`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`
`MICRO MOTION, INC
`Petitioner
`v.
`ENDRESS + HAUSER FLOWTEC AG
`Patent Owner
`___________________
`
`Case No. PGR2018-00017
`U.S. Patent No. 9,593,973
`
`
`
`
`Before Thomas Green, Trial Paralegal
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`
`TABLE OF CONTENTS
`
`
`Pages
`
`I. Introduction ........................................................................................... 1
`
`II. Background .......................................................................................... 2
`
`III. U.S. Patent No. 9,593,973 is Not Eligible for Post Grant Review .... 2
`
`IV. Conclusion .......................................................................................... 8
`
`
`
`
`ii
`
`
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Inguran, LLC v. Premium Genetics (UK) LTD., 2015 WL 10860848 * 5,
`PGR2015-00017, (PTAB 2015) ............................................................ 7
`
`
`Statutes
`
`35 U.S.C. 371(c)(2)................................................................................... 3
`
`Rules
`
`37 C.F.R. 1.75 ....................................................................................... 4, 6
`
`Other Authorities
`
`MPEP 608.01(M) ...................................................................................... 4
`
`MPEP 608.01(V) ...................................................................................... 3
`
`
`
`
`
`iii
`
`
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`
`PATENT OWNER’S EXHIBIT LIST
`
`
`EXHIBIT DESCRIPTION
`2001
`U.S. Patent 9,593,973
`2002
`WO 2014/102037 A1
`(Publication of PCT/EP2013/074688)
`DE 10 2012 025 246
`Declaration of Michael Kirst
`
`2003
`2004
`
`
`
`iv
`
`
`
`I. Introduction
`
`
`Petitioner has challenged claims 1-56 of U.S. Patent No.
`9,593,973 (hereafter “the ‘973 patent”) (Ex. 2001) (also referred to as
`Exhibit A). Petitioner does not dispute that the ‘973 patent properly
`claims priority to international patent application PCT/EP2013/074688
`(Ex. 2002) (also referred to as Exhibit B), which claims priority to DE
`10 2012 025 246 (Ex. 2003) (also referred to as Exhibit C) (filed
`December 30, 2012) and DE 10 2013 102 711 (filed March 18, 2013),
`where the earliest possible effective filing date of the ‘973 patent is
`December 30, 2012, which is before the March 16, 2013 effective date
`of Section 3(n)(1) of the America Invents Act. The Petitioner, however,
`asserts that the foreign priority date of March 18, 2013 is an admission
`that written description of claimed subject matter is only found after the
`March 16, 2013 effective date and the ‘973 patent is subject to post-
`grant review. The Petitioner also asserts that at least one claim of the
`patent application corresponding to the ‘973 patent was not disclosed in
`compliance with the written description and enablement requirements,
`and therefore (without citing any authority), the claims are subject to
`post-grant review.
`
`The ‘973 patent, however, is not eligible for Post Grant Review
`because all of its claims have an effective filing date before March 16,
`2013. Specifically, all claims of the ‘973 patent are entitled to an
`effective filing date of foreign priority document DE 10 2012 025 246,
`which has a priority date of December 30, 2012. Because the ‘973
`patent is entitled to the priority date before March 16, 2013, it is not
`eligible for Post Grant Review and the petition must be denied.
`
`
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`
`II. Background
`The ‘973 patent is based on U.S. Application No. 14/758,323
`(hereafter “the ‘323 application”), which was filed on June 29, 2015 as a
`national stage entry of PCT application PCT/EP2013/074688. As
`initially filed, the ‘323 application was a copy of the German-language
`PCT application PCT/EP2013/074688. Hence, the ‘323 application as
`filed on June 29, 2015 contains the same German language specification
`and claims as PCT/EP2013/074688.
`
`III. U.S. Patent No. 9,593,973 is Not Eligible for Post Grant Review
`To establish PGR eligibility, Petitioner bears the burden of
`demonstrating by a preponderance of the evidence that the patent
`contains a claim not described or enabled by any pre-March 16, 2013,
`priority application. Petitioner fails to carry this burden at least because,
`after commencement of the national stage, all of the claims that were
`pending, or allowed in the ‘973 patent were properly described and
`enabled by DE 10 2012 025 246, and, therefore, the petition should be
`denied.
`
`PCT/EP2013/074688 claims priority to German application DE
`10 2012 025 246, as seen on the face of PCT/EP2013/074688 (Ex.
`2002). The specification and claims of PCT/EP2013/074688 are the
`same as the specification and claims of German application DE 10 2012
`025 246. (¶7, Declaration of Michael Kirst dated March 16, 2018) (Ex.
`2004). It follows, then, that the German language specification and
`claims of the ‘323 application as filed on June 29, 2015 are the same as
`the specification and claims of DE 10 2012 025 246.
`
`
`
`2
`
`
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`The ‘973 patent also claims priority to German application DE 10
`2012 025 246, as seen on the face of the ‘973 patent (Ex. 2001). And,
`because the German language specification and claims of the ‘323
`application as filed on June 29, 2015 are the same as the specification
`and claims of DE 10 2012 025 246, it cannot be disputed that full
`support for the specification and claims of the ‘323 application as filed
`on June 29, 2015 can be found in German application DE 10 2012 025
`246 - they are the same.
`
`Because the ‘323 application as filed on June 29, 2015 was a copy
`of the German language PCT/EP2013/074688, the Applicant of course
`was required to submit an English language translation of the
`specification and claims before commencement of the national stage.
`See 35 U.S.C. 371(c)(2). Moreover, the United States Patent and
`Trademark Office recognizes a literal translation of a foreign language
`application might not conform to idiomatic English or to United States
`practice, and accordingly recommends that a translation be accompanied
`by a preliminary amendment making formal corrections without
`introducing new matter. See MPEP 608.01(V) (“If the English
`translation does not conform to idiomatic English and United States
`practice, it should be accompanied by a preliminary amendment making
`the necessary changes”).
`
`The Applicant submitted an English language translation of the
`German language specification and claims on October 10, 2015, and
`concurrently filed a preliminary amendment making formal corrections
`in the specification and claims. The purpose of the preliminary
`amendment was expressly stated as follows:
`
`
`
`3
`
`
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`
`This amendment is made to better conform the
`specification and the claims to U.S. format. Applicant
`reserves all rights to the original claimed subject matter.
`None of the amendments are intended to narrow the scope
`of any of the original claims.
`
`Consistent with this purpose, Applicant’s preliminary amendment
`made grammatical, idiomatic or formal revisions in the specification.
`And, the preliminary amendment eliminated multiple dependencies from
`the claims, both for fee calculation purposes and to eliminate claim
`dependencies wherein multiple dependent claims depended from other
`multiple dependent claims, a practice prohibited in United States
`practice. See MPEP 608.01(M) (“A multiple dependent claim which
`depends from another multiple dependent claim should be objected to”);
`37 C.F.R. 1.75 (“A multiple dependent claim shall not serve as a basis
`for any other multiple dependent claim”). In fact, the preliminary
`amendment cancelled all of the as-filed claims 1-37 literally translated
`from the German language PCT application, replacing them ab initio
`with new claims wherein the multiple dependencies were removed.
`
`The claims presented in the preliminary amendment are the first
`and only claims in the application subject to examination, which
`occurred after commencement after the national stage, prior to the
`mailing of the Notice of Allowance on August 12, 2016, in the ‘323
`application. The Petitioner has not established that any of these claims
`are not supported or enabled by the German priority application DE 10
`2012 025 246, and the Petitioner has not established that any of these
`claims are not entitled to the December 30, 2012, pre-AIA, priority date.
`
`
`
`4
`
`
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`The Petitioner presents two arguments alleging that “at least one
`of the challenged claims have an effective filing date after March 16,
`2013.” First, the Petitioner argues that because, in addition to the
`priority claim to DE 10 2012 025 246, the ‘323 application also claims
`priority to foreign priority document DE 10 2013 102 711, which has a
`priority date of March 18, 2013, “the foreign priority date of March 18,
`2013 is an admission that written description of claimed subject matter is
`found only after the Match [sic] 16, 2013 effective date of the first
`inventor to file provisions of the AIA.” Second, the Petitioner argues
`that “the foreign priority document DE 10 2012 025 246 does not enable
`claim 29 of the as-filed claims.”
`
`As to Petitioner’s first argument, the Patent Owner submits that
`the priority claim to foreign priority document DE 10 2013 102 711
`constitutes no such admission or commentary of any sort as to the extent
`to which written description of claimed subject matter is, or is not, found
`in the foreign priority document DE 10 2012 025 246. Moreover, and
`tellingly, the Petitioner has provided neither any citation to any authority
`to support this proposition, nor as much as a single example of any
`written description of claimed subject matter that is found in the priority
`document DE 10 2013 102 711, but lacking from the priority document
`DE 10 2012 025 246. And, as discussed supra, because the German
`language specification and claims of the ‘323 application as filed on
`June 29, 2015 are the same as the specification and claims of DE 10
`2012 025 246, it cannot be disputed that full textual support for the
`specification and claims of the ‘323 application as filed on June 29, 2015
`can be found in German application DE 10 2012 025 246. They are the
`same.
`
`
`
`5
`
`
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`Turning to Petitioner’s second argument, the Patent Owner
`submits that the Petitioner’s enablement analysis of the as-filed claims
`1-37 is misplaced. That is, the Patent Owner submits that an enablement
`analysis of a claim that is prohibited by 37 C.F.R. 1.75 as being of
`improper format, and has been cancelled by preliminary amendment and
`replaced by a claim that is acceptable under U.S. patent practice and
`rules, is improper and inappropriate.
`
`Petitioner identifies claim 29 as a multiple dependent claim. That
`is, Petitioner asserts that “as can be seen claim 29 depends from each of
`preceding claims, which includes claim 17.” Petitioner further asserts
`that, in brief summary, claim 17 includes subject matter that is mutually
`exclusive to that of claim 29, and because therefore claim 29 (by virtue
`of its multiple dependency) includes the mutually exclusive subject
`matter of claim 17, it cannot be enabled.
`
`However, the Patent Owner submits that as a multiple dependent
`claim, claim 29 is an improper and invalid format expressly prohibited
`by U.S. patent rules. Considering claim 29 to be a multiple dependent
`claim (“29. Measuring transducer as claimed in one of the preceding
`claims”), and claim 17 among “the preceding claims” also to be a
`multiple dependent claim (“17. Measuring transducer as claimed in one
`of the preceding claims”), claim 29 is a multiple dependent claim that
`depends from another multiple dependent claim, and is therefore
`objectionable under 37 C.F.R. 1.75 as being of improper format. In
`short, Petitioner’s argument that claim 29 is not enabled arises only as an
`anomaly from a claim drafting practice that, while appropriate in some
`foreign countries, is not allowed in U.S. practice, and not as a result of
`
`
`
`6
`
`
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`any claim actually presented for, or considered during, examination after
`commencement of the national stage.
`
`In Inguran, LLC v. Premium Genetics (UK) LTD, the PTAB noted
`that “The inquiry into whether a patent issued from a transition
`application is subject to the AIA FITF statutory provisions and, thus,
`available for post-grant review turns on whether the patent contains, or
`the corresponding application contained at any time, a claim that has an
`effective filing date on or after March 16, 2013. See AIA § 3(n)(1); 35
`U.S.C. § 100(i).” See Inguran, LLC v. Premium Genetics (UK) LTD.,
`2015 WL 10860848 * 5, PGR2015-00017, (PTAB 2015). But, Inguran
`did not consider this issue in the context of claims that are objectionable
`on their face as being of an improper and prohibited format, let alone in
`the context of such improper claims that are expressly revised prior to
`examination by preliminary amendment. That is, Inguran did not
`consider claims in a national stage entry of an international application
`of a foreign language origin.
`
`The Patent Owner submits that in a case such as the present,
`wherein a national stage application is based on a foreign language
`application including claims of a format prohibited by U.S. practice, the
`claims as amended by preliminary amendment (expressly to comply
`with U.S. practice and rules) should be considered as the original claims,
`and not the non-compliant claims found in a literal translation of the
`foreign application.
`
`Each one of the claims presented in the Applicant’s preliminary
`amendment, filed concurrently with the English language translation and
`for the express purpose of presenting claims in proper form for U.S.
`
`
`
`7
`
`
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`examination and to comply with U.S. practice and rules, is supported
`and enabled by the German priority document DE 10 2012 025 246, and
`the ‘973 patent is entitled to an effective filing date of December 30,
`2012. Because the ‘973 patent is entitled to the priority date before
`March 16, 2013, it is not eligible for Post Grant Review and the petition
`must be denied.
`
`IV. Conclusion
`
`For these reasons, Petitioner has not established eligibility for
`
`PGR. The Board should therefore deny the Petition and not institute
`post-grant review.
`
`
`
`BACON & THOMAS, PLLC
`625 Slaters Lane, Fourth Floor
`Alexandria, Virginia 22314-1176
`Phone: (703) 683-0500
`
`Date: March 19, 2018
`
`
`Respectfully submitted,
`
`
`
`
`JOHN R. SCHAEFER
`Attorney for the Patent Owner
`Registration No. 47,921
`
`
`
`
`
`8
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`
`
`Sir:
`
`I, John R. Schaefer, hereby certifies that a copy of the Patent
`Owner’s Preliminary Response contains 2,027 words, excluding those
`portions identified in 37 C.F.R. § 42.24(a), as measured by the word-
`processing system used to prepare this paper.
`
`
`
`BACON & THOMAS, PLLC
`625 Slaters Lane, Fourth Floor
`Alexandria, Virginia 22314-1176
`Phone: (703) 683-0500
`Email: Jschaefer@baconthomas.com
`
`Date: March 19, 2018
`
`
`Respectfully submitted,
`
`
`
`
`JOHN R. SCHAEFER
`Attorney for the Patent Owner
`Registration No. 47,921
`
`
`
`
`
`9
`
`
`
`CERTIFICATION OF SERVICE
`
`U.S. Patent No. 9,593,973
`PGR2018-00017
`
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`I, John R. Schaefer, hereby certifies that a copy of the Patent
`Owner’s Preliminary Response and Exhibits A, B, C, and D has been
`served by Priority Mail Express or equivalent on March 19, 2018, to:
`
`OLLILA LAW GROUP, LLC
`2569 Park Lane, Suite 202
`Lafayette, Colorado 80026
`
`the attorney/agent designated as acting on behalf of the petitioner.
`
`
`BACON & THOMAS, PLLC
`625 Slaters Lane, Fourth Floor
`Alexandria, Virginia 22314-1176
`Phone: (703) 683-0500
`
`Date: March 19, 2018
`
`
`Respectfully submitted,
`
`
`
`
`JOHN R. SCHAEFER
`Attorney for the Patent Owner
`Registration No. 47,921
`
`
`
`
`
`10
`
`
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