 1063 was served on September 5, 2017, by filing these documents through
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`PTAB E2E as well as delivering a copy via email to the counsel of record for the
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`Patent Owner at the following addresses:
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`jalemanni@kilpatricktownsend.com
`adobson@kilpatricktownsend.com
`radkins@kilpatricktownsend.com
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`Date: September 5, 2017
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`/Hilary Fallow/
`Hilary Fallow
`Paralegal
`MCBEE MOORE WOODWARD & VANIK IP, LLC
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`-5-
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`
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