`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HEINEKEN N.V.,
`Petitioner
`
`v.
`
`ANHEUSER-BUSCH INBEV S.A.,
`Patent Owner
`
`
`Case IPR2018-01663
`Patent 9,944,453
`
`
`PATENT OWNER’S SURREPLY TO PETITIONER’S REPLY TO PATENT
`OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`TABLE OF CONTENTS
`
`PAGE
`TABLE OF AUTHORITIES ..................................................................................... ii
`I.
`THE BOARD SHOULD DENY INSTITUTION UNDER SECTION
`325(D) .............................................................................................................. 1
`PARALLEL PROCEEDING IN THE ITC WARRANTS DENIAL .............. 3
`II.
`III. CONCLUSION ................................................................................................ 3
`
`
`
`
`-i-
`
`
`
`IPR2018-01663
`Patent 9,944,453
`
`Patent Owner’s Surreply to Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
`PAGE(S)
`
`CASES:
`Becton, Dickinson & Co. v. Braun Melsungen AG,
`IPR2017-01586 (PTAB Dec. 15, 2017) ................................................................ 1
`iRobot Corp.,
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v.
`IPR2018-00761 (PTAB Sept. 5, 2018) ................................................................. 3
`STATUTES & OTHER AUTHORITIES:
`(Aug. 2018 Update),
`USPTO, PTAB Trial Prac. Guide at 10
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial
`_Practice_Guide.pdf ............................................................................................. 3
`
`
`
`
`
`-ii-
`
`
`
`IPR2018-01663
`Patent 9,944,453
`
`
`Patent Owner’s Surreply to Petitioner’s Reply
`
`Patent Owner submits this Surreply to Petitioner’s Reply (Paper 8).
`
`I.
`
`The Board Should Deny Institution Under Section 325(d)
`Petitioner contends ABI’s Response did not address the Becton factors.
`
`Becton, Dickinson & Co. v. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-
`
`18 (PTAB Dec. 15, 2017) (informative). However, ABI demonstrated that factors
`
`(a)-(b)—similarities and cumulative nature of the art—are met because five of the
`
`seven references cited in the Petition—Butterworth, Brady, Keisuke, Richter, and
`
`Schmidt—were disclosed to the USPTO or used as bases of rejections. See Prelim-
`
`inary Response, Sections II.C, IV.C. Becton factor (c)—the extent of evaluation
`
`during prosecution and extent of overlapping arguments—is met because
`
`Butterworth was cited by the Examiner in six Office Actions (including actions
`
`issued after the Peirsman Declaration was filed) (Preliminary Response at II.C,
`
`IV.C), Richter was cited in three Actions and deemed in the Notice of Allowance to
`
`be the closest prior art (Preliminary Response at Sections II.C, IV.C; Exh. 1003 at
`
`1009, 1193), and Schmidt was cited in one Action (Prelim. Response at 6); as such,
`
`these five references were thoroughly evaluated during examination and either
`
`meritoriously overcome or were deemed irrelevant. See id. Additionally, Becton
`
`factor (d) was met because the Petition relies on Butterworth, Richter, and Schmidt
`
`in substantially the same manner as relied on during prosecution (i.e., Butterworth
`
`and Richter for a delaminable bottle and Schmidt for a pressurized gas) (id.)).
`
`
`
`-1-
`
`
`
`IPR2018-01663
`Patent 9,944,453
`Moreover, Petitioner’s baseless accusations that the Peirsman Declaration is
`
`Patent Owner’s Surreply to Petitioner’s Reply
`
`“misleading” cannot overcome the fact that the Examiner carefully considered the
`
`Butterworth reference. As explained in the Peirsman Declaration and attested to by
`
`ABI’s Expert, Butterworth’s Embodiment 4 is not enabled because the resulting
`
`bottle would have a wall thickness less than 100 µm and, thus, would not have
`
`sufficient mechanical strength to dispense a beverage using pressurized gas. See
`
`Exh. 1003 at 488-494; Preliminary Response at Section V.A.1.a.i; Exh. 2001,
`
`¶¶ 103-106, 124-144. Petitioner’s Expert does not point to any evidence of either
`
`experience with or testing performed on dispensing blow-molded containers with a
`
`wall thickness less than 100 µm. (Exh. 1002, ¶¶ 54-60; Exh. 2001, ¶¶ 130-138).
`
`Instead, Dr. Reitman relies solely on references that do not teach a bag-in-container
`
`subject to the same stresses as the claimed invention. (Exh. 1002, ¶¶ 58-67). As
`
`such, Reitman’s opinions are unsubstantiated and do not rise to the level of
`
`additional evidence and facts which warrant reconsideration.
`
`Petitioner’s further contention that the counterpart WO 99/03668 to Brady
`
`was disclosed after allowance is irrelevant. This publication was filed concurrently
`
`with a Request for Continued Examination, thereby withdrawing the allowance
`
`pursuant to 37 C.F.R. § 1.114(d) and, thus, was available as a basis for rejection.
`
`Moreover, contrary to Heineken’s assertions, Uhlig discloses a source of
`
`pressurized gas, an opening in the cap, and dispensing by applying pressure to an
`
`
`
`-2-
`
`
`
`IPR2018-01663
`Patent 9,944,453
`inner bag (Exh. 2003 at 4:17-20, 4:50-5:16) and therefore is cumulative to Beyens.
`
`Patent Owner’s Surreply to Petitioner’s Reply
`
`The Examiner could have combined Keisuke with Uhlig but did not.
`
`II.
`
`Parallel Proceeding in the ITC Warrants Denial
`Petitioner incorrectly argues that the parallel proceeding in the ITC is not a
`
`reason to deny institution. To the contrary, the Trial Practice Guide expressly (1)
`
`states denial is not limited to follow-on petitions and (2) contemplates denying
`
`institution in light of parallel ITC proceedings:
`
`There may be other reasons besides the “follow-on” petition context
`where the “effect . . . on the economy, the integrity of the patent system,
`the efficient administration of the Office, and the ability of the Office
`to timely complete proceedings,” 35 U.S.C. § 316(b), favors denying a
`petition even though some claims meet the threshold standards for
`institution under 35 U.S.C. §§ 314(a), 324(a). This includes, for
`example, events in other proceedings related to the same patent, either
`at the Office, in district courts, or the ITC. USPTO, PTAB Trial Prac.
`Guide at 10 (Aug. 2018 Update), (emphasis added; citation omitted).
`
`Thus, it remains within the discretion of the Board to deny institution in light of the
`
`parallel proceedings at the ITC. See e.g., Shenzhen Silver Star Intelligent Tech. Co.,
`
`Ltd. v. iRobot Corp., IPR2018-00761, Paper No. 15 at 7-8 (PTAB Sept. 5, 2018).
`
`III. Conclusion
`Inter partes review should not be instituted for the reasons discussed herein
`
`and in Patent Owner’s Preliminary Response.
`
`
`
`-3-
`
`
`
`IPR2018-01663
`Patent 9,944,453
`
`Patent Owner’s Surreply to Petitioner’s Reply
`
`
`
`Cadwalader, Wickersham & Taft LLP
`
`/Dorothy R. Auth/
`(Electronically signed)
`Dorothy R. Auth, Ph.D.,
`Reg. No. 36,434
`Lead Counsel
`Danielle Vincenti Tully,
`Reg. No. 54,512
`Backup Counsel
`Dina Halajian,
`Reg. No. 73,412
`Backup Counsel
`Andrew Fessak, Ph.D.,
`Reg. No. 48,528
`Backup Counsel
`Cadwalader, Wickersham & Taft LLP
`200 Liberty Street
`New York, NY 10281
`(212) 504-6000
`Counsel for Patent Owner
`Anheuser-Busch InBev S.A.
`
`February 5, 2019
`
`
`
`
`
`-4-
`
`
`
`IPR2018-01663
`Patent 9,944,453
`
`Patent Owner’s Surreply to Petitioner’s Reply
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of this document was served on
`
`February 5, 2019, by filing this document through the Patent Trial and Appeal Board
`
`End to End System as well as delivering a copy via electronic mail upon the
`
`following attorneys of record for the Petitioner:
`
`Joseph Loy
`Nathan Mammen
`Eugene Goryunov
`
`jloy@kirkland.com
`nathan.mammen@kirkland.com
`egoryunov@kirkland.com
`
`Respectfully submitted,
`
`/Andrew Fessak/ (Electronically signed)
`Andrew Fessak
`Reg. No. 48,528
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
