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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`WESTERN DIGITAL CORPORATION
`Petitioner,
`v.
`SPEX TECHNOLOGIES, INC.
`Patent Owner.
`
`_____________________
`
`Case No. IPR2018-00082
`Patent 6,088,802
`_____________________
`
`PETITIONER’S MOTION FOR LEAVE TO FILE A REPLY UNDER 37
`C.F.R. § 42.5 IN THE ABSENCE OF PATENT OWNER’S RESPONSE (AS
`AUTHORIZED BY CALL ON AUGUST 2, 2018)
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
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`Page
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`I.
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`GRANTING PETITIONER’S MOTION AVOIDS NEGATING SAS
`INSTITUTE AND VIOLATING THE APA AND DUE PROCESS .............. 1
`PETITIONER’S PROPOSED EVIDENCE AND ARGUMENTS ................ 4
`II.
`III. CONCLUSION ................................................................................................ 5
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`i
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`
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`TABLE OF AUTHORITIES
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`Page(s)
`
`Cases
`Abbott Labs. v. Cordis Corp.,
`710 F.3d 1318 (Fed. Cir. 2013) ............................................................................ 2
`Anacor Pharm., Inc. v. Iancu,
`889 F.3d 1372 (Fed. Cir. 2018) ............................................................................ 3
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 2
`Clearlamp, LLC v. LKQ Corp.,
`2016 WL 4734389 (N.D. Ill. Mar. 18, 2016) ....................................................... 4
`EmeraChem Holdings v. Volkswagen Grp. of Am. Inc.,
`859 F.3d 1341 (Fed. Cir. 2017) ............................................................................ 2
`Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc.,
`825 F.3d 1360 (Fed. Cir. 2016) ........................................................................ 3, 4
`RPX Corp. v. Iridescent Networks, Inc.,
`2017 WL 6403863 (P.T.A.B. Dec. 13, 2017) ....................................................... 3
`SAS Inst. Inc. v. ComplementSoft,
`825 F.3d 1341, 1351 (Fed. Cir. 2016), rev’d on other grounds, 138
`S. Ct. 1348 ............................................................................................................. 2
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ...................................................................................... 1, 2
`Seabery N. Am. Inc. v. Lincoln Global, Inc.,
`2017 WL 4407748 (P.T.A.B. Oct. 2, 2017) ......................................................... 3
`In re Warsaw Orthopedic, Inc.,
`832 F.3d 1327 (Fed. Cir. 2016) ............................................................................ 3
`Statutes
`5 U.S.C. § 554(b)(3) ................................................................................................... 2
`5 U.S.C. § 554(c) ................................................................................................... 2, 4
`
`
`
`ii
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`
`
`TABLE OF AUTHORITIES
`(continued)
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`Page(s)
`
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`5 U.S.C. § 556(d) ................................................................................................... 2, 4
`35 U.S.C. § 311(b) ..................................................................................................... 4
`35 U.S.C. § 312(a)(3) ................................................................................................. 4
`Other Authorities
`157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen.
`Kyl) ....................................................................................................................... 4
`Regulations
`37 C.F.R. § 42.104.(b)(2) ........................................................................................... 4
`37 C.F.R. § 42.123 ..................................................................................................... 3
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`iii
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`The Board should waive its rules and permit Petitioner to submit argument
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`and evidence to respond to the Institution Decision. Paper 22 at 3. The Board
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`denied Petitioner’s previous request to supplement the record, but suggested that
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`Petitioner could address the Board’s reasoning during the proceedings. Id. at 10.
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`Absent waiver, Petitioner would not have had any opportunity to establish
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`unpatentability during the trial based on the grounds instituted on claims 1, 2, 11
`
`and 12. Depriving Petitioner of this opportunity would violate SAS Institute, Inc. v.
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`Iancu, 138 S. Ct. 1348 (2018), the APA, and Petitioner’s Due Process rights.
`
`I.
`
`GRANTING PETITIONER’S MOTION AVOIDS NEGATING SAS
`INSTITUTE AND VIOLATING THE APA AND DUE PROCESS
`Due process dictates that Petitioner have an opportunity to address the
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`Board’s preliminary determination that Petitioner had not shown a reasonable
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`likelihood of success in proving that claims 1, 2, 11, and 12 are unpatentable. The
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`Board’s rules were created pre-SAS, when only claims for which a reasonable
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`likelihood of success was shown would be reviewed. In that paradigm, a patent
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`owner that waived its response would lose on all instituted claims and thus had the
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`burden to file a response. Post-SAS, if the Board does not allow Petitioner to file a
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`Reply presenting evidence and arguments (which was not available when the
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`Petition was filed) addressing the Institution Decision, the Institution Decision
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`would become final. In that scenario, the Board would not have presented
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`Petitioner an opportunity during the trial to have “the Board [] address every claim
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`1
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`the petition has challenged.” SAS Inst., 138 S. Ct. at 1354, 1358.
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`Yet, the Final Written Decision would estop Petitioner from later arguing
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`invalidity on the instituted grounds despite Petitioner never having an opportunity
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`to address the Board’s reasoning. Due Process and the APA require more. Due
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`Process requires “notice and an opportunity to be heard.” Abbott Labs. v. Cordis
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`Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013). The APA requires that all parties
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`receive notice of “the matters of fact and law asserted,” 5 U.S.C. § 554(b)(3), as
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`well as an opportunity to submit “facts,” “argument,” and “rebuttal evidence . . . as
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`may be required for a full and true disclosure of the facts,” 5 U.S.C. §§ 554(c),
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`556(d); EmeraChem Holdings v. Volkswagen Grp. of Am. Inc., 859 F.3d 1341,
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`1348–49 (Fed. Cir. 2017); SAS Inst. Inc. v. ComplementSoft, 825 F.3d 1341, 1351
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`(Fed. Cir. 2016), rev’d on other grounds, 138 S. Ct. 1348.
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`Under § 554(b)(3) of the APA, “‘an agency may not change theories in
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`midstream without giving respondents reasonable notice of the change’ and ‘the
`
`opportunity to present argument under the new theory.’” Belden Inc. v. Berk-Tek
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`LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015). The Federal Circuit has confirmed the
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`protections of § 554(b)(3) extend to petitioners. SAS Inst., 825 F.3d at 1351. Here,
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`the Institution Decision narrowed the “means for mediating” limitation’s claim
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`construction from the one used in the Petition, and the Board should waive its rules
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`to allow Petitioner to file a Reply to present argument under that new theory.
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`2
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`
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`Moreover, Federal Circuit precedent and other Board decisions support
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`waiver of the Board’s rules in this case. The Federal Circuit has explained that the
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`purpose of an IPR trial is “to give the parties an opportunity to build a record by
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`introducing evidence—not simply to weigh evidence of which the Board is already
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`aware.” Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825
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`F.3d 1360, 1367 (Fed. Cir. 2016); Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372,
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`1380 (Fed. Cir. 2018). The Board similarly has acknowledged that Petitioners can
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`supplement the record after institution. Seabery N. Am. Inc. v. Lincoln Global,
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`Inc., 2017 WL 4407748, at *4 (P.T.A.B. Oct. 2, 2017) (“[T]he Federal Circuit has
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`said that once trial is instituted, a petitioner is permitted to supplement the
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`record. . . . If the situation were otherwise, 37 C.F.R. § 42.123 would be useless to
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`petitioners.”); RPX Corp. v. Iridescent Networks, Inc., 2017 WL 6403863, at *5
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`(P.T.A.B. Dec. 13, 2017). When the Board considers the scope and content of
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`prior art in IPR proceedings, “it must consider the prior art ‘in its entirety, i.e., as a
`
`whole.’” In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1332 (Fed. Cir. 2016).
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`These cases should carry even more weight here because new facts have
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`come to light since Petitioner filed its Petition. Petitioner did not have the benefit
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`of Patent Owner’s expert testimony admitting the similarities between Harari and
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`’802 patent Fig. 9B. Under the APA, the Board should waive its rules in this case
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`to allow Petitioner to submit both “facts” and “arguments” to present its case for “a
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`3
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`full and true disclosure of the facts.” 5 U.S.C. §§ 554(c), 556(d).
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`II.
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`PETITIONER’S PROPOSED EVIDENCE AND ARGUMENTS
`Petitioner’s Reply would not introduce any new ground of unpatentability.
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`A new ground of unpatentability requires new prior art or a new statutory basis for
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`invalidity. 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)
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`(section 315(e)(1)’s reference to “any ground” refers to “prior art”); Clearlamp,
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`LLC v. LKQ Corp., 2016 WL 4734389, at *8 (N.D. Ill. Mar. 18, 2016) (identifying
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`“any ground” as “meaning specific pieces of prior art”); 35 U.S.C. § 311(b). The
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`statute and regulations differentiate between the “ground[] on which the challenge
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`to each claim is based” and “the evidence that supports the ground[] for the
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`challenge.” 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104.(b)(2) (separating the
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`“grounds . . . on which the challenge to the claim is based” on prior art from
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`“specify[ing] where each element of the claim is found in the prior art . . . relied
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`upon”). Addressing a different figure in an already-identified prior art reference or
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`presenting arguments and evidence addressing that same prior art would not create
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`a new ground of unpatentability. Genzyme, 825 F.3d at 1366-67 (new evidence
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`submitted by Petitioner was not a new ground because the Board addressed “the
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`same combination of references that were set forth in the institution decisions”).
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`In its Petition, Petitioner argued claims 1, 2, 11, and 12 are unpatentable as
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`obvious in light of Harari, Anderson, and Dumas. The Petition addressed Harari’s
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`4
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`disclosure of modules 41 and 42, along with Fig. 7, as the structure for the “means
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`for mediating” limitation. Pet. 43–45. Although Petitioner compared these
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`elements to the FPGA in the ’802 patent in accordance with the Petition’s claim
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`construction, the proposed Reply would explain, supported by new evidence, how
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`these elements are also equivalent to device 910 in Fig. 9B, in accordance with the
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`narrowed claim construction adopted by the Board. This is not a new ground.
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`Harari Fig. 7 identifies a generalized module 41. Harari Fig. 5A shows the
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`same module 41, but provides more detail as to its components, such as a Host
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`Interface, a Processor, a Daughtercard Interface, and a Power Converter. The same
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`components are in module 40 of Fig. 4: a Host Interface, a Processor, a Memory
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`(i.e., Daughtercard) Interface, and a Power Converter. The evidence Petitioner
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`would include is new testimony from Patent Owner’s experts that Harari’s module
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`40 of Fig. 4 has an equivalent structure and function as the ’802 patent’s device
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`910 in Fig. 9B and related testimony from Petitioner’s expert, Dr. Kaliski.
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`As the Board suggested Petitioner would have an opportunity to present,
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`Petitioner’s Reply would explain how Harari’s modules 41 and 42 are equivalent
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`structure for element 910 in Fig. 9B. Paper 22 at 10. The Reply would build on
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`the grounds and arguments in the Petition using previously unavailable evidence.
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`III. CONCLUSION
`For the foregoing reasons, the Board should grant Petitioner’s motion.
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`5
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`DATED: August 9, 2018
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`Respectfully submitted,
`
`
`
`By: /Brian M. Buroker/
`
`Brian M. Buroker (Reg. No. 39,125) (lead)
`Blair A. Silver (Reg. No. 68,003) (back-up)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5306
`Telephone: 202.955.8500
`Facsimile: 202.467.0539
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`
`Attorneys for Petitioner Western Digital
`Corp.
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy
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`of this Petitioner’s Motion for Leave to File a Reply Under 37 C.F.R. § 42.5 in the
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`Absence of Patent Owner’s Response by electronic mail on August 9, 2018 on the
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`counsel of record of the Patent Owner:
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`Peter Lambrianakos, plambrianakos@brownrudnick.com
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`Alfred R. Fabricant, afabricant@brownrudnick.com
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`Vincent J. Rubino, III, vrubino@brownrudnick.com
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`Enrique W. Iturralde, eiturralde@brownrudnick.com
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`DATED: August 9, 2018
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`By: /Brian M. Buroker/
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`
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`Brian M. Buroker (Reg. No. 39,125)
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`Attorney for Petitioner Western Digital Corp..
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`7
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