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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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`PUMA NORTH AMERICA, INC.,
`Petitioner,
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`v.
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`NIKE, Inc.
`Patent Owner
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`
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`Case IPR2019-1042
`Patent No. 9,314,065
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`PATENT OWNER’S SUR-REPLY ADDRESSING WHY THE BOARD
`SHOULD EXERCISE ITS DISCRETION UNDER 35 U.S.C. § 314(a) AND 35
`U.S.C. § 325(d) AND DENY INSTITUTION
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`i
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`Exhibit
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`2001
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`2002
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`2003
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`2004
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`2005
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` LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 9,314,065 (the “’065 Patent”)
`U.S. Patent Application No. 13/524,044 (the “’044
`Application”)
`The ’065 Patent File History
`
`U.S. Patent No. 5,461,801 (“Anderton”)
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`U.S. Patent Pub. No. 2009/0293315 (“Auger”)
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`Declaration by Darren J. Stefanyshyn, Ph.D, P.Eng
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`Curriculum vitae of Darren J. Stefanyshyn, Ph.D, P.Eng
`
`Benno M. Nigg, Biomechanics of Running Shoes (1986)
`Results of Docket Navigator’s Time to Milestones Search
`for Hon. Leo T. Sorokin, U.S. District Court Judge for the
`District of Massachusetts
`Defendant PUMA North America, Inc.’s Motion to Stay
`Pending Inter Partes Review and Memorandum of
`Reasons in Support, filed as Dkt. Nos. 84–85 in NIKE,
`Inc. v. PUMA North America, Inc., Case No. 1:18-cv-
`10876 (D. Mass. May 16, 2019)
`NIKE, Inc.’s Opposition to PUMA North America, Inc.’s
`Motion to Stay Pending Inter Partes Review, filed as Dkt.
`No. 88 in NIKE, Inc. v. PUMA North America, Inc., Case
`No. 1:18-cv-10876 (D. Mass. May 30, 2019)
`Declaration of Kim Blair, Ph.D.
`
`CV of Kim Blair, Ph.D.
`
`Joint Claim Construction Statement
`
`Amended Scheduling Order
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`Second Amended Complaint
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`ii
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`
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`2015
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`2016
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`
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`Notice of Scheduling Conference
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`June 27, 2019 Order Resetting Briefing Schedule
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`Excerpts of District of Massachusetts Local Rules
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`Excerpts of Puma’s Supplemental Preliminary Patent-
`Related Disclosures
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`Dr. Stefanyshyn’s Declaration in Support of Claim
`Construction in District Court Litigation
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`June 7, 2019 Order Denying Puma’s Motion to Stay
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`Dictionary Definition of “Point”
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`July 29, 2019 Order Resetting Claim Construction Hearing
`
`Supplemental Joint Claim Construction Statement
`
`Excerpts of Dr. Stefanyshyn’s Deposition Transcript, July
`23, 2019
`Newly Submitted Exhibit
`Public Notice Amendments to Local Rules of the United
`States District Court for the District of Massachusetts,
`May 28, 2018
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`iii
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`I.
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`
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`The Board Should Deny Institution Under 35 U.S.C. § 325(d)
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`The Board should deny institution under 35 U.S.C. § 325(d). Petitioner cannot
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`dispute that it relies on the same combination of prior art (Anderton and Auger)
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`considered and applied by the Examiner. (Paper 1, at 6-8; Ex. 1003, at 192-196, 438-
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`442.) This fact alone justifies denying institution. Pfizer, Inc. v. Genentech, Inc.,
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`IPR2018-00373, Paper 12, at 14-15 (PTAB Aug. 2, 2018); AgaMatrix, Inc. v.
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`Dexcom, Inc., IPR2018-01717, Paper 10 at 16 (PTAB Mar. 13, 2019) (denying
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`institution under § 325(d) “because the same prior art previously was presented to
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`the Office.”) Unable to contest that the first three Becton-Dickson factors weigh
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`against it, Petitioner argues that it presents “different arguments and new evidence.”
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`(Paper 8, at 3.) None of these points have merit.
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`
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`First, Petitioner
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`rehashes
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`the central argument considered during
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`prosecution—whether a POSITA would have been motivated to add Auger’s medial
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`midfoot bar to Anderton’s base plate. (Compare Ex. 1003, at 195, 476-480 with
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`Paper 6, at 32-37.) The Examiner initially found a POSITA would be so motivated
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`because the combination would provide “increased support.” (Ex. 1003, at 195.)
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`Petitioner argues the same reasons for combining the references which Patent Owner
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`overcame, but uses different words such as increased strength, “improved stability,”
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`1
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`
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`and “structural reinforcement.”1 (Paper 6, at 25, 24, 37.) Thus, the arguments
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`considered by the Examiner and in the Petition relating to why a POSITA would
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`have been motivated to combine Auger and Anderton overlap significantly.
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`
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`Next, Petitioner characterizes as “new evidence” the Declaration of Dr.
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`Stefanyshyn and his explanation that “a POSITA would know how to vary”
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`Anderton when adding Auger (Paper 8, at 5), but it is not “new evidence.” The
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`declaration relies on the same structures in Auger and Anderton and the same
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`rationale for why a POSITIA would combine
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`the references, e.g.,
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`to
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`support/reinforce or provide increased stability/pronation control, that the Examiner
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`relied on. (See Ex. 1003, at 195; Ex. 1006, at ¶¶ 37-38; see also Paper 6, at 28-31.)
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`Moreover, the explanation does not provide new evidence as to why a POSITA
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`would combine the references; it only addresses how a POSITA would do so, if a
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`reason to combined existed, which the Examiner ultimately concluded there was not.
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`
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`Petitioner also posits its argument in the Petition that the “spaced apart”
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`limitations are “design choices” as a “new” argument warranting institution. (Paper
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`1 Patent Owner overcame the rejection by arguing that “Anderton is configured to
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`provide particular performance characteristics” including “improved comfort” and
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`“that the modification would alter the fundamental operation of Anderton.” (Ex.
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`1003, at 478-80.)
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`
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`2
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`
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`8, at 4-5.) Although the prosecution history does not mention “design choices,” we
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`will never know whether the Examiner considered this specific issue. But, we do
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`know the Examiner considered the amendment adding the “spaced apart” limitations
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`and Patent Owner’s remarks distinguishing the amended claims over the
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`combination of Anderton and Auger before the Examiner found the claims
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`patentable. (Ex. 1003, at 518-41.) Even assuming Petitioner’s “design choice”
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`argument is “new,” it does not warrant reconsideration because Petitioner failed to
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`adequately support its “design choice” arguments with sufficient facts, supporting
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`references, or reasoned explanation as explained in the Preliminary Response. (Paper
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`6, at 34-36.)
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`
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`Essentially, Petitioner asks the Board to credit its arguments and expert’s
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`declaration over the arguments found persuasive by the Examiner, which does not
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`demonstrate a clear error by the Examiner or warrant reconsideration. See CSL
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`Behring GMBH v. Shire Viropharma Inc., IPR2019-00459, Paper 8, at 20 (PTAB
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`Jul. 2, 2019) (denying institution under § 325(d) where Board “would need to credit
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`Petitioner’s declarants over contrary statements” considered and found persuasive
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`by the Examiner); CSL Behring, IPR2019-00459, Paper 8, at 21 (Petitioner’s expert
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`declaration that “express a difference of opinion” did not “provide a sufficient
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`justification for the Board to reconsider that issue in this proceeding.”)
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`3
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` For these reasons set forth here and in the Preliminary Response, the Board
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`should deny institution under 35 U.S.C. § 325(d).
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`II. The Board Should Deny Institution Under 35 U.S.C. § 314(a)
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`Contrary to Petitioner’s assertion, Patent Owner does not speculate that the
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`District Court will schedule a trial in October 2020. (Paper 6, at 1.) The Local Rules
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`for the District Court mandate an October 2020 trial date.2 The Local Rules state the
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`“court shall schedule a trial . . . to be held within 24 months after the [initial
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`scheduling] conference.” (Ex. 2008, L.R. D. Mass. at 16.6(c)(1) (emphasis added).)
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`The District Court held an initial scheduling conference on October 29, 2018, (see
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`Ex. 2006), which means trial is expected no later than October 2020.
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`Petitioner argues that “there is no scheduled trial date,” but that ignores the
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`Court has to, by Local Rule, set trial no later than October 2020. Although the trial
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`date has not been set, Petitioner offers no explanation or reasoning why the District
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`Court will deviate from scheduling a trial date required by its local rules. All of the
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`District Court activities (claim construction, fact and expert discovery, dispositive
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`motion rulings) need to be completed prior trial, which is before the November 9,
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`2020 due date for a Final Written Decision.
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`2 The District Court provided public notice of the revision to Local Rule 16.6 on
`May 24, 2018, and they went into effect June 1, 2018. (Ex. 2016, at 1.)
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`4
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`Petitioner relies on obsolete statistical data relating to the average time for
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`trial to suggest that “trial may not take place until early 2022.” (See Ex. 1009.) The
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`obsolete statistical data does not, and cannot, reflect the time to trial under the
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`amended Local Rules. (Ex. 2008, at L.R. 16.6(c)(1)). Indeed, Local Rule 16 became
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`effective June 1, 2018, which means there is no relevant statistical data on the time
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`to trial under the new rules (unless a patent case went to trial in under 24 months).
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` Petitioner complains that Patent Owner is using the institution proceedings
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`as “both a shield and a sword.” (Paper 8, at 2.) Petitioner’s complaints ring hollow.
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`Fundamentally, the decision to institute an inter partes review is at the discretion of
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`the Board. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2017). In
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`District Court, Patent Owner simply argued that it would be premature to stay the
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`litigation because District Courts rarely stay litigation merely because a patent
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`defendant filed, or indicated it would file, petitions for inter partes review of patents.
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`(See Ex. 1011, at 4-5.) (Id.) Here, Patent Owner challenges whether Petitioner
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`satisfied the requirements under § 314(a) and § 325(d) to institute an inter partes
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`review, as explained in Patent Owner’s Preliminary Response. (See Paper 6.)
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`Instituting an IPR proceeding under the facts and circumstances here would
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`be an inefficient use of the Board and parties’ resources.
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`5
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`Date: September 6, 2019
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`Respectfully submitted,
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`
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`
`
`/Christopher J. Renk/
`Christopher J. Renk
`BANNER & WITCOFF, LTD.
`71 S. Wacker Drive - Suite 3600
`Chicago, Illinois 60606
`crenk@bannerwitcoff.com
`Telephone: 312-463-5000
`Facsimile: 312-463-5001
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies service on the Petitioner, pursuant to 37
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`C.F.R. § 42.6(e) and by agreement of counsel, by electronic (e-mail) delivery of a
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`true copy of the foregoing PATENT OWNER’S SUR-REPLY ADDRESSING
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`WHY THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35 U.S.C.
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`§ 314(a) AND 35 U.S.C. § 325(d) AND DENY INSTITUTION to the attorneys of
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`record for Petitioner as follows:
`
`Vincent J. Rubino, III
`Timothy J. Rousseau
`Jacob D. Ostling
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`vrubino@brownrudnick.com
`trousseau@brownrudnick.com
`jostling@brownrudnick.com
`puma@brownrudnick.com
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`
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`Dated: September 6, 2019
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`
`
`Mark S. Leonardo
`Michael P. Vongaramvilai
`Brown Rudnick LLP
`One Financial Center
`Boston, MA 02111
`mleonardo@brownrudnick.com
`mvongaramvilai@brownrudnick.com
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`
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`
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`/Timothy J. Haugh/
`Timothy J. Haugh
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`7
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