IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`
`
`Patent Owner Sur-Reply
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`PRECISION PLANTING LLC, AGCO CORPORATION,
`Petitioners,
`
`v.
`
`DEERE & COMPANY,
`Patent Owner
`
`––––––––––––––
`
`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
`
`––––––––––––––
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`TO PRELIMINARY RESPONSES
`
`
`
`
`IPR2019-01047, IPR2019-01048
`
`
`
`Patent Owner Sur-Reply
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`PRECISION PLANTING LLC, AGCO CORPORATION,
`Petitioners,
`
`v.
`
`DEERE & COMPANY,
`Patent Owner
`
`––––––––––––––
`
`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
`
`––––––––––––––
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`TO PRELIMINARY RESPONSES
`
`
`
`
`
`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`
`
`Patent Owner Sur-Reply
`
`TABLE OF CONTENTS
`I.
`JUDICIAL ESTOPPEL WARRANTS DENYING THE PETITIONS ........... 1
`NO MOTIVATION EXISTS TO COMBINE THE REFERENCES ............... 6
`II.
`III. DISCRETIONARY DENIAL IS WARRANTED IN THIS CASE ................. 7
`
`
`
`
`
`
`
`i
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`
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`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`
`
`Patent Owner Sur-Reply
`
`Precision Planting, LLC and AGCO Corporation (“Petitioners”) were masters
`
`of their jointly-filed Petitions.1 Petitioners in each case chose to assert a single
`
`ground that required the combination of Koning (a potato planter) with a row crop
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`planter for small seeds (Hedderwick or Sauder). Yet Petitioner Precision Planting
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`had already told the Office that Koning was “directed to a completely different field
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`of art” from, and thus should not be combined with, a similar row crop planter for
`
`small seeds (Walters). IPR2019-01044 POPR 3 (“’663 POPR”). Precision Planting
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`benefitted from this representation, which led directly to the issuance of the Sauder
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`patent. The joint petitioners should be estopped from taking the completely opposite
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`position here.
`
`Petitioners also misconstrue Patent Owner’s arguments on the merits, which
`
`is not that the physical elements of Petitioner’s disparate pieces of prior art cannot
`
`be combined. Rather, the significant differences in the purpose and principles of
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`operation of these references would discourage a POSA from combining them. This
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`is the opposite of a motivation of combine.
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`Finally, the precedential force of NHK favors discretionary denial here.
`
`I.
`
`JUDICIAL ESTOPPEL WARRANTS DENYING THE PETITIONS
`Events from 2003 to 2009 do not diminish the estoppel effect of Precision’s
`
`
`1 This Sur-Reply was authorized by the Board via email on September 13, 2019.
`
`1
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`
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`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`Patent Owner Sur-Reply
`
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`statements: Petitioners observe that six years elapsed between Precision Planting’s
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`statements to the Examiner about potato planters and small seed row crop planters
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`in 2003 and the 2009 priority date of the challenged claims. But Petitioners identify
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`nothing that occurred in that interval that would diminish the significance of those
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`statements. Petitioners point only to the conclusory observations of their experts that
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`(1) some crops, such as corn kernels, are themselves used as seed and thus “systems
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`used to plant seed crop can be used to plant seed”; and (2) some farmers plant both
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`corn or soybeans and potatoes. Reply 3. The experts cite no technical authority, but
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`instead refer to their own alleged “experience” (which was actually confined to small
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`seeds/seed crops, i.e., wheat, soybean, sorghum, corn seed, and corn kernels, see id.).
`
`
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`None of this explains why the technology purportedly evolved to such an
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`extent between 2003 and 2009 that a POSA would suddenly look to potato planters
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`for insight into planting small seed row crops—the exact opposite of what Precision
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`Planting told the Examiner. Petitioners suggest the Board ignore the prior
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`inconsistent argument made by Precision Planting through its attorney, even though
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`the Sauder patent would not have been allowed but for those arguments. It would
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`make no sense to allow a party to avoid the estoppel effect of its prior statements to
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`an administrative tribunal simply by hiring an expert to later contradict those
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`2
`
`
`
`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`
`statements in another proceeding.2
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`Patent Owner Sur-Reply
`
`The estoppel effect of Precision Planting’s prior statements is also not
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`diminished by any change in law. Reply 3-4. KSR Intern. Co. v. Teleflex, Inc. did
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`not eliminate the teaching, suggestion, motivation test, but it did hold that a
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`motivation to combine analysis “should be made explicit.” 550 U.S. 398, 418 (2007);
`
`See also In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016). An obviousness
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`combination may still fail if one of the references is not reasonably pertinent to the
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`problem at issue—just as Precision said about Koning in 2003. See In re Klein, 647
`
`F.3d 1343, 1347-52 (Fed. Cir. 2011). Finally, the citation of Koning in an IDS in
`
`certain challenged patents is not an admission of materiality, 37 C.F.R. §1.97(h), and
`
`does not undermine the estoppel effects of Precision’s detailed and explicit
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`arguments that Koning is non-analogous art.
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`Patent Owner did not mischaracterize the Sauder prosecution: Petitioners
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`point out that Precision’s remarks about Koning were accompanied by claim
`
`
`2 The Board should also consider that Petitioners’ two experts provided a substantially
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`identical description of Koning and, coincidentally, both experts purport to “have used
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`systems that were used to [plant] wheat, soybean, or grain sorghum to design systems
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`used to plant corn [seed].” Compare ’663 Ex. 1002, ¶63 & ’199 Ex. 1002, ¶68 (Prairie
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`Declarations) with ’906 Ex. 1002, ¶53 & ’502 Ex. 1002, ¶67 (Taylor Declarations).
`
`3
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`
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`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`Patent Owner Sur-Reply
`
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`amendments. Reply 4-5. Yet they point to nothing in those amendments that helped
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`overcome the rejection over Koning. The amendments merely exchanged the term
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`“conveying means” for “conveyor” and added the limitation that the conveying
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`means “controllably” conveys seeds “from the seed meter to proximate the soil
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`surface until … releasing the seeds… into the open furrow.” See Ex. 2001, 302-310.
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`These new limitations could not possibly have overcome Koning in the Sauder
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`prosecution—indeed they are essentially the same features Petitioners now
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`emphasize to the Board as a motivation to combine Koning to invalidate Patent
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`Owner’s claims. See, e.g., ’663 Pet. 35 (“Koning … describes the importance of
`
`controlling the movement of seeds as they travel to the ground”); id. 35-36.
`
`Petitioners’ suggestion that there is no “link” between Precision’s prior inconsistent
`
`statement and its success during prosecution strains credulity. Reply 4. The
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`Examiner had rejected Sauder’s pending claims over, inter alia the combination of
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`Koning and Walters. See Ex. 2001, 209-211. The prosecution clearly shows that but
`
`for Precision’s arguments characterizing Koning as non-analogous art, those
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`rejections would have stood.
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`Petitioners do seek an unfair advantage: Petitioners claim they seek no
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`unfair advantage because they are not seeking to enforce the Sauder patent. Reply 5.
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`This is a non-sequitur. Petitioners obviously seek an unfair advantage—to destroy
`
`4
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`
`
`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`Patent Owner Sur-Reply
`
`
`Patent Owner’s rights while arguing Koning is analogous art, after obtaining the
`
`Sauder patent while arguing Koning is not analogous art. They cannot have it both
`
`ways. Moreover, Scarano v. Central R. Co. of N. J., 203 F.3d 510 (3d Cir. 1953) did
`
`not hold that judicial estoppel cannot apply unless the inconsistent statements were
`
`made against the same party. Rather, it cites a 1925 treatise stating that: “a party to
`
`litigation will not be permitted to assume inconsistent or mutually contradictory
`
`positions with respect to the same matter in the same or a successive series of suits.”
`
`Id., 513. This is consistent with New Hampshire v. Maine, 532 U.S. 742, 749-50
`
`(2001) and Patent Owner’s other precedent. ’663 POPR 15-16.
`
`Petitioners also assert that Patent Owner has taken an “opposite position” with
`
`respect to the “endless member” claim limitation. Reply 5. But Patent Owner has not
`
`taken any position on the construction of this term before the Board. It was
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`Petitioners who chose to assert a single ground of invalidity using the Koning
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`reference and to unequivocally assert that “endless member” need not be construed
`
`for purposes of resolving the Petitions. ’663 Pet. 40, 43; ’199 Pet. 46; ’502 Pet. 34,
`
`37; ’906 Pet. 34, 37. Patent Owner has simply accepted this representation at the
`
`preliminary stage and addressed the petitions as they were written. This is not an
`
`inconsistency. Petitioners now appear to suggest to that “endless member” does need
`
`to be construed—which directly contradicts the Petitions as-filed, and would
`
`5
`
`
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`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`Patent Owner Sur-Reply
`
`
`improperly raise a new issue. Cf. July 2019 Trial Practice Guide Update at 40 (“[A]
`
`reply that raises a new issue or belatedly presents evidence may not be considered.”).
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`Even if properly raised, whether or not Koning discloses an “endless member” under
`
`any particular construction is irrelevant to Precision’s estoppel-creating argument
`
`that Koning’s potato planter is not analogous art to a small seed row crop planter.
`
`The estoppel applies to AGCO: Petitioners assert AGCO should not be
`
`estopped because it acquired the Sauder patent. Reply at 5. That too is wrong. Taylor
`
`v. Sturgell, 553 U.S. 880, 894 (2008) confirmed that estoppel applies to “succeeding
`
`owners of property.” Indeed, even Perry v. Blum, 629 F.3d 1 (1st Cir. 2010), cited
`
`by Petitioners, observed that courts have applied judicial estoppel “when the
`
`estopped party … assumed the original party’s role.” Id. at 9.
`
`II. NO MOTIVATION EXISTS TO COMBINE THE REFERENCES
`Petitioners mischaracterize Patent Owner’s arguments on the merits as
`
`ignoring the teachings of the references and advocating physical combinability of
`
`prior art elements. Reply 1, 6. That is not Patent Owner’s argument. Rather, Patent
`
`Owner argues that the significant and fundamental re-engineering required would
`
`dissuade the POSA from Petitioners’ proposed combinations.
`
`For example, Petitioners assert that it would be a “simple” matter to “merely
`
`… replac[e]” Hedderwick’s finned belt with Koning’s brush belt. ’663 Pet. 37.
`
`6
`
`
`
`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`Patent Owner Sur-Reply
`
`
`Patent Owner pointed out why this would be neither simple nor obvious. Petitioners
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`propose to eliminate Hedderwick’s finned belt (which is necessary to execute the
`
`carefully synchronized transfer of small seeds from the drop-off lip of the seed
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`meter) and instead re-purpose Koning’s brush belt (which does not even support
`
`seeds but rather hangs above a flat conveyor that supports potatoes) to carry the
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`much smaller seeds within a stationary housing. This would change the principle of
`
`operation of both references without any reasonable expectation of success and
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`further fail to provide any advantage over Hedderwick. ’663 POPR 17-26. The
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`conclusory testimony of Petitioners’ experts (who parrot the Petitions, and each
`
`other) does not establish motivation to combine. See InTouch Technologies, Inc. v.
`
`VGO Communications, Inc., 751 F.3d 1327, 1350-52 (Fed. Cir. 2014) (rejecting
`
`expert’s “vague” and “conclusory” testimony that failed to articulate a reason to
`
`combine the references).
`
`III. DISCRETIONARY DENIAL IS WARRANTED IN THIS CASE
`Petitioners urge the Board to ignore NHK because it was decided “chiefly on
`
`§325(d)” grounds. Reply 7. But NHK—which was designated precedential on May
`
`7, 2019—also denied institution under §314(a). NHK Spring Co. v. Intri-Plex Techs.,
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`Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept 12, 2018). The primary basis
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`for the §314(a) denial was that the district court trial would “analyze the same
`
`7
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`
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`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`Patent Owner Sur-Reply
`
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`[invalidity] issues and will be resolved before any trial on the Petition concludes.”
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`Id. The Board noted the court trial occurring six months before the IPR final decision
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`deadline. Id. at 20. Here, the court trial will occur two months prior to the final IPR
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`decision deadline and will resolve the same issues, a fact Petitioners do not and
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`cannot deny given the overlap between the Petitions and their district court invalidity
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`contentions. The panel in Samsung Elecs. Co. v. Immersion Corp. IPR2018-0499,
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`Paper 11 at 13 (PTAB Mar. 6, 2019) may have reached a different conclusion, but it
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`did so before NHK was designated precedential and thus the panel could not have
`
`considered NHK’s precedential effect.
`
`As to the ’502 Patent currently in reissue, Petitioners mischaracterize the
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`PTAB’s denial of institution under §325(d) in Guardian Bldg. Prods., Inc. v. Johns
`
`Manville, IPR2017-00633, Paper 13 (PTAB Jul. 26, 2017) as turning on the
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`existence of an appeal in the reissue proceeding. Reply 8. Rather, it was the “late-
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`stage” of the reissue proceeding more broadly, which had led to the Patent Owner’s
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`expenditure of resources, that was the more salient factor. Id. at 12-13. The ’502
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`reissue proceeding, filed October 31, 2017, is similarly at a late stage. Ex. 2007.
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`Finally, Petitioners’ concluding accusation that “Deere is taking inconsistent
`
`positions” as to claim construction (Reply 8) is false. See pp. 5-6, supra.
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`For the reasons set forth here and in the POPRs, the Petitions should be denied.
`
`8
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`
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`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`
`
`Patent Owner Sur-Reply
`
`Dated: October 3, 2019
`
`Respectfully submitted,
` /Jay I. Alexander/
`Jay I. Alexander, Reg. No. 32,678
`Rajesh D. Paul, Reg. No. 64,492
`Nicholas L. Evoy, Reg. No. 74,552
`Covington & Burling LLP
`One CityCenter
`850 Tenth Street, NW
`Washington, DC 20001
`Phone: (202) 662-6000
`Fax: (202) 662-6291
`
`Peter P. Chen, Reg. No. 39,631
`Covington & Burling LLP
`3000 El Camino Real, 5 Palo Alto Square
`Palo Alto, CA 94306
`Phone: (650) 632-4700
`Fax: (650) 632-4800
`
`Counsel for Patent Owner
`
`9
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`
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`IPR2019-01044, IPR2019-01046,
`IPR2019-01047, IPR2019-01048
`
`
`
`Patent Owner Sur-Reply
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §42.6, I certify that on the date listed below, a copy of
`
`this paper and every exhibit filed with this paper was served on the Petitioner by
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`electronic mail to the following counsel of record for Petitioner:
`
`
`Grant K. Rowan (Grant.Rowan@wilmerhale.com)
`Mary V. Sooter (Mindy.Sooter@wilmerhale.com)
`Michael J. Summersgill
`Mark G. Matuschak
`Jordan L. Hirsch
`Natalie Pous
`Wilmer Cutler Pickering Hale and Dorr, LLP
`
`
`
`
`Dated: October 3, 2019
`
`
`
` /Jay I. Alexander/
`Jay I. Alexander, Reg. No. 32,678
`
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`iii
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`
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