`1543925-00158US5
`Filed on behalf of Precision Planting, LLC and AGCO Corp.
`By: Grant K. Rowan, Reg. No. 41,278
`Mary V. Sooter, Reg. No. 71,022
`Michael J. Summersgill (admission pro hac vice to be requested)
`Mark G. Matuschak (admission pro hac vice to be requested)
`Jordan L. Hirsch (admission pro hac vice to be requested)
`R. Gregory Israelsen, Reg. No. 72,805
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email:
`Grant.Rowan@wilmerhale.com
`Mindy.Sooter@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`PRECISION PLANTING, LLC and AGCO CORP.
`Petitioners
`
`v.
`
`DEERE & COMPANY
`Patent Owner
`
`Case Nos. IPR2019-01044, IPR2019-01046, IPR2019-01047, and IPR2019-01048
`U.S. Patent Nos. 8,813,663, 9,480,199, 9,510,502, and 9,686,906
`REPLY TO PATENT OWNER PRELIMINARY RESPONSES
`
`
`
`Reply to Patent Owner Preliminary Responses
`Case Nos. IPR2019-01044, -01046, -01047, -01048
`TABLE OF CONTENTS
`THERE IS NO ESTOPPEL PRECLUDING PETITIONERS’
`MOTIVATION TO COMBINE ARGUMENTS. .........................................2
`THE PETITIONS DEMONSTRATE A MOTIVATION TO COMBINE
`THE ASSERTED REFERENCES.................................................................6
`THERE IS NO JUSTIFICATION FOR THE BOARD TO EXERCISE ITS
`DISCRETION TO DENY INSTITUTION. ..................................................7
`
`I.
`
`II.
`
`III.
`
`i
`
`
`
`Reply to Patent Owner Preliminary Responses
`Case Nos. IPR2019-01044, -01046, -01047, -01048
`Patent Owner (“Deere”) filed four Patent Owner Preliminary Responses
`
`(“POPRs”) in IPR2019-01044, -01046, -01047, and -01048 arguing that the Board
`
`should deny institution. None of Deere’s arguments has merit.1
`
`With much fanfare, Deere claims Petitioners have taken a “diametrically
`
`opposite” position about the Koning reference to one taken over 15 years ago in
`
`the prosecution of the Sauder patent (U.S. Patent No. 6,681,706). ’663 POPR, 2.2
`
`In so doing, Deere improperly assumes that the state of precision-planting art lay
`
`fallow for six years. Deere then compounds its error by misapplying the law and
`
`mischaracterizing the Sauder prosecution history.
`
`Deere’s attorney argument that a POSITA would not have been motivated to
`
`combine the references’ teachings fares no better. Deere claims embodiments of
`
`the references must physically fit together like puzzle pieces. Id., 20 (“Koning’s
`
`brush hairs are unlikely to fit….”); 12 (Hedderwick’s “much smaller seeds”); 20
`
`(Koning’s brush hairs “are likely to be too stiff and too coarse”). But the relevant
`
`inquiry is whether a POSITA would have been motivated to combine the
`
`teachings of the references, not their physical parts. Allied Erecting &
`
`1 This consolidated Reply addresses the arguments in all four POPRs. The Board
`
`authorized filing this Reply via email on September 13, 2019.
`
`2 Except as noted, Deere’s arguments for the ’663 patent are representative.
`
`1
`
`
`
`Reply to Patent Owner Preliminary Responses
`Case Nos. IPR2019-01044, -01046, -01047, -01048
`Dismantling Co. v. Genesis Attachments, 825 F.3d 1373, 1381 (Fed. Cir. 2016).
`
`Finally, Deere claims that the existence of pending district court litigation
`
`involving the same patents justifies the Board’s exercise of discretion to deny
`
`institution. Declining to institute on this flimsy showing would lead to declining to
`
`institute in almost every case, and should be rejected.
`
`I.
`
`THERE IS NO ESTOPPEL PRECLUDING PETITIONERS’
`MOTIVATION TO COMBINE ARGUMENTS.
`Judicial estoppel is rarely appropriate and may not be found unless all three
`
`of the following have been established: (1) the party’s later position must be
`
`“clearly inconsistent” with its earlier one; (2) the party must have succeeded in
`
`persuading a court to adopt its earlier position; and (3) “the party seeking to assert
`
`an inconsistent position would derive an unfair advantage or impose an unfair
`
`detriment on the opposing party if not estopped.” New Hampshire v. Maine, 532
`
`U.S. 742, 749-51 (2001). Deere has failed to show these factors here.
`
`First, Petitioners’ evidence demonstrating a motivation to combine Koning
`
`with Hedderwick or Sauder is not “clearly inconsistent” with Precision’s
`
`statements during the Sauder prosecution. Those statements were made in 2003,
`
`six years before the priority date of Deere’s patents. Deere does not argue, nor
`
`could it, that the state of the art in precision planting remained unchanged from
`
`2003 to 2009. This omission is critical, as the statements that Deere claims are
`
`inconsistent refer to the state of the art at two different times.
`
`2
`
`
`
`Reply to Patent Owner Preliminary Responses
`Case Nos. IPR2019-01044, -01046, -01047, -01048
`The evidentiary record before the Board shows that, by 2009, a POSITA
`
`would have known of techniques for planting “seed crops”—i.e., crops, such as
`
`corn kernels, that are planted as seeds—and would have recognized that features of
`
`those techniques could be applied to other planters. See ’663 Ex. 1002, ¶63
`
`(“‘Seed crop’ is grown from seed and then itself used as seed. For example, corn
`
`seed can be used to grow corn and a kernel of corn can in turn be used to grow
`
`new corn. A [POSITA] would have known … systems used to plant seed crop can
`
`be used to plant seed…. It is also common for farmers to plant both potatoes and
`
`other types of seed, such as corn or soybeans. As a result, a [POSITA] … would
`
`understand that the teachings of Koning’s system could be applied to systems used
`
`to plant many different types of seeds.”); ’199 Ex. 1002, ¶68 (similar); ’502 Ex.
`
`1002, ¶67 (similar); ’906 Ex. 1002, ¶53 (similar). These facts, established by
`
`sworn expert declaration, are entitled to more weight than Deere’s mere attorney
`
`argument. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1379 (Fed. Cir.
`
`2008) (“affidavits or declarations are held to a higher standard” than “mere
`
`attorney argument”). Deere itself considered Koning relevant enough to the
`
`subject matter of the ’663, ’199, and ’906 patents to submit it in an IDS during
`
`prosecution. ’663 Ex. 1022, 47; ’199 Ex. 1022, 87; ’906 Ex. 1022, 49.
`
`Moreover, Precision’s arguments during the Sauder prosecution focused on
`
`whether there was a “suggestion, teaching, or motivation to combine the prior art
`
`3
`
`
`
`Reply to Patent Owner Preliminary Responses
`Case Nos. IPR2019-01044, -01046, -01047, -01048
`references.” ’663 Ex. 2001 at 315-318. The Supreme Court changed the standard
`
`for combining prior art when it decided KSR four years later. 550 U.S. 398 (2007).
`
`After this change in law, prior art that previously could not have been combined
`
`for proving obviousness now could be. See Commissioner v. Sunnen, 333 U.S.
`
`591, 601 (1948) (collateral estoppel does not apply where pertinent statutory
`
`provisions or regulations have changed between the first and second proceeding).
`
`Second, Deere mischaracterizes the Sauder prosecution when stating that
`
`“the examiner … withdrew the rejection, and passed the Sauder application to
`
`issue” in response to Precision’s lack of motivation to combine argument. ’663
`
`POPR, 3. Deere omits that Precision amended the claims “to define differences
`
`between the claimed invention and the art of record.” ’663 Ex. 2001, 209-210,
`
`299; id. at 289 (forwarding proposed amendments, stating: “enclosed proposed
`
`claims … are believed to overcome the Office’s stated rejections ….”). The
`
`Examiner issued a Notice of Allowance for the amended claims, without providing
`
`any reasons for allowance. Id. at 322-324. Contrary to Deere’s arguments, the
`
`record suggests that the Examiner allowed the claims because they had been
`
`amended. See Honeywell Int’l, Inc. v. Hamilton Sundstrand Corp., 523 F.3d 1304,
`
`1315 (Fed. Cir. 2008) (“Because the record does not link [Defendant]’s success …
`
`to its [allegedly inconsistent] argument … judicial estoppel does not apply.”); see
`
`also Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33 (1997)
`
`4
`
`
`
`Reply to Patent Owner Preliminary Responses
`Case Nos. IPR2019-01044, -01046, -01047, -01048
`(“[T]he court should presume that the patent applicant had a substantial reason
`
`related to patentability for including the limiting element added by amendment.”).
`
`Third, Deere has demonstrated neither “unfair advantage” to Precision nor
`
`“unfair detriment” to Deere. Precision has not asserted the Sauder patent against
`
`Deere. See Scarano v. Cent. R. Co. of N. J., 203 F.2d 510, 513 (3d Cir. 1953)
`
`(judicial estoppel focuses on “inconsistent statements” that are “against the same
`
`adversary”). Instead, it is Deere that seeks unfair advantage. Petitioners rely on
`
`Hedderwick’s or Sauder’s belt for delivering seeds, combined with Koning’s brush
`
`belt to meet the “endless member” claim limitation. Here, Deere argues Petitioners
`
`cannot show (because of purported estoppel) motivation to include the Koning
`
`brush belt. But in district court, Deere takes the opposite position, arguing for a
`
`construction of “endless member” that would not require a brush belt and instead
`
`would include any continuous belt forming a loop (including the belts disclosed in
`
`Hedderwick and Sauder). Ex. 1035, 7. Cf. Honeywell Int’l, 523 F.3d at 1315 (“If
`
`any party was estopped, it was [Patent Owner, which] apparently established
`
`infringement using a broader definition of the equivalent than it now urges….”).
`
`Finally, there is no justification for applying estoppel to AGCO, a separate
`
`petitioner not involved in the Sauder prosecution. AGCO did not acquire Precision
`
`until 13 years after the Sauder patent issued. None of the cases cited by Deere
`
`apply judicial estoppel to a subsequent acquirer. “Ordinarily, the party against
`
`5
`
`
`
`Reply to Patent Owner Preliminary Responses
`Case Nos. IPR2019-01044, -01046, -01047, -01048
`whom judicial estoppel is invoked must be the same party who made the prior
`
`(inconsistent) representation.” Perry v. Blum, 629 F.3d 1, 9 (1st Cir. 2010).
`
`II.
`
`THE PETITIONS DEMONSTRATE A MOTIVATION TO COMBINE
`THE ASSERTED REFERENCES.
`Deere is incorrect that there is no motivation to combine because Koning’s
`
`brush hairs “are likely to be too stiff and too coarse” or “unlikely to fit” in the
`
`Hedderwick or Sauder systems. ’663 POPR, 20. The relevant inquiry is whether a
`
`POSITA would have been motivated to combine the teachings of the references—
`
`not whether the specific embodiments of the references may be physically
`
`combined. Allied Erecting, 825 F.3d at 1381; see ’663 Petition, 31-39; ’663 Ex.
`
`1002, ¶¶65-81; ’199 Petition, 36-45; ’199 Ex. 1002, ¶¶70-83; ’502 Petition, 30-
`
`36; ’502 Ex. 1002, ¶¶71-87; ’906 Petition, 27-33; ’906 Ex. 1002, ¶¶57-67. Deere
`
`has not submitted an expert declaration and has failed to provide competent
`
`evidence to rebut that a POSITA would have been motivated to make these
`
`combinations. See Unified Patents Inc. v. Speakware, Inc., No. IPR2019-00495,
`
`Paper 9, 21-22 (PTAB July 1, 2019) (granting institution because “Patent Owner
`
`only provides attorney argument, which is insufficient to rebut Petitioner’s
`
`evidence that a [POSITA] would have had a reasonable expectation of success”);
`
`Assoc. British Foods Plc v. Cornell Research Found., Inc., No. IPR2019-00582,
`
`Paper 24, 35 (PTAB July 25, 2019) (“Patent Owner’s arguments … rest[] on
`
`attorney argument” and “are unpersuasive against the evidence.”).
`
`6
`
`
`
`Reply to Patent Owner Preliminary Responses
`Case Nos. IPR2019-01044, -01046, -01047, -01048
`III. THERE IS NO JUSTIFICATION FOR THE BOARD TO EXERCISE
`ITS DISCRETION TO DENY INSTITUTION.
`With almost every IPR, there is already litigation pending involving the
`
`challenged patent; that is not a legitimate basis to deny institution. 35 U.S.C.
`
`§ 315(b) specifically contemplates a Petition filed with co-pending litigation by
`
`allowing filing one year after service of the complaint. In Samsung Elecs. Co. v.
`
`Immersion Corp., the Board granted institution even though “a trial date for the co-
`
`pending district court case is presently set to begin approximately 10 months
`
`before [the Board] would render a Final Written Decision.” No. IPR2018-01499,
`
`Paper 11, 13 (PTAB March 6, 2018). The Board in Samsung also distinguished the
`
`primary cases Deere relies on—NHK and Mylan—for reasons equally applicable
`
`here. Id. at 18-19. Samsung explained NHK “was decided chiefly on § 325(d) …
`
`and the arguments that the Petitioner advanced were substantially similar to the
`
`findings the Examiner made to reject the claims.” Samsung, Paper 11, 18. Here,
`
`none of the arguments in the Petitions were made in prosecution. In Samsung, the
`
`Board also expressly rejected Deere’s interpretation of Mylan that an IPR should
`
`not be instituted because the district court will hold a trial on the same validity
`
`arguments before the completion date for the IPR. Id. at 19. E-One, Inc. v.
`
`Oshkosh Corp. is similarly inapplicable. There, the Board declined institution
`
`because the district court had already rejected the same invalidity arguments
`
`finding that they did “not raise a substantial question concerning validity.”
`
`7
`
`
`
`Reply to Patent Owner Preliminary Responses
`Case Nos. IPR2019-01044, -01046, -01047, -01048
`IPR2019-00161, Paper 16, 9 (PTAB May 15, 2019).
`
`For the ’502 patent, Deere argues that a co-pending reissue proceeding
`
`warrants denial of institution. But Guardian Building Prods., Inc., v. Johns
`
`Manville, cited by Deere, does not require this result because there, the appeal of
`
`the reissue proceeding (raising the same grounds of invalidity as the IPR) was
`
`already pending before the Board, and the Board simply chose to decide the issues
`
`in the reissue appeal proceeding. No. IPR2017-00633, Paper 13, 11-12 (PTAB
`
`July 26, 2017). Here, to the contrary, the reissue application is not under appeal
`
`and involves different grounds of rejection. Apex Med. Corp. v. ResMed Ltd. is
`
`likewise inapplicable because, unlike the patent at issue in that IPR, which had
`
`already reissued, the ’502 patent has not reissued, and Deere continues to assert it.
`
`No. IPR2013-00513, Paper 11, 3-4 (PTAB Feb. 20, 2014).
`
`Deere’s argument that the pending litigation merits denial of institution is
`
`flawed for the further reason that, as described above, Deere is taking inconsistent
`
`positions in the two forums. To deny on that basis would allow Deere to continue
`
`arguing for an overly broad construction to establish infringement in district court
`
`while avoiding before the Board the implications of doing so.
`
`For these reasons, and those in the Petitions, the IPRs should be instituted.
`
`Respectfully Submitted,
`/Grant K. Rowan/
`Grant K. Rowan, Registration No. 41,278
`
`8
`
`
`
`U.S. Patent No. 9,510,502
`Case No. IPR2019-01047
`
`Updated List of Exhibits for U.S. Patent No. 9,510,502 Petition for
`Inter Partes Review
`Description
`U.S. Patent No. 9,510,502 to Garner et al. (“’502 patent”)
`
`Exhibit
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`Declaration of Randal K. Taylor
`
`RESERVED
`
`U.S. Patent No. 4,193,523 to Koning (“Koning”)
`
`RESERVED
`
`RESERVED
`
`U.S. Patent No. 6,681,706 to Sauder et al. (“Sauder”)
`
`U.K. Published Application No. GB 2,012,534A to Curtis
`(“Curtis”)
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`U.S. Patent No. 6,651,570 to Thiemke (“Thiemke”)
`
`U.S. Patent No. 6,244,201 to Mauch et al. (“Mauch”)
`
`RESERVED
`
`i
`
`
`
`Exhibit
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`U.S. Patent No. 9,510,502
`Case No. IPR2019-01047
`
`Description
`
`RESERVED
`
`RESERVED
`
`U.S. Patent No. 4,023,509 to Hanson (“Hanson”)
`
`U.S. Patent No. 2,566,406 to Dougherty (“Dougherty”)
`
`File History of U.S. Patent No. 9,510,502
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`Final Joint Claim Construction Chart, Deere & Co. v. AGCO Corp.
`et al., No. 1:18-cv-00827-CFC (D. Del. Aug. 13, 2019), ECF No.
`121
`
`ii
`
`
`
`U.S. Patent No. 9,510,502
`Case No. IPR2019-01047
`
`CERTIFICATE OF SERVICE
`I hereby certify that on September 23, 2019, I caused a true and correct
`
`copy of the following materials:
`
`(cid:120) Reply to Patent Owner Preliminary Responses
`
`(cid:120) Exhibit 1035
`
`(cid:120) Petitioner’s Updated List of Exhibits
`
`to be served upon the following by ELECTRONIC MAIL:
`
`Jay I. Alexander, Reg. No. 32,678
`jalexander@cov.com
`Peter P. Chen, Reg. No. 39,631
`pchen@cov.com
`Rajesh D. Paul, Reg. No. 64,492
`rpaul@cov.com
`Nicholas L. Evoy, Reg. No. 74,552
`nevoy@cov.com
`Deere-IPRs@cov.com
`Counsel for Patent Owner
`
`/Greg Israelsen/
`R. Gregory Israelsen
`Registration No. 72,805
`
`iv
`
`