Paper 10
`Trials@uspto.gov
`Entered: February 2, 2023
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SIEMENS GAMESA RENEWABLE ENERGY, INC.,
`Petitioner,
`v.
`GENERAL ELECTRIC COMPANY,
`Patent Owner.
`
`IPR2022-01279; Patent 7,629,705 B2
`IPR2022-01479; Patent 6,921,985 B2
`
`
`
`
`
`
`
`
`
`Before BARBARA A. PARVIS, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`Granting In Part Petitioner’s Request for Additional Briefing
`37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: February 2, 2023
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SIEMENS GAMESA RENEWABLE ENERGY, INC.,
`Petitioner,
`v.
`GENERAL ELECTRIC COMPANY,
`Patent Owner.
`
`IPR2022-01279; Patent 7,629,705 B2
`IPR2022-01479; Patent 6,921,985 B2
`
`
`
`
`
`
`
`
`
`Before BARBARA A. PARVIS, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`Granting In Part Petitioner’s Request for Additional Briefing
`37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`
`
`
`IPR2022-01279; Patent 7,629,705 B2
`IPR2022-01479; Patent 6,921,985 B2
`
`
`BACKGROUND
`On January 27, 2023, Petitioner’s counsel requested authorization to
`file a reply to the Patent Owner Preliminary Response in each of the above
`identified proceedings. Specifically, in IPR2022-01479, Petitioner requested
`permission to “to reply to [Patent Owner’s] General Plastic[1] analysis as
`presented in the Preliminary Response.” IPR2022-01479, Ex. 3001. In
`IPR2022-01279, Petitioner requested permission to reply to Patent Owner’s
`“analysis of 35 U.S.C. § 325(d),” “General Plastic analysis,” and
`characterizations of the Challenged Claims as presented in the Preliminary
`Response.” IPR2022-01279, Ex. 3001. Patent Owner opposed the requests.
`A telephone conference to discuss Petitioner’s requests was held on
`February 1, 2023, among counsel for Petitioner, counsel for Patent Owner,
`and Judges Parvis, Abraham, and Howard.
`Petitioner argues that the General Plastic argument was not
`foreseeable because this was Petitioner’s first petition against each of the
`challenged patents. 2 Petitioner further argues that based on the differences
`between Hudson—relied on in the Petition—and Erdman—which was relied
`on in earlier proceedings—it could not have reasonably expected an
`argument based on 35 U.S.C. § 325(d). Petitioner further argues that in light
`of the claim construction in a different proceeding, Petitioner could not have
`expected Patent Owner’s mischaracterization of the invention.
`
`
`1 Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
`Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i).
`2 This argument applies to both proceedings. The other arguments only
`apply to IPR2022-01279.
`
`2
`
`
`
`IPR2022-01279; Patent 7,629,705 B2
`IPR2022-01479; Patent 6,921,985 B2
`
`
`Patent Owner argues that because General Plastic was designated
`precedential more than five years ago, Valve3 was designated precedential
`more than three years ago, and the Consolidated Trial Practice Guide4
`(“CTPG”) was issued more than three years ago, it was reasonably
`foreseeable that Patent Owner would make a General Plastic argument for
`discretionary denial. Patent Owner further argues that, based on Petitioner’s
`discussion of the prior proceedings, it was reasonably foreseeable that Patent
`Owner would make an argument based on section 325(d). Patent Owner
`further argues that a mere disagreement over the description of the claims or
`prior art is not good cause.
`
`ANALYSIS
`
`A. Legal Standard
`A petitioner “seek[ing] leave to file a reply to the preliminary
`response . . . must make a showing of good cause.” 37 C.F.R. § 42.108(c)
`(2022). “However, the Board does not expect that such a reply will be
`granted in many cases due to the short time period the Board has to reach a
`decision on institution.” CTPG 52.
`When determining whether Petitioner has shown good cause for a
`reply to a preliminary response, the Board may assess whether the argument
`at issue in the Preliminary Response was reasonably foreseeable. See, e.g.,
`Illumina, Inc. v. The Trs. of Columbia Univ. in the City of New York,
`IPR2018-00797, Paper 17 at 3 (PTAB Aug. 7, 2018) (Order) (stating that
`
`
`3 Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00064, -00065,
`-00085, Paper 10 (PTAB May 1, 2019) (Precedential).
`4 Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(November 2019), available at https://www.uspto.gov/TrialPractice
`GuideConsolidated.
`
`3
`
`
`
`IPR2022-01279; Patent 7,629,705 B2
`IPR2022-01479; Patent 6,921,985 B2
`
`“the Board may authorize a reply to afford a petitioner the opportunity to
`address evidence or arguments that it could not have reasonably foreseen”);
`Sandoz Inc. v. Abbvie Biotechnology Ltd., IPR2017-01824, Paper 13 at 3
`(PTAB Dec. 15, 2017) (Order) (same).
`B. General Plastic
`In October 2017, the Director designated Section II.B.4.i. of General
`Plastic precedential. In the precedential portion of that decision, the Board
`held that although there is “no per se rule precluding the filing of follow-on
`petitions after the Board’s denial of one or more first-filed petitions on the
`same patent,” “[t]he Board consistently has considered a number of factors
`in determining whether to exercise that discretion.” General Plastic, Paper
`19, 15. The decision then identified seven non-exhaustive factors that the
`Board considers when deciding whether to discretionarily deny institution to
`a follow-on petition. Id. at 16. General Plastic can be found on the
`USPTO’s website5 and is discussed in the Consolidated Trial Practice
`Guide. 6 See CTPG 56–58.
`Since that time, patent owners have routinely argued that the Board
`should exercise its discretion and deny institution based on General Plastic
`whenever a petition is not the first petition to challenge the patent, regardless
`of the identity of the two petitioners. See, e.g., PNC Bank, N.A. v. United
`Services Auto. Ass’n, IPR2021-01073, Paper 20 at 14–22 (PTAB Jan. 24,
`2022) (Institution Decision) (Public Version Paper 25). Because the
`
`
`5 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/precedential-informative-decisions
`6 It is also discussed in the August 2018 Trial Practice Guide Update.
`Available at https://www.uspto.gov/sites/default/files/documents/
`2018_Revised_Trial_Practice_Guide.pdf
`
`4
`
`
`
`IPR2022-01279; Patent 7,629,705 B2
`IPR2022-01479; Patent 6,921,985 B2
`
`General Plastic argument was reasonably foreseeable, Petitioner has not
`shown sufficient good cause for a reply.
`C. 35 U.S.C. § 325(d)
`35 U.S.C. § 325(d) provides that “[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.”
`Patent Owner’s 325(d) argument is premised on its argument that
`Hudson is “substantially the same prior art” as Erdman. However, because
`there is no facial similarity between Hudson and Erdman—for example, they
`do not involve the same authors/inventors, same company, same drawings,
`or same product—it was not reasonably foreseeable that Patent Owner
`would make its section 325(d) argument. Accordingly, Petitioner has shown
`sufficient good cause for a reply brief directed to that issue.
`D. Characterization of Claimed Invention
`Parties routinely disagree about the scope of the claims or the
`teachings of the prior art. But a mere disagreement regarding the
`characterization of the claimed invention is not sufficient good cause. We
`are able to review the claims on our own and determine, based on the
`preliminary record, whether Patent Owner’s description of the invention is
`consistent with the words of the claim. Accordingly, Petitioner has not
`shown good cause for a reply brief on this topic.
`
`5
`
`
`
`IPR2022-01279; Patent 7,629,705 B2
`IPR2022-01479; Patent 6,921,985 B2
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that that Petitioner’s request for leave to file a reply to
`Patent Owner’s Preliminary Response in IPR2022-01479 is denied;
`FURTHER ORDERED that Petitioner’s request for leave to file a
`reply to Patent Owner’s Preliminary Response in IPR2022-01279 is granted
`in part with respect to section 325(d) but otherwise denied;
`FURTHER ORDERED that Petitioner is authorized to file a four-page
`reply to Patent Owner’s Preliminary Response in IPR2022-01279 regarding
`Hudson and section 325(d) on or before Wednesday, February 8, 2023; and
`FURTHER ORDERED that Patent Owner is authorized to file a four-
`page sur-reply that responds to Petitioner’s reply in IPR2022-01279 on or
`before Wednesday February 15, 2023.
`
`
`6
`
`
`
`IPR2022-01279; Patent 7,629,705 B2
`IPR2022-01479; Patent 6,921,985 B2
`
`FOR PETITIONER:
`Robert Hails
`T Cy Walker
`Theresa Weisenberger
`BAKER HOSTETLER LLP
`rhails@bakerlaw.com
`cwalker@bakerlaw.com
`tweisenberger@bakerlaw.com
`
`FOR PATENT OWNER:
`Monica Grewal
`Scott Bertulli
`Trishan Esram
`WILMER CUTLER PICKERING HALE AND DORR, LLP
`monica.grewal@wilmerhale.com
`scott.bertulli@wilmerhale.com
`trishan.esram@wilmerhale.com
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
