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.
`
`
`IPR2018-01669
`U.S. Patent No. 9,517,876
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`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`TABLE OF CONTENTS
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`I.
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`Page
`Argument ........................................................................................................ 1
`A.
`Section 325(d) Does Not Provide A Reason To Deny Institution ........ 1
`B.
`Patent Owner’s ITC Action Is Not A Basis To Deny Institution ......... 4
`II. Conclusion ...................................................................................................... 5
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`i
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Alarm.com Inc. v. Vivint, Inc.,
`IPR2015-01967, Paper 12 (Mar. 30, 2016) .......................................................... 4
`Becton, Dickinson & Co. v. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (Dec. 15, 2017)......................................................... 1, 3
`General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (Sept. 6, 2017) ............................................................ 4
`Intel Corp. v. Qualcomm, Inc.,
`IPR2018-01153, Paper 9 (Jan. 16, 2019) ...................................................... 3, 4, 5
`Merial, Inc. v. Intervet Int’l B.V.,
`IPR2018-00919, Paper 13 (Oct. 22, 2018) ........................................................... 1
`Neil Ziegman, N.P.Z., Inc. v. Stephens,
`IPR2015-01860, Paper 11 (Feb. 24, 2016) ........................................................... 1
`NetApp, Inc. v. Realtime Data LLC,
`IPR2017-01195, Paper 9 (Oct. 12, 2017) ............................................................. 5
`Nu Mark LLC v. Fontem Holdings 1, B.V.,
`IPR2016-01309, Paper 11 (Dec. 15, 2016)........................................................... 1
`Samsung Electronics Co., Ltd. v. BiTMICRO, LLC,
`IPR2018-01410, Paper 14 (Jan. 23, 2019) ............................................................ 5
`Unified Patents Inc. v. Berman,
`IPR2016-01571, Paper 10 (Dec. 14, 2016)........................................................... 1
`Wirtgen Am., Inc. v. Caterpillar Paving Prods. Inc.,
`IPR2018-01201, Paper 13 (Jan. 8, 2019) .......................................................... 4, 5
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`i
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Pursuant to the Board’s authorization, Petitioner submits this Reply to Patent
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`Owner’s Preliminary Response (Paper 6).
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`I.
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`ARGUMENT
`A.
`Section 325(d) Does Not Provide A Reason To Deny Institution
`Patent Owner argues that institution should be denied under 35 U.S.C.
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`§ 325(d) because some of the prior art in the petition had been before the Examiner
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`and other prior art is purportedly cumulative of art before the examiner. Patent
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`Owner cites cases where the Board denied institution of a petition involving art that
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`had been considered during prosecution. Paper 6 at 14-15 (citing cases). But other
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`than arguing that the prior art is the same or cumulative, Patent Owner fails to
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`address the factors articulated in Becton, Dickinson & Co. v. Braun Melsungen AG,
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`IPR2017-01586, Paper 8 at 17-18 (Dec. 15, 2017) (informative). Those factors do
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`not support denying institution under § 325(d).1
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`1 None of the other cited cases supports denying the petition, because those
`cases involved the same arguments as before the Examiner. Neil Ziegman, N.P.Z.,
`Inc. v. Stephens, IPR2015-01860, Paper 11 at 13 (Feb. 24, 2016) (“The same primary
`reference asserted by the Petitioner was previously presented to, and considered by,
`the Office in the same substantive manner as advocated for by Petitioner.”); Unified
`Patents Inc. v. Berman, IPR2016-01571, Paper 10 at 12 (Dec. 14, 2016) (“[T]he
`Petition relies on the same or substantially the same prior art and arguments
`presented previously to the Office.”); Nu Mark LLC v. Fontem Holdings 1, B.V.,
`IPR2016-01309, Paper 11 at 12 (Dec. 15, 2016) (finding “the instant Petition raises
`the same or substantially the same prior art and arguments as those previously
`presented to the Office”); Merial, Inc. v. Intervet Int’l B.V., IPR2018-00919, Paper
`13 at 17 (Oct. 22, 2018) (“We see no substantive difference between the Examiner’s
`findings during prosecution and Petitioner’s arguments here.”).
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`1
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`First, the fact that the Butterworth prior art reference was considered by the
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`Examiner is a reason to grant this petition, not deny it. In the prosecution of the ’876
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`patent’s parent application, the examiner repeatedly rejected the pending claims
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`based on Butterworth and repeatedly found Patent Owner’s arguments insufficient
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`to overcome those rejections. Ex.1004 (232-34, 313-19, 363-71). Patent Owner was
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`only able to overcome the Examiner’s rejections based on Butterworth by submitting
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`a declaration from Daniel Peirsman, a named inventor, in which he represented that
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`the relevant disclosure of Butterworth was not enabled and therefore could not be
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`relied on as prior art. Ex.1004 (470-96). Based on that declaration, and Patent
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`Owner’s accompanying arguments, the Examiner withdrew the rejection. Patent
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`Owner continued to rely on the Peirsman declaration in the prosecution of the ’876
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`patent. Ex.1003 (232).
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`But the Peirsman declaration was misleading, contained materially false
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`statements, and failed to provide the Examiner with contrary evidence which shows
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`that Butterworth was enabled and that Mr. Peirsman’s representations lacked
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`support. Without this contrary evidence (now before the Board), and because of the
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`ex parte nature of prosecution, the Examiner had no way to know of (or evaluate)
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`the falsities of these statements. This petition provides that additional information
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`the Examiner lacked. Accompanying the petition is a declaration from Dr. Maureen
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`Reitman, who explains in detail why the declaration’s statements are factually
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`2
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`incorrect. Ex.1002 (¶¶57-66). This petition therefore provides “additional evidence
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`and facts” that warrant reconsideration of Butterworth and explains how, based on
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`Patent Owner’s misrepresentations and incomplete analysis, the Examiner erred in
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`evaluating Butterworth. Becton, Dickinson, IPR2017-01586, Paper 8 at 18; see Intel
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`Corp. v. Qualcomm, Inc., IPR2018-01153, Paper 9 at 13 (Jan. 16, 2019).
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`Second, Patent Owner argues that Brady was considered by the Examiner
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`because a counterpart document, WO 99/03668, had been disclosed on an IDS. But
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`that IDS was filed after the Examiner had issued a notice of allowance and the
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`Examiner never applied the WO 99/03668 in a substantive rejection.
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`Third, Patent Owner concedes that Beyens had not been considered by the
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`Examiner, but contends that it is “cumulative” of another reference that had been
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`disclosed on an IDS, U.S. Patent No. 4,147,278 to Uhlig. Uhlig was never applied
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`in an Office Action. Further, Patent Owner’s expert does not support its argument
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`that Beyens is cumulative of Uhlig: he states only that “Beyens is substantially
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`similar in so far as both disclose a container formed by inserting a flexible bag into
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`a rigid outer container.” Ex.2001 (¶113). But Beyens discloses much more,
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`including a vent in the neck, a source of pressurized gas, and dispensing liquid by
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`applying pressure to the inner bag. Petition at 56-64. Uhlig discloses none of this.
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`Finally, the Examiner did not apply the Keisuke reference in any office
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`action—and could not have applied Keisuke with Beyens, as proposed in Ground 4,
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`3
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`because Beyens was never considered during prosecution. Patent Owner contends
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`that it is “irrelevant” whether the art was the subject of an office action, citing
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`Alarm.com Inc. v. Vivint, Inc., IPR2015-01967, Paper 12 at 21-22 (Mar. 30, 2016).
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`But unlike in Alarm.com, where the prior art was one of only five references cited
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`by the Examiner and the language of the independent claims remained unchanged,
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`id. at 15-16, here there were numerous references and numerous amendments such
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`that there is no reason to conclude that the applicability of Keisuke was recognized.
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`B.
`Patent Owner’s ITC Action Is Not A Basis To Deny Institution
`Patent Owner argues that the Board should deny institution because there is a
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`pending action in the International Trade Commission involving the ’876 patent. See
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`Certain Blow-Molded Bag-in-Container Devices, Associated Components, and End
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`Products Containing or Using Same, Inv. No. 337-TA-1115 (International Trade
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`Commission). Citing the factors enumerated in Trial Practice Guide Update (August
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`2018) and General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-
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`01357, Paper No. 19 (Sept. 6, 2017) (precedential), Patent Owner claims this petition
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`“would waste the finite resources of the Board.” Not so. As several other panels of
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`the Board have recently concluded, the fact that an ITC action is pending involving
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`the patent is no reason to deny institution. See Wirtgen Am., Inc. v. Caterpillar
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`Paving Prods. Inc., IPR2018-01201, Paper 13 (Jan. 8, 2019); Intel Corp. v.
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`4
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Qualcomm, Inc., IPR2018-01153, Paper 9 (Jan. 16, 2019); Samsung Electronics Co.,
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`Ltd. v. BiTMICRO, LLC, IPR2018-01410, Paper 14 (Jan. 23, 2019).
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`The ITC cannot replace the Board. “[T]he ITC does not have the authority to
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`invalidate a patent, and ITC decisions do not necessarily pertain to the issues raised
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`in an inter partes review petition because of the difference in evidentiary standards
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`and burdens.” Samsung, IPR2018-01410, Paper 14 at 18; Wirtgen, IPR2018-01201,
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`Paper 13 at 12 (same). Moreover, the Board will give the claims their broadest
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`reasonable interpretation, whereas the ITC applies the Phillips standard. “Thus,
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`while the ITC decision in the co-pending investigation may inform [the Board’s]
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`decision, it does not render [this] proceeding duplicative or amount to a waste of the
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`Board’s resources.” Samsung, IPR2018-01410, Paper 14 at 18.
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`The cases Patent Owner cites do not support its position. “[T]he petitions at
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`issue in General Plastics were follow-on petitions.” Wirtgen, IPR2018-01201,
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`Paper 13 at 11. Likewise, in NetApp, Inc. v. Realtime Data LLC, IPR2017-01195,
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`Paper 9 (Oct. 12, 2017), “the discretionary exercise to deny institution was based
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`primarily on the filing of an earlier petition before the Board.” Intel, IPR2018-
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`01153, Paper 9 at 14. This petition is not a follow-on petition.
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`II. CONCLUSION
`The Board should reject Patent Owner’s arguments that the Petition is
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`procedurally improper and institute inter partes review.
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`5
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Date: January 29, 2019
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`Respectfully submitted,
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`/s/ Joseph A. Loy, P.C.
`
`Joseph A. Loy, P.C. (Reg. No. 51,972)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`(212) 446-4800
`
`Nathan S. Mammen (Reg. No. 54,892)
`KIRKLAND & ELLIS LLP
`655 15th St., N.W.
`Washington, D.C. 20005
`(202) 879-5200
`
`Eugene Goryunov (Reg. No. 61,579)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`(312) 862-2000
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`Attorneys For Heineken N.V.
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`6
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that this document was served on January
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`29, 2019, by filing this document through the End to End System, as well as by
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`sending this document via email to the email addresses of record:
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`/s/ Joseph A. Loy, P.C.
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