Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 16
`Entered: December 2, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`PRECISION PLANTING LLC, AGCO CORPORATION,
`Petitioner,
`v.
`DEERE & COMPANY,
`Patent Owner.
`_______________
`
`IPR2019-01047
`Patent 9,510,502 B2
`_______________
`
`
`Before MICHAEL W. KIM, BARRY L. GROSSMAN, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 16
`Entered: December 2, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`PRECISION PLANTING LLC, AGCO CORPORATION,
`Petitioner,
`v.
`DEERE & COMPANY,
`Patent Owner.
`_______________
`
`IPR2019-01047
`Patent 9,510,502 B2
`_______________
`
`
`Before MICHAEL W. KIM, BARRY L. GROSSMAN, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-01047
`Patent 9,510,502 B2
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`I.
`
`INTRODUCTION
`Background
`A.
`Precision Planting LLC and AGCO Corporation (“Petitioner”) filed a
`Petition to institute an inter partes review of claims 1–22 of U.S. Patent No.
`9,510,502 B2 (Ex. 1001, “the ’502 patent”). Paper 4 (“Pet.”). Deere &
`Company (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”). With Board authorization, Petitioner filed a Reply (Paper 10) and
`Patent Owner filed a Sur-Reply (Paper 11).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.” 35
`U.S.C. § 314(a); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial
`on behalf of the Director.”). “In determining whether to institute or order a
`proceeding under this chapter, chapter 30, or chapter 31, the Director may
`take into account whether, and reject the petition or request because, the
`same or substantially the same prior art or arguments previously were
`presented to the Office.” 35 U.S.C. § 325(d).
`Upon consideration of the record before us, we are persuaded that we
`should exercise our discretion and deny institution because “the same or
`substantially the same prior art or arguments previously were presented to
`the Office.” 35 U.S.C. § 325(d) (informing authority to institute under 35
`U.S.C. § 314(a)). Therefore, we do not institute an inter partes review on
`any claim or ground.
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`Related Proceedings
`B.
`Petitioner and Patent Owner identify the following district court
`proceeding concerning the ’502 Patent: Deere & Co. v. AGCO Corp., No.
`1:18-cv-827-CFC (D. Del.); and Deere & Co. v. Precision Planting LLC,
`No. 1:18-cv-828-CFC (D. Del.). Pet. 6; Paper 6, 1. “In addition, U.S. Patent
`Application No. 15/799,617, filed October 31, 2017, is an application for
`reissue of U.S. Patent No. 9,510,502 and is currently pending before the
`Central Reexamination Unit [(“the ’617 reissue examination”)].” Paper 6, 1.
`
`The ’502 Patent
`C.
`The ’502 patent relates to seeding machines called “planters” used by
`farmers to plant seeds in a field. Ex. 1001, 3:16–40. In a typical
`configuration, the planter is attached to a tractor that pulls the planter across
`the field. The planter has a main hopper that holds seeds and individual “row
`units” that take the seeds from the main hopper, place them in an auxiliary
`hopper, and deliver the seeds to the ground. Ex. 1001, 3:17–40. Each row
`unit digs a trench, or “furrow,” in the ground, deposits seeds in the furrow,
`and covers the seeds with soil. Ex. 1001, 3:32–38.
`The ’502 patent asserts that prior art seeding systems did not space
`seeds with sufficient accuracy or uniformity. Ex. 1001, 1:53–62. The patent
`states that prior art systems did not sufficiently control the movement of the
`seed from the hopper to a discharge point or from the discharge point to the
`ground. Ex. 1001, 1:56–62. The patent states, for example, that prior art row
`units that allowed seeds to fall by gravity resulted in inaccurate seed spacing.
`Ex. 1001, 1:50–53.
`The patent also states that systems that used flighted belts to deliver
`the seeds from the meter to the ground—such as the flighted belt in
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`Sauder—could not discharge the seeds at the desired horizontal velocity to
`control movement of the seed upon discharge. Ex. 1001, 9:34–58
`(discharging seed at a speed “that is approximately equal to, but in the
`opposite direction of, the seeding machine forward velocity” is not possible
`“with other seed delivery systems, such as that disclosed in U.S. Pat. No.
`6,681,706 [Sauder] where the delivery system . . . has a belt with flights to
`carry the seed.”). Specifically, the patent explains that the speed of the
`flighted belt “must be timed to the seed meter speed to ensure” that each
`seed that is discharged from the meter is placed into a flight. Ex. 1001, 9:34–
`58. The patent asserts that this prevented such systems from discharging
`seeds at the optimal horizontal velocity to control the seeds as they were
`discharged. Ex. 1001, 9:34–58. The ’502 patent thus states that there is a
`need for a system that provides better control of seeds from meter to the
`ground. Ex. 1001, 1:53–55.
`The ’502 patent purports to solve these problems using a row unit that
`allegedly provides more control over the seeds as they are conveyed from
`the seed meter to the discharge point and discharges seeds at the desired
`velocity to minimize movement of the seeds after they have been
`discharged. Ex. 1001, 9:34–42 (“At discharge . . . [t]he belt is operated at a
`speed to produce a horizontal velocity component VH that is approximately
`equal to, but in the opposite direction of, the seeding machine forward
`velocity show by arrow 408. As a result, the horizontal velocity of the seed
`relative to the ground is zero or approximately zero. This minimizes rolling
`of the seed in the seed trench.”).
`The row unit includes a seed meter that takes seeds sequentially from
`the auxiliary seed hopper and delivers them to a seed delivery apparatus. Ex.
`
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`1001, 5:42–53. The “seed delivery apparatus” uses an “endless member” to
`deliver seed from the seed meter to the discharge point. Ex. 1001, 13:31–37.
`The patent explains that the “endless member” is in the form of a brush belt
`with bristles that grip the seed. Ex. 1001, 5:64–6:15, 10:57–60 (“The seed
`delivery system 1210 is like seed delivery system 400 described above
`containing a brush belt 1312 to grip and carry seed.”), 12:53–64 (“The seed
`delivery system 1210 includes an endless member. . . . The endless member
`is shown in the form of a brush belt 1312 having bristles 1314 that sweep
`across the face 1251 of the belt 1250 to remove the seed therefrom.”). The
`seeds are inserted into the bristles of the brush belt so they can be carried in
`a controlled manner to the furrow in the ground. Ex. 1001, 9:3–12 (“[O]nce
`seed is captured or trapped in the bristles 428, the delivery system controls
`the movement of seed from the seed meter to the discharge location. The
`seeds are held in the bristles such that the seeds can not [sic] move vertically
`relative to the bristles 428 or relative to other seeds in the delivery system.”),
`9:14–17 (“The seed is carried by the bristles from the upper opening 416 to
`the lower opening 418 with the movement of the seed controlled at all times
`from the upper opening to the lower opening.”).
`The patent explains that the brush belt is contained within a housing to
`further maintain control of the seeds as they are carried to the furrow. Ex.
`1001, 13:3–9 (seed moves from the seed meter to “the interior of the
`delivery system housing where the seed is trapped by the brush bristles and
`the interior surface of the delivery system housing 1322”). The housing has a
`first upper opening and a second lower opening. The brush belt receives
`individual seeds from the seed meter at the upper opening and carries the
`seeds to the lower opening. Then, the brush belt discharges the seeds into the
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`furrow. Ex. 1001, 5:64–6:5 (“Delivery system 400 includes a housing 402 . .
`. . An upper opening 416 is formed . . . to allow seed to enter into the
`housing 402. A lower opening 418 is provided at the lower end [of the
`housing] forming a discharge location 413 for the seed.”).
`Finally, the row unit discharges the seed at a horizontal speed that is
`equal to the “seeding speed” (the speed at which the planter is moving) and
`in a direction opposite to the “seeding direction” (the direction in which the
`planter is moving). Ex. 1001, 9:34–39 (“At discharge, the seed has a velocity
`shown by the vector V. This velocity has a vertical component VV and a
`horizontal component VH. The belt is operated at a speed to produce a
`horizontal velocity component VH that is approximately equal to, but in the
`opposite direction of, the seeding machine forward velocity shown by arrow
`408.”). The patent explains that this is enabled by the use of the brush belt.
`The patent states that because seeds can be inserted into the brush belt at “an
`infinite number of positions,” the speed of the brush belt can be independent
`of the speed of the seed meter thus enabling the system to deposit seeds at
`the desired horizontal velocity:
`Seed can be inserted into the brush bristles at essentially
`an infinite number of positions. This enables the brush to be
`operated at the speed necessary to produce the desired horizontal
`velocity component to the seed, independent of the seed
`population. The seed meter, on the other hand, must be operated
`at a speed that is a function of both the forward travel speed of
`the seeding machine and the desired seed population. Because
`the belt 424 can be loaded with seed at essentially an infinite
`number of positions,
`the belt speed can be operated
`independently of the seed meter speed.
`Ex. 1001, 9:43–52.
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`The ’502 patent asserts that by discharging the seed at a velocity that
`is approximately equal to but in the opposite direction of the seeding
`machine velocity, the effective net horizontal velocity of the seed relative to
`the ground is zero. Ex. 1001, 9:34–42. According to the patent, this
`minimizes rolling of the seed when it lands in the furrow, improving spacing
`accuracy and uniformity. Ex. 1001, 9:34–42.
`Petitioner has identified certain features of the seed delivery
`apparatus, recited in independent claim 1, in the annotated version of Figure
`10 below:
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`Ex. 1001, Fig. 10 (annotated). As set forth above, the seed meter is shown in
`blue, and the brush belt (pink) is surrounded by the housing (green). The
`housing has an opening at the top to receive seed and an opening at the
`bottom to discharge seed. Seed is taken from the hopper, to the seed meter,
`to the brush belt, and then discharged at the discharge point at the desired
`velocity and direction. The arrow labeled 408 represents the direction in
`which the planter is pulled across the field. Ex. 1001, 5:66–6:1 (“the
`direction of travel of the seeding machine [is] shown by the arrow 408”).
`The arrow labeled VH represents the direction in which the seed is
`discharged—at a velocity that is approximately equal to but in the opposite
`direction of the seeding machine velocity. Ex. 1001, 9:34–39.
`
`Illustrative Claim
`D.
`Petitioner challenges claims 1–22, of which claims 1, 7, and 13 are
`independent. Independent claim 1 is reproduced below.
`1. A seed delivery apparatus for transferring seed to a
`furrow, the seed delivery apparatus secured to a seeding
`machine, the seed delivery apparatus comprising:
`a housing having a first opening through which seed is
`wherein the drive member is configured to discharge the received
`and a second opening through which seed exits;
`an endless member positioned within the housing; and
`a drive member operably configured to control the
`movement of the endless member in cooperation with movement
`of the seeding machine,
`wherein the seeding machine is operable in a seeding
`direction at a first seeding speed and at a second seeding speed,
`and wherein the drive member is configured to discharge seed
`with a directional component equal and opposite to the seeding
`direction and at a speed
`in
`the directional component
`approximately equal to the first seeding speed in a first mode and
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`at a speed in the directional component approximately equal to
`the second seeding speed in a second mode.
`Ex. 1001, 13:31–49.
`Asserted Ground of Unpatentability
`E.
`Petitioner challenges claims 1–22 on the following ground. Petitioner
`also relies upon the Declaration of its expert, Randal K. Taylor, filed as
`Exhibit 1002. Pet. passim.
`
`Claims Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1–22
`
`§ 103(a)
`
`Curtis1, Sauder2, and Koning3
`
`II. ANALYSIS
`Patent Owner asserts that the current Petition provides no new prior
`art nor arguments outside what is currently being considered by the Office in
`the ’617 reissue examination, and thus asks the Board to deny institution
`under 35 U.S.C. § 325(d). Prelim. Resp. 5, 34–35. This issue was further
`addressed by Petitioner (Reply 7–8) and Patent Owner (Sur-Reply 8). For
`the reasons discussed below, we agree with Patent Owner, and thus exercise
`our discretion to deny institution on that basis.
`35 U.S.C. § 325(d) provides, in relevant part, “[i]n determining
`whether to institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether, and reject the
`petition or request because, the same or substantially the same prior art or
`arguments previously were presented to the Office.”
`
`
`1 UK Patent Application Publication No. 2 012 534 A, pub. Aug. 1, 1979
`(Ex. 1008).
`2 U.S. Patent No. 6,681,706 B2, iss. Jan. 27, 2004 (Ex. 1007).
`3 U.S. Patent No. 4,193,523, iss. Mar 18, 1980 (Ex. 1004).
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`“While petitioners may have sound reasons for raising art or
`arguments similar to those previously considered by the Office, the Board
`weighs petitioners’ desires to be heard against the interests of patent owners,
`who seek to avoid harassment and enjoy quiet title to their rights.” Neil
`Ziegman, N.P.Z., Inc. v. Stephens, Case IPR2015-01860, Paper 11 at 12–13
`(PTAB Feb. 24, 2016) (citing H. Rep. No. 112-98, pt. 1, at 48 (2011))
`(Denying Institution of Inter Partes Review). “On the one hand, there are
`the interests in conserving the resources of the Office and granting patent
`owners repose on issues and prior art that have been considered previously.”
`Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-01876, Paper 8 at 7 (PTAB
`Apr. 3, 2017) (Granting Institution of Inter Partes Review). “On the other
`hand, there are the interests of giving petitioners the opportunity to be heard
`and correcting any errors by the Office in allowing a patent—in the case of
`an inter partes review—over prior art patents and printed publications.” Id.
`The Board has previously identified a group of common non-
`exclusive factors, which we have weighed in determining whether to
`exercise our discretion:
`(a) The similarities and material differences between the
`asserted art and the prior art involved during examination; (b)
`the cumulative nature of the asserted art and the prior art
`evaluated during examination; (c) the extent to which the
`asserted art was evaluated during examination, including
`whether the prior art was the basis for rejection; (d) the extent
`of the overlap between the arguments made during examination
`and the manner in which Petitioner relies on the prior art or
`Patent Owner distinguishes the prior art; (e) whether Petitioner
`has pointed out sufficiently how the Examiner erred in its
`evaluation of the asserted prior art; and (f) the extent to which
`additional evidence and facts presented in the Petition warrant
`reconsideration of the prior art or arguments.
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`Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586,
`Paper 8 at 17–18 (PTAB Dec. 15, 2017) (Granting Institution of Inter Partes
`Review) (designated precedential) (footnote omitted). We consider these
`factors in evaluating representative independent claim 1.
`1.
`Analysis of Becton, Dickinson Factors
`(a) The similarities and material differences between the
`asserted art and the prior art involved during examination
`The Petition challenges independent claim 1 as obvious over Curtis,
`Sauder, and Koning. Pet. 44–55. Specifically, the Petition relies on Sauder
`for every limitation of independent claim 1, except for the following: (a)
`Koning for its brush belt as an “endless member” (see generally Pet. 44–55);
`and (b) Curtis for disclosing “discharging the seed with a directional
`component equal and opposite to the seeding direction and at a speed in the
`directional component approximately equal to the seeding speed.” Pet. 54–
`55.
`
`As set forth above, the ’617 reissue examination is of an application
`for reissue of the ’502 patent. Claims 1–22 of the ’617 reissue examination
`are currently identical to claims 1–22 of ’502 patent. “[T]he reissued patent,
`to the extent that its claims are substantially identical with the original
`patent, shall constitute a continuation thereof and have effect continuously
`from the date of the original patent.” 35 U.S.C. § 252. Although no reissue
`patent has been issued, in view of the above, we treat the ’617 reissue
`examination as a part of the examination of the ’502 patent.
`In the ’617 reissue examination, a Final Office Action was mailed on
`November 4, 2019. Ex. 3001. In that Final Office Action, independent claim
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`1 was rejected as obvious over Sauder and Olson4. Ex. 3001, 3–4. The
`relevant portion of the Final Office Action reads as follows:
`To the extent Sauder does not disclose the drive member
`configured to discharge seed at a speed opposite and equal to the
`first or second seeding speeds (modes), Olson discloses in a seed
`delivery apparatus (abstract; Figs. 1–12), the seed being
`delivered at a speed opposite and equal the seeding speed (from
`“discharging the seeds with a horizontal velocity component
`opposite and approximately equal to the horizontal velocity
`component introduced by movement in the given forward
`direction” of col. 9, lines 40–48).
`Ex. 3001, 4. Furthermore, Patent Owner filed an Information Disclosure
`Statement, on August 29, 2019, that included Curtis, Sauder, and Koning
`(Ex. 3002, 2–4), which the Examiner returned, on October 28, 2019, with
`the following annotation: “ALL REFERENCES CONSIDERED EXCEPT
`WHERE LINED THROUGH. /J.L.G./.” None of Curtis, Sauder, and Koning
`was lined through. The Examiner did the same with an Information
`Disclosure Statement filed September 3, 2019, which included the
`following:
`
`Petition for Inter Partes Review of U.S. Patent No.
`9,510,502 filed on behalf of Precision Planting, LLC and AGCO
`Corp., filed on May 24, 2019, in 77 pages.
`Exhibit 1002 to Petition for Inter Partes Review of U.S.
`Patent No. 9,510,502 filed on behalf of Precision Planting, LLC
`and AGCO Corp.: Declaration of Randal K. Taylor, filed on May
`24, 2019, in 130 pages.
`Ex. 3002.
`Clearly the same prior art in the Petition, including the Declaration of
`Mr. Taylor, is before the Examiner in the ’617 reissue examination in every
`
`
`4 U.S. Patent No. 4,915,258, iss. Apr. 10, 1990.
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`respect. The only differences are in application, where the Examiner has not
`applied Koning, and has applied Olson instead of Curtis.
`For Koning, the Petition relies on it for its brush belt as an “endless
`member.” Pet. 47–48. The Petition appears to do this in case the Board finds
`that the specification of the ’502 patent expressly disclaims the “flighted
`belt” of Sauder as corresponding to the “endless member” of independent
`claim 1. Pet. 45. The Examiner does not take this position. Ex. 3001, 3.
`Accordingly, we do not find this difference to be material.
`For Olson, the Examiner relies on Olson in a manner almost identical
`to how the Petition relies on Curtis. Compare Pet. 54–55; Ex. 3001, 3–4, 19.
`Olson discloses a seed meter seed tube for “discharging the seeds with a
`horizontal velocity component opposite and approximately equal to the
`horizontal velocity component introduced by movement in the given forward
`direction” (Ex. 3003, 9:40–48), and Curtis discloses a seed ejector for a
`precision seeder having an endless conveyor belt that drives seeds into the
`ground “at a speed equal to and in the opposite direction to the ground speed
`of the drill.” Ex. 1008, Abs. The functions are identical; the mechanisms by
`which the functions are achieved are different. Given the relevant claim
`language focuses on function, we find these differences to be materially
`minimal.
`We find that this factor weighs heavily in favor of exercising our
`discretion.
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination
`The same reference, Sauder, is relied on for most of the limitations of
`independent claim 1, both in the Petition and in the examination of the ’617
`reissue examination. That is the epitome of cumulative.
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`The “flighted belt” of Sauder and the brush belt of Koning certainly
`have different features. We find that they are, nevertheless, cumulative with
`respect to “endless member,” because (1) independent claim 1 does not
`further define “endless member” in a manner where the differences between
`a “flighted belt” and a “brush belt” are relevant, and (2) the ’502 patent
`refers to “flexible belts” in its Background section, indicating that they are
`generally known.
`For similar reasons, we find that Olson and Curtis are cumulative.
`Independent claim 1 does not further define the relevant function in a
`manner where the differences between a “seed tube” and a “seed ejector”
`having an endless conveyor belt are relevant.
`We find that this factor weighs heavily in favor of exercising our
`discretion.
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection
`Sauder is the primary reference on which the Examiner has based the
`rejection in the Final Office Action. Ex. 3001, 3–4. The Examiner has not
`applied expressly either Koning or Curtis, and the Examiner’s evaluation of
`those references is limited to indicating that they have been considered as a
`part of an Information Disclosure Statement.
`We find that this factor weighs slightly in favor of exercising our
`discretion.
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the prior art or
`Patent Owner distinguishes the prior art
`The Examiner applies Sauder in a manner substantively
`indistinguishable from how the Petition applies Sauder to independent claim
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`1. Compare Pet. 44–55; Ex. 3001, 3–4. The Examiner also applies Olson in
`a manner that is substantively indistinguishable from how the Petition
`applies Curtis in any material way. Compare Pet. 54–55; Ex. 3001, 3–4, 19.
`In a Response to Non-Final Office Action filed September 5, 2019,
`Patent Owner asserts that (1) Sauder does not disclose
`wherein the drive member is configured to discharge seed
`with a directional component equal and opposite to the seeding
`direction and at a speed
`in
`the directional component
`approximately equal to the first seeding speed in a first mode and
`at a speed in the directional component approximately equal to
`the second seeding speed in a second mode,
`as recited in independent claim 1, and (2) that “Sauder explicitly teaches
`away from combination with any references that discloses such a limitation.”
`Ex. 3004, 19–20. Specifically, Patent Owner asserts that “[s]liding gently
`down Sauder’s seed guide 124 is mutually exclusive from discharging a seed
`with a directional component equal and opposite to the seeding direction.”
`Ex. 3004, 20.
`In its Preliminary Response, Patent Owner asserts that Sauder and
`Curtis would not have been combined because (1) they solve different
`problems with different solutions (Prelim. Resp. 7–9); and (2) combining
`Curtis and Sauder would improperly change the principle of operation of
`Sauder. Prelim. Resp. 23–28. Specifically, Patent Owner asserts that
`“Petitioners’ proposed modification would destroy Sauder’s essential
`purpose in ‘gently direct[ing]’ the seed to the bottom of the furrow to ensure
`the desired seed spacing accuracy.” Prelim. Resp. 25. The two above
`assertions have significant substantive overlap.
`Certainly both parties go into much further detail in the instant
`proceeding than the Examiner and Patent Owner do in the examination of
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`the ’617 reissue examination. In particular, Patent Owner makes more
`assertions here than in the ’617 reissue examination. See generally Prelim.
`Resp. 6–28. Most prominently, Patent Owner addresses extensively that
`there is a lack of motivation to combine Sauder and Koning. Prelim. Resp.
`10–22. We also note that the ’617 reissue examination is ongoing, and
`Patent Owner may make additional assertions.
`We find that this factor weighs moderately in favor of exercising our
`discretion.
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art
`Petitioner has failed to address at all how the Examiner erred in its
`evaluation of the asserted prior art. Given the current status of the ’617
`reissue examination, such a failure here is of limited relevance to our
`evaluation. Patent Owner asserts that Petitioner failed to disclose that the
`’502 patent is the subject of a pending reissue application. Prelim. Resp. 34.
`We agree that given the application in the ’617 reissue examination was
`filed on October 31, 2017, that is a fact that Petitioner should have known
`and made the Board aware. Other than that fact, however, the Examiner has
`maintained rejections of all pending claims in a manner that is in agreement
`certainly with Petitioner’s desired outcome, as well as largely in substance.
`Ex. 3001, 2.5 Under these circumstances, we are unclear as to how Petitioner
`could have pointed out how the Examiner erred.
`On these facts, we find that this factor is not relevant as to whether we
`should exercise discretion.
`
`
`5 Dependent claims 5, 12, and 18 have been cancelled. Ex. 3004, 2, 4, 5.
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`IPR2019-01047
`Patent 9,510,502 B2
`
`
`(f) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the prior art or
`arguments
`For largely the same reasons as set forth above for factor (e), because
`the Examiner has maintained rejections of all pending claims, there is
`nothing to reconsider at this time.
`Under these circumstances, we find that this factor is not relevant as
`to whether we should exercise discretion.
`2.
`Analysis of Other Arguments from Petitioner
`Petitioner attempts to distinguish the two Board decisions cited by
`Patent Owner in support, as follows:
`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).
`Reply 8.
`Overall, we determine that Guardian is persuasive and dispositive. In
`particular, we agree with the following analysis:
`Efficiency of proceedings before the Office would be frustrated
`were we to consider the challenges in the current Petition, which
`are substantially similar to the grounds on which the challenged
`claims currently stand rejected in the reissue proceeding. Further
`inefficiency would be introduced if the Board were to institute
`
`17
`
`
`
`IPR2019-01047
`Patent 9,510,502 B2
`
`
`an inter partes review and then subsequently consider the
`substantially similar rejections in the appeal of the Examiner’s
`decision in the reissue proceeding.
`. . .
`Finally, in balancing the interests of the parties to this
`proceeding, we acknowledge that Petitioner has a direct interest
`in pursuing the instant Petition; we also acknowledge the burden
`and expense to Patent Owner in having to defend another
`challenge of the patent-at-issue. Conducting an inter partes
`review of the ’282 patent concurrently with the late-stage reissue
`proceeding . . . would duplicate the efforts of Patent Owner, and
`could potentially
`result
`in
`inconsistencies between
`the
`proceedings. Further, considering that the reissue proceeding has
`resulted in numerous Office actions, responses, . . . we determine
`that the resources of the Patent Owner have been and continue to
`be expended in that proceeding.
`Guardian, Paper 13 at 11–13. As noted by Petitioner, the facts differ slightly
`here, in that the ’617 reissue examination is currently ongoing, while the
`reissue proceeding in Guardian was on appeal to the Board. We are
`persuaded, however, that there is minimal material difference between (a) a
`reissue proceeding that has had three separate Office Actions, the last of
`which is a Final Office Action and each of which includes a rejection based
`on the same primary reference in the Petition, and (b) a reissue proceeding
`that is at the Board. Both are at a “late stage.”
`Certainly we agree with Petitioner that the existence of a co-pending
`reissue proceeding by itself does not require denial of institution. We
`disagree, however, that the co-pending reissue proceeding needs to have
`reached the Board before denial is warranted. Also for Guardian, we agree
`with Petitioner that the presence of different grounds, presumably based on
`different art, is relevant. For the reasons set forth above, however, we
`disagree with Petitioner that the two grounds are materially different.
`
`18
`
`
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`IPR2019-01047
`Patent 9,510,502 B2
`
`
`We agree with Petitioner that Apex is less relevant for the reasons
`stated.
`
`III. CONCLUSION
`After weighing all of the above factors, and considering all applicable
`arguments, we are persuaded that we should exercise our discretion, under
`35 U.S.C. § 325(d) (which informs our authority to institute under 35 U.S.C.
`§ 314(a)), and deny institution because “the same or substantially the same
`prior art or arguments previously were presented to the Office” in the ’617
`reissue examination. Specifically, we find that instituting trial here, in light
`of the late stage of the ’617 reissue examination, would be an inefficient use
`of Office resources, because it would largely duplicate efforts already
`expended by the Examiner and Patent Owner.
`
`IV. ORDER
`After due consideration of the record before us, and for the foregoing
`reasons, it is ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`19
`
`
`
`IPR2019-01047
`Patent 9,510,502 B2
`
`For PETITIONER:
`
`Grant Rowan
`Mary Sooter
`R. Gregory Israelsen
`WILMER CUTLER PICKERING HALE and DORR, LLP
`grant.rowan@wilmerhale.com
`mindy.sooter@wilmerhale.com
`greg.israelsen@wilmerhale.com
`
`For PATENT OWNER:
`
`Jay I. Alexander
`Peter P. Chen
`COVINGTON & BURLING LLP
`jalexander@cov.com
`pchen@cov.com
`
`
`
`20
`
`
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