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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAFE HAVEN WILDLIFE REMOVAL AND
`PROPERTY MANAGEMENT EXPERTS LLC,
`
`Petitioner
`
`v.
`
`MERIDIAN WILDLIFE SERVICES LLC,
`
`Patent Owner
`____________
`
`
`Case IPR2023-01340
`Patent No. 9,943,073
`
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`IPR2023-01340
`U.S. Patent No. 9,943,073
`
`
`Exhibit
`Description
`No.
`1001 U.S. Patent No. 9,943,073 (“the ’073 Patent”).
`1002 File History for U.S. Patent No. 9,943,073.
`1003 Bird Barrier, Mist Net Kit Assembly and Use, YouTube (Aug. 29, 2014),
`https://www.youtube.com/watch?v=yHtYi-vUFXs.
`1004 Transcript and Screenshots of Bird Barrier, Mist Net Kit Assembly
`and Use, YouTube (Aug. 29, 2014),
`https://www.youtube.com/watch?v=yHtYi-vUFXs.
`1005 @BirdBarrier, Twitter (Aug. 29, 2014, 2:48 PM),
`https://twitter.com/BirdBarrier/status/505426711324803072.
`1006 @BirdBarrier, Twitter (Sept. 2, 2014, 12:22 PM),
`https://twitter.com/BirdBarrier/status/506851686615244801.
`1007 Declaration of Karen Angell (August 9, 2023).
`1008 Affidavit of Nathaniel E. Frank-White in IPR2022-01253 (dated June 30,
`2022).
`1009 Thomas H. Kunz et al., Ecological and Behavioral Methods for the
`Study of Bats 1-29 (1st ed. 1990).
`1010 Gene Albanese et al., An Inexpensive Elevated Mist Net Apparatus, 24 N.
`Am. Bird Bander 129-134 (1999).
`1011 William G. Sheldon, A Method of Mist Netting Woodcocks in Summer, 31
`Bird Banding 130-135 (1960).
`1012 Meridian’s Petition for Inter Partes Review of U.S. Patent No. 10,251,374 in
`IPR2022-01253.
`1013 Declaration of Dr. Michael J. Chamberlain in IPR2022-01253.
`1014 Decision Denying Institution of Inter Partes Review in IPR2022-01253.
`1015 Safe Haven Letter Sent to Meridian on July 6, 2023.
`1016 Safe Haven Charts Sent to Meridian on July 6, 2023.
`1017 Safe Haven’s Patent Owner Preliminary Response in IPR2022-01253.
`1018 U.S. Patent No. 117,729.
`1019 Declaration of John F. Morrow, Jr. Pursuant to 37 C.F.R § 1.68 for Pro Hac
`Vice Admission under 37 C.F.R. § 42.10.
`1020 Email to the Parties from the Board, dated December 7, 2023.
`1021 Determine, DICTIONARY.COM, available at
`https://www.dictionary.com/browse/determine (last accessed Dec. 14, 2023).
`1022 And the like, CAMBRIDGE DICTIONARY, available at
`https://dictionary.cambridge.org/us/dictionary/english/and-the-like (last
`accessed Dec. 14, 2023).
`
`
`
`
`
`
`
`IPR2023-01340
`U.S. Patent No. 9,943,073
`
`Exhibit
`No.
`1023
`
`Description
`Seek by iNaturalist, INATURALIST (June 30, 2023),
`https://www.inaturalist.org/pages/seek_app.
`
`
`
`IPR2023-01340
`U.S. Patent No. 9,943,073
`
`Pursuant to the Board’s authorization (Ex. 1020), Petitioner Safe Haven
`
`timely submits this reply to Patent Owner’s Preliminary Response (Paper 9).
`
`I.
`
`Claim Construction
`Patent Owner asserts that the Petition “fails to sufficiently identify how the
`
`challenged claims are to be construed as required by 37 C.F.R. § 42.104(b)(3).”
`
`Paper 9 at 13-17. The Petition, however, adhered to the Consolidated Trial Practice
`
`Guide (pages 44-45) by stating that Petitioner “does not propose any constructions
`
`for this proceeding.” See Patent Trial and Appeal Board Consolidated Trial Practice
`
`Guide, 44-45 (Nov. 2019) (“On the other hand, a petitioner may include a statement
`
`that the claim terms require no express construction . . . [t]he petitioner may respond
`
`to any such new claim construction issues raised by the patent owner.”).
`
`Patent Owner nevertheless argues that this rule does not allow a petitioner to
`
`“ignore its burden to identify how the challenged claims are to be construed and
`
`unilaterally defer its claim construction arguments and evidence to a time of its
`
`choosing.” Paper 9 at 15. Petitioner did no such thing, but instead accurately noted
`
`that the terms are clear on their face and require no express constructions. Now that
`
`Patent Owner has advocated for specific constructions, the Board has given
`
`Petitioner permission to respond through this reply, which Petitioner does below.
`
`Patent Owner’s reliance on Volkswagen Grp. of Am., Inc. v. Michigan Motor Techs.,
`
`LLC, IPR2020-00229, Paper 13 at 10 (P.T.A.B. July 6, 2020), is thus misplaced. Id.
`
`1
`
`
`
`IPR2023-01340
`U.S. Patent No. 9,943,073
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`(denying petition after noting that Petitioner was afforded an opportunity to respond
`
`to Patent Owner’s constructions in its Reply but failed to do so).
`
`The preamble
`A.
`Petitioner does not dispute that the claimed method pertains to capturing
`
`vertebrates within large buildings, but that fact does not salvage novelty. Bird Barrier
`
`Video teaches an analogous method for capturing vertebrates within large buildings.
`
`“determining the species of flying vertebrate” (Limitation 1.1)
`B.
`Patent Owner next argues that the claims are novel because they purportedly
`
`require using “an expert, a guide book or the like” to “determine the species” of the
`
`vertebrate to be captured. The claims themselves contain no such requirement, and
`
`instead merely require “determining the species of flying vertebrate.” See, e.g.,
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir 2005) (“As the claims define
`
`the invention, the claim language is the most important source for a Court consider
`
`in construing the claim terms.”). Regardless, “determining” is commonly understood
`
`to mean “ascertaining” or even more commonly “figuring out.” See, e.g., Ex. 1021
`
`(defining “determine” as “to conclude or ascertain, as after reasoning, observation,
`
`etc.”).
`
`Indeed, the specification’s definition of determining includes “or the like,”
`
`making it clear that any number of resources or means can be used to determine the
`
`species. See, e.g., Ex. 1022 (defining “and the like” to mean “and other similar
`
`2
`
`
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`IPR2023-01340
`U.S. Patent No. 9,943,073
`
`things”). For instance, a child familiar with the unique bright red hue of male
`
`cardinals would not need to consult either an expert or a guidebook for purposes of
`
`“determining the species of flying vertebrate.” Similarly, a novice could make such
`
`a determination by photographing the vertebrate and then using image recognition
`
`technology. See, e.g., Ex. 1023. One could imagine any number of additional ways
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`to make such a determination.
`
`Consequently, Petitioner maintains that the term requires no construction
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`other than plain and ordinary meaning, which entails “ascertaining” or “figuring out”
`
`the species to be captured, which can be done through any number of means or
`
`resources. As detailed in the Petition, numerous prior art references teach doing so.
`
`Paper 1 at 24-28.
`
`C.
`
`“positioning the netting for capture based on the species of flying
`vertebrate and their flight characteristics” (Limitation 1.4)
`Patent Owner asserts that this term means “(i) placing the bird netting in an
`
`upper position wherein the identified flying vertebrate can fly into the netting; and
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`(ii) positioning the netting based on the identified species of flying vertebrate and
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`how that particular species of flying vertebrate flies.” Paper 9 at 23-24. Though this
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`express construction is unnecessary, Petitioner fails to see how this definition varies
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`in any material respect from plain and ordinary meaning. See, e.g., Summit 6, LLC
`
`v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015). The claims
`
`3
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`
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`IPR2023-01340
`U.S. Patent No. 9,943,073
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`require placing the net at a height and location based on the species of vertebrate and
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`its flight characteristics. As detailed in the Petition, numerous prior art references
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`teach doing so. Paper 1 at 24-28.
`
`II.
`
`Declaration of Dr. Michael J. Chamberlain (Ex. 1013)
`Patent Owner attempts to hide from the prior testimony of its own expert, Dr.
`
`Chamberlain, through two arguments. First, Patent Owner argues that “Safe Haven
`
`cannot comply with 37 C.F.R. §§ 42.51-53” because Safe Haven cannot make Dr.
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`Chamberlain available for cross-examination. 37 C.F.R. § 42.51(b)(1)(ii) requires
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`“[c]ross examination of affidavit testimony prepared for the proceeding” in
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`question. Id. It therefore does not control here because Dr. Chamberlain provided
`
`his declaration for Patent Owner in a different proceeding (IPR2022-01253).
`
`From a more practical standpoint, the rule was designed to ensure that a party
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`can cross-examine declarants who provide testimony for their opponents. See Patent
`
`Trial and Appeal Board Consolidated Trial Practice Guide, 23 (Nov. 2019). Such is
`
`not the case here. Dr. Chamberlain provided his declaration for Patent Owner and
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`remains under contract with Patent Owner. See Ex. 1013 at 7; Ex. 2001 at ¶ 4. Patent
`
`Owner compensated Dr. Chamberlain for that declaration and surely could have
`
`obtained additional testimony from him for this proceeding if it desired.
`
`Patent Owner next argues that Dr. Chamberlain’s declaration is inadmissible
`
`hearsay. But pursuant to Fed. R. Evid. 801(d)(2)(B), a statement that is offered
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`4
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`IPR2023-01340
`U.S. Patent No. 9,943,073
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`against an opposing party and is one the party manifested that it adopted or believed
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`to be true is non-hearsay. Id. Applied here, Patent Owner manifested that it adopted
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`or believed Dr. Chamberlain’s declaration to be true by filing it with the USPTO in
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`three prior proceedings. It is thus non-hearsay and admissible. See Motionpoint
`
`Corp., Petitioner, v. Transperfect Glob., Inc., CBM2014-00060, Paper 41 at 23
`
`(P.T.A.B. July 15, 2015) (finding prior declaration non-hearsay under 801(d)(2)(B)
`
`because it “was submitted by, and on behalf of, Patent Owner to the Patent Office,
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`thus evidencing that Patent Owner manifested a belief that the statements contained
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`therein were true.”); see also Pernix Ireland Pain Dac v. Alvogen Malta Operations
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`Ltd., 316 F. Supp. 3d 816, 823-26 (D. Del. 2018) (citing cases).
`
`At base, Patent Owner submitted Dr. Chamberlain’s prior sworn testimony to
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`the Board to advocate the very positions it now disputes. In response, rather than
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`submit additional testimony from Dr. Chamberlain seeking to clarify or otherwise
`
`explain why his prior testimony does not support unpatentability, Patent Owner
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`instead obtained a declaration from him in which he refuses to provide any additional
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`testimony even though he remains under contract. See Ex. 2001, at ¶ 4. Although
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`Dr. Chamberlain’s prior testimony is not necessary to find the claims unpatentable,
`
`Patent Owner’s attempted shielding of him speak volumes.
`
`5
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`
`
`Dated: December 14, 2023
`
`IPR2023-01340
`U.S. Patent No. 9,943,073
`
`Respectfully submitted,
`
`/Preston H. Heard/
`Reg. No. 64,675
`
`Lead Counsel for Petitioner
`
`
`
`IPR2023-01340
`U.S. Patent No. 9,943,073
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), I hereby certify that a true and correct copy
`
`of the foregoing Reply was served on Patent Owner via electronic mail at the
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`following:
`
`
`
`ckelly@mcciplaw.com
`wthomas@mcciplaw.com
`shri.abhyankar@alston.com
`
`Dated: December 14, 2023
`
` /Preston H. Heard/
`Preston H. Heard
`Registration No. 64,675
`
`
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