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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`HEINEKEN N.V.,
`Petitioner
`
`v.
`
`ANHEUSER-BUSCH INBEV S.A.,
`Patent Owner
`
`
`Case IPR2018-01669
`Patent 9,517,876
`
`
`PATENT OWNER’S SURREPLY TO PETITIONER’S REPLY TO PATENT
`OWNER’S PRELIMINARY RESPONSE
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`
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`
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`TABLE OF CONTENTS
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`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
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`
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`
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`-i-
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`IPR2018-01669
`Patent 9,517,876
`
`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
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp.,
`IPR2018-00761 (PTAB Sept. 5, 2018) ................................................................. 3
`STATUTES & OTHER AUTHORITIES:
`USPTO, PTAB Trial Prac. Guide at 10 (Aug. 2018 Update),
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial
`_Practice_Guide.pdf ............................................................................................. 3
`
`
`
`
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`-ii-
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`
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`IPR2018-01669
`Patent 9,517,876
`
`
`Patent Owner’s Surreply to Petitioner’s Reply
`
`Patent Owner submits this Surreply to Petitioner’s Reply (Paper 8).
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`I.
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`The Board Should Deny Institution Under Section 325(d)
`Petitioner does not dispute that four of the seven references cited in the
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`Petition were before the Examiner. Instead Petitioner incorrectly contends ABI’s
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`Response did not address the Becton factors. Becton, Dickinson & Co. v. Braun
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`Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017)
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`(informative). ABI demonstrated that factors (a)-(b)—similarities and cumulative
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`nature of the art—are met because four of the seven references cited in the
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`Petition—Butterworth, Keisuke, Richter, and Schmidt—were disclosed to the
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`USPTO or used as bases of rejections. See Preliminary Response, Sections II.C,
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`IV.C. Becton factor (c)—the extent of evaluation during prosecution and extent of
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`overlapping arguments—is met because Butterworth was cited by the Examiner in
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`an Office Action (Preliminary Response at II.C, IV.C), and Richter was
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`distinguished by the Examiner over the claims in the Notice of Allowance
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`(Preliminary Response at II.C, IV.C; Exh. 1003 at 276); as such, these four
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`references were thoroughly evaluated during examination and either meritoriously
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`overcome or were deemed not relevant. See id. Becton factor (d) was met because
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`the Petition relies on Butterworth and Richter, and in substantially the same
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`manner as relied on during prosecution (i.e., for a delaminable bottle). Id.
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`
`
`-1-
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`
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`IPR2018-01669
`Patent 9,517,876
`
`
`Patent Owner’s Surreply to Petitioner’s Reply
`
`Petitioner’s baseless accusations that the Peirsman Declaration is
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`“misleading” and “false” cannot overcome the fact that the Examiner carefully
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`considered the Butterworth reference. As explained in the Peirsman Declaration
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`and attested to by Patent Owner’s Expert, Butterworth’s Embodiment 4 is not
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`enabled because the resulting bottle would have a wall thickness less than 100 µm
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`and, thus would not have sufficient mechanical strength to dispense a beverage
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`using pressurized gas. See Exh. 1004 at 488-94; Preliminary Response at Section
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`V.A.1.a.i; and Exh. 2001, ¶¶ 105-107, 125-148. Petitioner’s Expert does not point
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`to any personal testimony evidencing her experience or expertise with dispensing
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`blow-molded containers with a wall thickness less than 100 µm, nor does she cite
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`to any testing performed (Exh. 1002, ¶¶ 54-60; Exh. 2001, ¶¶ 130-138). Instead,
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`Dr. Reitman relies solely on references that do not teach a bag-in-container subject
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`to the same stresses as the claimed invention. (Exh. 1002, ¶¶ 57-66.) As such, Dr.
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`Reitman’s opinions are unsubstantiated and do not rise to the level of additional
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`evidence and facts which warrant reconsideration.
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`Heineken’s argument with respect to whether Beyens is cumulative to US
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`4,147,278 to Uhlig and whether Brady is cumulative to WO 99/03668 are
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`irrelevant. ABI did not make these assertions in the Preliminary Response filed in
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`the instant proceeding. These arguments were made in Patent Owner’s
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`Preliminary Response for IPR 2018-01663 and have been addressed in ABI’s
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`
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`-2-
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`
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`IPR2018-01669
`Patent 9,517,876
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`Surreply filed as Paper 9 in IPR 2018-01663. For the reasons discussed therein,
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`Patent Owner’s Surreply to Petitioner’s Reply
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`Heineken’s position is incorrect.
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`II.
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`Parallel Proceeding In The ITC Warrants Denial
`Petitioner incorrectly argues that the parallel proceeding in the ITC is not a
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`reason to deny institution. To the contrary, the Trial Practice Guide expressly (1)
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`states that denial is not limited to follow-on petitions and (2) contemplates denying
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`institution in light of parallel ITC proceedings:
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`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).
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`Thus, it remains within the discretion of the Board to deny institution in light of the
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`parallel ITC proceedings. See, e.g., Shenzhen Silver Star Intelligent Tech. Co., Ltd.
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`v. iRobot Corp., IPR2018-00761, Paper No. 15 at 7-8 (PTAB Sept. 5, 2018).
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`III. CONCLUSION
`Inter partes review should not be instituted for the reasons discussed herein
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`and in Patent Owner’s Preliminary Response.
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`-3-
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`IPR2018-01669
`Patent 9,517,876
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`
`Patent Owner’s Surreply to Petitioner’s Reply
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`
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`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
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`-4-
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`IPR2018-01669
`Patent 9,517,876
`
`
`Patent Owner’s Surreply to Petitioner’s Reply
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of this document was served on
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`February 5, 2019, by filing this document through the Patent Trial and Appeal Board
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`End to End System as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioner:
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`Joseph Loy
`Nathan Mammen
`Eugene Goryunov
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`jloy@kirkland.com
`nathan.mammen@kirkland.com
`egoryunov@kirkland.com
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`Respectfully submitted,
`
`/Andrew Fessak/ (Electronically signed)
`Andrew Fessak
`Reg. No. 48,528
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`
`
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