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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________________________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________________________________
`
`TRIPLE PLUS LTD.,
`
`Petitioner
`
`v.
`
`MORDECHAI BEN OLD,
`
`Patent Owner
`
`_________________________________________________
`
`U.S. Patent No. 9,671,031
`
`Case No.: PGR2018-00038
`_________________________________________________
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`PETITIONER’S REPLY
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`
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`
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`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS .......................................................................................... ii
`LIST OF EXHIBITS ................................................................................................ iii
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`PATENT OWNER HAS REFUSED TO PARTICIPATE IN THESE
`PROCEEDINGS SINCE APPROXIMATELY SEPTMEBER 2018 ............. 2
`III. The Triple+ NWL Is Prior Art Under AIA § 102(a)(1) Because It Was
`In Public Use, On Sale, Or Otherwise Available To The Public More
`Than One Year Before The Effective Filing Date Of The ’031 Patent ........... 4
`A.
`Sale of 4,000 Units of Triple+ NWL in September 2014 ......................... 6
`B.
`Public Installations of the Triple+ NWL on or about August 4,
`2014 ........................................................................................................... 6
`Offers for Sale of Triple+ NWL to Insurance Company
`Customers on or about August 4, 2014 .................................................. 10
`Public Use on YouTube Videos published in March, April and
`October 2018 ........................................................................................... 14
`The Triple+ NWL was “otherwise available to the public” more
`than one year before the critical date ...................................................... 17
`IV. CONCLUSION .............................................................................................. 18
`CERTIFICATE OF COMPLIANCE ....................................................................... 19
`CERTIFICATE OF SERVICE ON PATENT OWNER ......................................... 20
`
`
`C.
`
`D.
`
`E.
`
`ii
`
`
`
`LIST OF EXHIBITS
`
`EX. 1001
`EX. 1002
`EX. 1003
`EX. 1004
`EX. 1005
`EX. 1006
`EX. 1007
`EX. 1008
`EX. 1009
`EX. 1010
`
`EX. 1011
`
`EX. 1012
`
`EX. 1013
`EX. 1014
`EX. 1015
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`EX. 1016
`
`EX. 1017
`EX. 1018
`EX. 1019
`EX. 1020
`
` U.S. Patent No. 9,671,031
` Patent File Wrapper for U.S. Patent No. 9,671,031
` Declaration of Michael C. Johnson PhD, PE
` Curriculum Vita of Michael C. Johnson
` Photographs of Triple+ nleak NWL 3/4” Automatic Electronic Valve
` NWL Assembly Exploded Drawing
` NWL Assembly Guide
` NWL Bill of Materials
` NWL Miscellaneous Parts Drawings
`
` תילגנא םימ -
` תעינמל
`
`
`
`תכרעמ YouTube,
`https://www.youtube.com/watch?v=IsP9qu5dXCk, March 14, 2014 (last
`visited Jan 21, 2018) (original in Hebrew with English overdub)
`
`
` זרב םימ זגו
` תריגסו
`
` תחיתפל
`
` תיבל
`
` קסעלו
`
`
`
` הקעזא
`
`תכרעמ YouTube,
`https://www.youtube.com/watch?v=jMLSKIZ1G4o, April 18, 2014 (last
`visited Jan 21, 2018) (original in Hebrew)
` Leak Lock - Water leak prevention system YouTube,
`https://www.youtube.com/watch?v=--ULMOo78sI, October 8, 2014 (last
`visited Jan 21, 2018)
` Pilot Installation emails and list, August 2014
` Distribution Agreement, September 8, 2014
` Sales Order from Go Leakless to Triple Plus for 4000 Units of NWL-34-0
`valves, September 8, 2014
` Invoice Summaries, Shipment Confirmations and Delivery Notes,
`September–October 2014
` Insurance Company Disclosures, August 2014
` Declaration of Triple Plus
` U.S. Patent No. 6,945,274
` Declaration of Kyle B. Fleming, Esq.
`
`iii
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s failure to file a Response or to appear for cross-examination
`
`cannot derail these proceedings, and his lack of cooperation or participation cannot
`
`save his patent. The sole claim of the ’031 patent is indisputably obvious in view
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`of Petitioner’s wireless, electronical shutoff valve for a main water line, the
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`Triple+ nleak NWLTM Integrated Shutoff Unit, NWL-34-0 (3/4 inch valve)
`
`(“Triple+ NWL”).
`
`First, the Triple+ NWL is prior art to the ’031 patent under AIA 35 U.S.C §
`
`102(a)(1). The evidence clearly shows that the Triple+ NWL valve product was “in
`
`public use, on sale, or otherwise available to the public” more than one year before
`
`the effective filing date in November 2014. Specifically, the Triple+ NWL was: 1)
`
`publicly used and disclosed at least as early as March 2014, 2) on sale and in
`
`public use at least as early as August 2014, and 3) sold as early as September 2014.
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`These public uses, sales and other public disclosures are fully supported in the
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`Petition by the testimony of Petitioner’s Chairman, Michael Attali, and
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`corroborating evidence. See, e.g., Exs. 1010-1018.
`
`Second, as the Board recognized in its Decision1 to institute, Triple+ NWL
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`renders obvious the sole claim of the ’031 patent. Indeed, it is clear that Patent
`
`Owner based the ’031 patent on the Triple+ NWL—copying not only the
`
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`1 Institution of Post-Grant Review, Paper 8 (“Decision”).
`
`1
`
`
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`numerous physical components and arrangements from Triple+ NWL for his
`
`patent, but even using the Triple+ NWL product drawings as figures in the patent.
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`The sole difference between the patent and product—substituting one well-known
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`quarter-turn, rotary valve (butterfly) for another (ball)—is the epitome of a simple,
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`obvious design choice to one of skill in the art. This is supported by the testimony
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`of Petitioner’s expert, Dr. Johnson, and corroborated with an exemplary prior art
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`patent reference in which ball and butterfly valves are interchangeable for use in
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`water line valves. See, e.g., Exs. 1003 and 1019.
`
`II.
`
`PATENT OWNER HAS REFUSED TO PARTICIPATE IN THESE
`PROCEEDINGS SINCE APPROXIMATELY SEPTMEBER 2018
`
`Patent Owner appeared in these proceedings and filed a Preliminary
`
`Response, in the form of a declaration.2 The Preliminary Response did not dispute
`
`that the ’031 patent was based on the Triple+ NWL, that substitution of a butterfly
`
`and ball valve was obvious to one of skill in the art at the time, or that claim 1 was
`
`obvious in view of the Triple+ NWL. Instead, the Preliminary Response raised
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`assorted arguments as to why the various prior displays, usages, and sales of the
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`Triple+ NWL were not “public” under § 102(a).
`
`However, shortly after institution Patent Owner ceased all communications
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`and has refused to participate in these proceedings—he did not submit a Response,
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`
`2 Paper 7.
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`2
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`
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`timely or otherwise, and also failed to appear for his noticed deposition.3 Patent
`
`Owner has waived any arguments for patentability by failing to file a Response.4 In
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`addition, Patent Owner’s declaration/Preliminary Response should be disregarded
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`because he failed to appear for his deposition or otherwise submit to Petitioner’s
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`cross-examination.5
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`In addition, the arguments advanced in Patent Owner’s Preliminary
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`Response rest on the faulty premise that Patent Owner was the “inventor” of the
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`Triple+ NWL. This is simply incorrect and contrary to the record evidence. While
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`Patent Owner might be the presumptive “inventor” vis-à-vis the ’031 patent,
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`Petitioner developed the Triple+ NWL and is the “inventor” of that prior art. Not
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`only is this stated in the testimony of Mr. Attali6, but confirmed by Patent Owner
`
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`3 Paper 10. Petitioner’s counsel attempted to contact Patent Owner to discuss and
`schedule the deposition, but Patent Owner did not respond.
`4 See Scheduling Order, Paper 9 at p. 5 (“Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed waived.”).
`5 See, e.g., 1964 Ears, LLC. v. Jerry Harvey Audio Holding, LLC, IPR2016-00494,
`Order, Paper 40 at p. 4. (“because Petitioner has been deprived [of] that routine
`discovery, the appropriate remedy is to strike and expunge Exhibits 2037 and 2038
`from the record.”).
`6 Ex. 1018 at ¶ 4. The Development Agreement provided that Go Leakless (Patent
`Owner’s business) would fund development, but that Petitioner “would design;
`test; develop; create parts, molds and build a production line; and ultimately
`commercialize and manufacture” the Triple+ NWL. See also id. at ¶¶ 5-23
`(detailing and documenting Petitioner’s development and commercialization).
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`3
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`
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`and his company, Go Leakless, on the first page of the Distributor Agreement7
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`from September 2014:
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`
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`Thus, and unlike the typical situation where the alleged prior art is based on
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`the inventor’s own activities or reduction to practice—and the inventor claims
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`experimental use or pre-marketing activities—here the prior art is Petitioner’s. And
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`Petitioner asserts and acknowledges that the Triple+ NWL was in public use, on
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`sale, or otherwise available to the public more than one year8 before the critical
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`date of the ’031 patent.
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`III. The Triple+ NWL Is Prior Art Under AIA § 102(a)(1) Because It Was
`In Public Use, On Sale, Or Otherwise Available To The Public More
`Than One Year Before The Effective Filing Date Of The ’031 Patent
`
`Petitioner set forth four categories of public use, sales and other disclosures
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`that rendered the Triple+ NWL prior art: 1) sales of approximately 4,000 units of
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`the Triple+ NWL by Petitioner in September 2014; 2) public installations of the
`
`
`7 Ex. 1014. The Distributor Agreement defines “the Company” as En-Leak, Ltd.,
`which was the name of Petitioner prior to January 4, 2015. See Ex. 1018 at ¶ 3.
`8 Petitioner focuses on public uses and other public disclosures occurring more
`than one year before the critical date in order to avoid any possible argument based
`on AIA § 102(b)(1).
`
`4
`
`
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`Triple+ NWL in a pilot program in about August 2014; 3) offers to sell the Triple+
`
`NWL to insurance company customers in about August 2014; and 4) various
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`publicly-available YouTube videos demonstrating the Triple+ NWL and published
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`in March, April and October 2014.
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`In the Decision, the Board determined that the evidence demonstrated that
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`the Triple+ NWL was prior art to the ’031 patent. First, the Board agreed that the
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`sales of 4,000 units placed Triple+ NWL “on sale” under § 102(a)(1). The Board
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`also determined that there was sufficient evidence that the public installations in
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`the pilot program were “public uses” under § 102(a)(1), but suggested additional
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`evidence might be helpful regarding Patent Owner’s claim of “experimental use.”
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`As for the offers for sale and the YouTube videos, the Board found insufficient
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`evidence at that time to establish public use.
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`In order to respond to Patent Owner’s arguments, matters raised in the
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`Decision, and to preserve the issues, Petitioner addresses each of these prior art
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`categories.9
`
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`9 Petitioner is concerned that Patent Owner will not participate in these
`proceedings, but then appeal a Final Decision by attacking an alleged lack of
`evidence (caused, of course, by Patent Owner’s refusal to participate in the first
`place). Petitioner therefore continues to advance all issues, including the
`alternative bases for establishing the Triple+ NWL as prior art under AIA §
`102(a)(1).
`
`5
`
`
`
`A.
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`Sale of 4,000 Units of Triple+ NWL in September 2014
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`The Petition included documentary evidence and related testimony that
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`Petitioner sold 4,000 units of the Triple+ NWL in September 2014, more than a
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`year before the critical date. See, e.g., Exs. 1015, 1016 and 1018 at ¶¶ 28-41. The
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`Board found that these transactions placed the Triple+ NWL “on sale” under §
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`102(a)(1), and Patent Owner has not provided any new evidence to consider or to
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`reverse this conclusion.10
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`B.
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`Public Installations of the Triple+ NWL on or about August 4,
`2014
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`The Petition included documentary evidence and testimony that, beginning
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`in August 2014 and through October 2014 (all more than one year before the
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`critical date), at least fifty (50) units of the Triple+ NWL had been installed at
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`customer locations as part of a pilot program.11 While the parties agree that these
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`installations were, in part, for testing, Patent Owner’s Preliminary Response
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`implied that such testing amounted to an “experimental use” to negate “public
`
`use.”12
`
`
`10 The Supreme Court recently affirmed that the AIA did not change the pre-AIA
`meaning of “on-sale.” Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., No. 17-
`1229, 2019 WL 271945 (U.S., decided Jan. 22, 2019).
`11 See, e.g., Ex. 1013 at pp. 3 and 10, and Ex 1018 at ¶ 26.
`12 See Decision at p. 20.
`
`6
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`
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`The Board found that these installations constituted a “public use” under §
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`102(a)(1). The Board further noted that Patent Owner bore the burden of
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`production of evidence to establish “experimental use” and had not done so under
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`the record at that time.13
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` Patent Owner did not submit a Response and has thwarted Petitioner’s
`
`efforts at routine discovery on the issue. In fact, Patent Owner refused to submit to
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`cross-examination regarding the allegedly “experimental” nature of installations.
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`Accordingly, Patent Owner has waived any alleged “experimental use” argument14
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`and, in any event, failed to meet his burden of production.
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`Notwithstanding Patent Owner’s waiver and refusal to submit to routine
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`cross-examination, the weight of the objective factors on experimental use favor
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`Petitioner.15 These factors include: (1) the necessity for public testing, (2) the
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`amount of control over the experiment retained by the inventor, (3) the nature of
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`the invention, (4) the length of the test period, (5) whether payment was made, (6)
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`whether there was a secrecy obligation, (7) whether records of the experiment were
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`kept, (8) who conducted the experiment, (9) the degree of commercial exploitation
`
`
`13 Decision at p. 20 and fn. 8.
`14 See Scheduling Order, Paper 9 at p. 5 (“Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed waived.”).
`15 See Decision at pp. 20-21 citing Energy Heating, LLC v. Heat On-The-Fly, LLC,
`899 F.3d 1291, 1300-01 (Fed. Cir. 2018).
`
`7
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`
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`during testing, (10) whether the invention reasonably requires evaluation under
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`actual conditions of use, (11) whether testing was systematically performed, (12)
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`whether the inventor continually monitored the invention during testing, and (13)
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`the nature of contacts made with potential customers.16
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`Based on the preliminary record, the Board determined that Patent Owner
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`had not carried his burden of establishing the experimental use exception and that
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`at least factors (1) and (6) weighed in favor of Petitioner. Petitioner submits, as
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`discussed below, that at least factors (2), (7)-(9) and (11) also weigh against
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`experimental use.17 No factor weighs in favor of experimental use.
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`As a threshold matter, Patent Owner should not be able to assert
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`“experimental use” over the Triple+ NWL, a product designed, developed, tested
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`and manufactured by Petitioner. “Experimental use” is for the inventor vis-à-vis
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`his/her own invention (or its reduction to practice), and there is no basis for
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`allowing someone to claim “experimental use” over another’s invention.
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`Regardless, the public uses in the pilot installations (beginning in early
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`August 2014 and continuing in September and October 2014) were not
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`
`16 Id. (citations omitted).
`17 Petitioner believes that all the factors weigh against experimental use, but the
`evidence (or lack thereof) is either in the possession of Patent Owner, or would
`require a supplemental declaration from Petitioner. Because Patent Owner has
`failed to present any evidence to support experimental use, supplemental evidence
`seems unnecessary.
`
`8
`
`
`
`“experimental.”18 Mr. Attali, Petitioner’s Chairman, previously testified that the
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`pilot installations were to “fine tune and troubleshoot any issues with installation
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`or the commercial versions of the product.”19 The purpose was not to conduct
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`experiments or to see if the valve would work for its intended purpose20—indeed,
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`Mr. Attali testified that this sort of work was completed by March 2014.21 This is
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`further confirmed by the YouTube videos created and published in March and
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`April 2014, showing and demonstrating the Triple+ NWL working as intended.22
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`The emails from Ex. 1013 illustrate that issues from the pilot program related to
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`the software controls and communications, such as with the customer’s alarm
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`system.23
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`Far from experimental24, the pilot program was, as Mr. Attali testified, to
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`test and improve the commercial aspects of the Triple+ NWL. The commercial
`
`
`18 See Ex. 1013 and Ex. 1018 at ¶¶ 26-27.
`19 Ex. 1018 at ¶ 26.
`20 “A use may be experimental only if it is designed to (1) test claimed features of
`the invention or (2) determine whether an invention will work for its intended
`purpose—itself a requirement of patentability.” Energy Heating, LLC v. Heat On-
`The-Fly, LLC, 889 F.3d 1291 (Fed. Cir. 2018).
`21 Ex. 1018 at ¶ 5.
`22 See Ex. 1010 and 1011. See also Ex. 1018 at ¶¶ 7-8.
`23 See Ex. 1013 at p. 3
`24 See Energy Heating, 899 F.3d at 1301 (public use was not experimental where it
`lacked secrecy and where inventor “kept no notebooks, drawings, plans or
`
`9
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`
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`nature of the pilot program is reinforced by the other commercial activities
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`occurring at about the same time: the unit sales of the Triple+ NWL in September,
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`the offering flyers distributed by Shomera Insurance Co. and other companies in or
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`before August 2014, and the YouTube videos25 posted by the Patent Owner,
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`including the commercial that was publicly posted in October 2014.
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`There is no evidence supporting “experimental use” because the pilot
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`program was not experimental. The record contains no testing protocols, standards,
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`results or other experiment records26 because those things did not occur and do not
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`exist. Thus, in addition to factors (1) and (6), at least factors (2), (7)-(9) and (11)
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`also weigh against experimental use. According, the pilot program installations
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`establish public use of the Triple+ NWL under § 102(a)(1).
`
`C. Offers for Sale of Triple+ NWL to Insurance Company
`Customers on or about August 4, 2014
`
`Patent Owner disputed that the offering documents of Ex. 1017 were “offers
`
`for sale,” arguing that these documents 1) did not contain every material term of a
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`sale, and 2) were mere “pre-marketing” materials not communicated to potential
`
`
`explanations of the outcomes” and “expressed no preliminary hypotheses prior to
`the heating and recorded no conclusions confirming or rejecting the hypotheses.”)
`25 Exs. 1010, 1011 and 1012.
`26 See supra fn. 24.
`
`10
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`
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`customers.27 The Board tentatively agreed that these were not “offers for sale”
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`based on a lack of evidence that these were communicated to potential customers.28
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`Patent Owner’s first argument is incorrect because contract law does not
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`require an offer to include every conceivable material term. For example, the
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`Uniform Commercial Code states that a contract can be formed even if some
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`material terms are omitted.29 The Restatement (Second) of Contracts likewise
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`contemplates that essential or material terms might be omitted from a contract, but
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`that the contract is still valid with the missing, essential terms decided by the
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`court.30
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`Patent Owner’s reliance on Group One and Elan is misplaced because those
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`cases dealt with the offers to license the invention, not offers to sell a product
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`embodying the invention, with the Federal Circuit concluding that the offers were
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`
`27 Paper 7 at pp. 8-10.
`28 Decision at pp. 17-18.
`29 Uniform Commercial Code, § 2-204(3) (“Even though one or more terms are left
`open a contract for sale does not fail for indefiniteness if the parties have intended
`to make a contract and there is a reasonably certain basis for giving an appropriate
`remedy.”) See also, e.g., id. at § 2-309 (contract not indefinite if it fails to include a
`time for delivery); § 2-305 (contract may still be enforceable even if an express
`price term is omitted).
`30 Restatement (Second) of Contracts § 204 (1981) (“When the parties to a bargain
`sufficiently defined to be a contract have not agreed with respect to a term which is
`essential to a determination of their rights and duties, a term which is reasonable in
`the circumstances is supplied by the court.”
`
`11
`
`
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`not sales because they did not contain any term related to the sale of goods.
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`However, nothing in either case suggested that all enumerated terms are required
`
`in order to constitute an offer for sale. Indeed, this would be contrary to the express
`
`requirements of the U.C.C.31 or the Restatement.
`
`Here, the offering materials were not mere offers to license, but offers to sell
`
`actual goods—the Triple+ NWL. The offering materials expressly identified the
`
`product (an automatic shut-off water valve in 0.5 inch or 0.75 inch size), the cost
`
`(850 or 890 NIS + VAT) and provided a telephone number for placing orders. This
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`is more than sufficient information to form a commercial offer for sale under the
`
`U.C.C. or the Restatement.
`
`Patent Owner also argued that these were merely pre-marketing activities for
`
`some future sales program. However, the evidence belies the revisionist history
`
`advanced in Patent Owner’s Preliminary Response. The evidence demonstrates
`
`that the documents of Ex. 1017 were not “pre” marketing, but actual marketing
`
`activities, and that product flyers and offering materials had already been sent to
`
`potential customers. For example, the latest email (dated August 4, 2014) from
`
`
`31 See also In re Kollar, 286 F.3d 1326, 1332 (Fed. Cir. 2002) (“A tangible item is
`on sale when, as we held in Group One, the transaction ‘rises to the level of a
`commercial offer for sale’ under the Uniform Commercial Code.”).
`
`12
`
`
`
`Exhibit 101732 states that similar materials had already been distributed to
`
`potential customers by other companies.
`
`In another email also dated August 4, 2014, Yael Leibowitz, the Director of
`
`Business at Shomera and the person whose name appears on the offering letter to
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`customers, not only confirms that the offering materials are to be sent out, but that
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`it was imminent—indeed, the same email directs another Shomera employee to
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`immediately begin distributing the offering materials.33
`
`
`
`
`
`These emails evidence that Shomera distributed these materials to its
`
`customers in or about August 2014 and that other companies also had done the
`
`same. Unfortunately, Petitioner does not have any additional information about
`
`these offers—they were done by Shomera with Patent Owner, and Patent Owner’s
`
`
`32 Ex. 1017 at 2.
`33 Id.
`
`13
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`
`
`refusal to participate in these proceedings or permit routine cross-examination has
`
`hindered relevant discovery and has prejudiced Petitioner’s ability to provide more
`
`evidence.
`
`Nonetheless, the evidence is clear and unequivocal that offers to sell the
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`Triple+ NWL were authorized and delivered to Shomera for further dissemination
`
`to its customers. These offers were overt and express commercial, marketing
`
`activities of the Triple+ NWL, rendering the Triple+ NWL prior art under §
`
`102(a)(1).
`
`D.
`
`Public Use on YouTube Videos published in March, April and
`October 2018
`
`More than a year before the critical date, Patent Owner published three
`
`videos to YouTube showing the Triple+ NWL product and describing its use.
`
`These videos have been publicly accessible on YouTube since March (Ex. 1010),
`
`April (Ex. 1011) and October (Ex. 1012) 2014.
`
`Despite the public demonstrations of the Triple+ NWL, Patent Owner
`
`argued that this was not a “public use” under AIA § 102(b) because a viewer could
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`not see all of the details of the invention—i.e., the inner, working components of
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`the valve. Patent Owner further dismisses his videos as not a public use, but rather
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`mere public “demonstrations” of the Triple+ NWL.
`
`But Patent Owner’s argument disregards a key aspect of the test for “public
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`use” under § 102. As an alternative to “public disclosure,” “public use” can occur
`
`14
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`
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`when one engages in commercially exploitive activities—regardless of public
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`disclosure34 and even if done in secret:35
`
`The proper test for the public use prong of the section 102(b) statutory
`bar is whether the purported use was accessible to the public or was
`commercially exploited.36
`
`Here, the videos constitute clear commercial exploitation. Patent Owner
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`publicly published the videos on YouTube for the clear purpose of generating
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`public interest and recognition for the Triple+ NWL by demonstrating the product
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`and advertising its benefits and capabilities. There is no other reasonable reason to
`
`have publicly distributed the videos. Moreover, the October 2014 video37 appears
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`to be, and was intended to be,38 an actual commercial advertisement for the Triple+
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`NWL. The instant case is similar to Harrington,39 in which the Federal Circuit
`
`
`34 “‘Commercial exploitation is a clear indication of public use,’ even absent
`separate consideration of public accessibility.” Dey, L.P. v. Sunovion Pharm., Inc.,
`715 F.3d 1351, 1359 (Fed. Cir. 2013) quoting Invitrogen Corp. v. Biocrest Mfg.,
`L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005).
`35 “A commercial use is a public use even if it is kept secret.” Kinzenbaw v. Deere
`& Co., 741 F.2d 383, 390 (Fed. Cir. 1984) (citations omitted). See also Barry v.
`Medtronic, Inc., No. 2017-2463, 2019 WL 302886, at *11 (Fed. Cir. Jan. 24, 2019)
`(“an inventor’s own prior commercial use, albeit kept secret, may constitute a
`public use or sale under § 102(b), barring him from obtaining a patent.”) (citations
`omitted).
`36 Delano Farms Co. v. California Table Grape Comm’n, 778 F.3d 1243, 1247
`(Fed. Cir. 2015) citing Invitrogen Corp., 424 F.3d at 1380 (emphasis added).
`37 Ex. 1012, https://www.youtube.com/watch?v=--ULMOo78sI.
`38 Ex. 1018 at ¶ 42.
`39 Harrington Mfg. Co. v. Powell Mfg. Co., 815 F.2d 1478, 1481 (Fed. Cir. 1986).
`
`15
`
`
`
`found that a single demonstration of the product to a reporter, “obviously… in
`
`order to gain public recognition,” was a commercial exploitation and therefore a
`
`“public use.” The Federal Circuit wrote:
`
`Osborne [the reporter] was under no promise of secrecy; on the
`contrary, Pickett obviously demonstrated the harvester to Osborne in
`order to gain public recognition. In the newspaper article, Osborne not
`only reported that the harvester flawlessly defoliated the tobacco
`leaves, but even published an approximate cost of the harvester. This
`is a clear indication of Pickett's commercial motive. Also, appellant
`has not presented any evidence that there was some public necessity
`requiring appellant to demonstrate the harvester prototype invention to
`Osborne prior to the critical date of October 2, 1966. … in this case,
`the only possible inference that can be drawn from Pickett's
`demonstration to Osborne, a well-known agricultural journalist in the
`area, is that Pickett wanted to exploit the harvester commercially.40
`
`Patent Owner clearly uses and explains the Triple+ NWL to the public in the
`
`YouTube videos. The videos were freely accessible to the public, and the public
`
`was obviously under no express or implied promise of secrecy. Further, there
`
`clearly was no public necessity requiring public disclosure between March and
`
`October 2014. Rather, there was merely a commercial desire to generate public
`
`awareness and interest in acquiring the product. Indeed, some of the videos,
`
`particularly the October 2014 commercial, highlight the potential dangers and
`
`damages threatening homes and businesses that do not have the Triple+ NWL
`
`installed and tout the benefits and advantages of installing the Triple+ NWL.
`
`
`40 Id.
`
`16
`
`
`
`The videos were clearly a public use under the “commercial exploitation”
`
`test more than one year before the critical date of the ’031 patent. Like the
`
`demonstration in Harrington, the only possible inference that can be drawn from
`
`the multiple YouTube videos is that Patent Owner intended to generate public
`
`awareness and interest in the Triple+ NWL. The videos are clear commercial
`
`exploitations that render the Triple+ NWL prior art.
`
`E.
`
`The Triple+ NWL was “otherwise available to the public” more
`than one year before the critical date
`
`The AIA § 102(a)(1) includes a new category of prior art that is “otherwise
`
`available to the public.” The Supreme Court recently confirmed in Helsinn that this
`
`is a catch-all category to cover activity that may not fit into one of the traditional
`
`categories, such as printed publication, public use, or on sale.41
`
`Here, the foregoing disclosures, uses, and transactions—individually,
`
`collectively, or in combinations thereof—establish that the Triple+ NWL was
`
`“otherwise available to the public” more than one year prior to the critical date of
`
`the ’031 patent.
`
`
`41 Helsinn, Slip Op. at * 6 (This catchall phrase “captures material that does not
`neatly fit into the statute’s enumerated categories but is nevertheless meant to be
`covered.”). See also MPEP § 2152.01(e) (“This “catch-all” provision permits
`decision makers to focus on whether the disclosure was “available to the public,”
`rather than on the means by which the claimed invention became available to the
`public or whether a disclosure constitutes a “printed publication” or falls within
`another category of prior art as defined in AIA 35 U.S.C. 102(a)(1).”).
`
`17
`
`
`
`IV. CONCLUSION
`
`For all of the reasons set forth above and in the Petition, claim 1 of the ’031
`
`patent should be invalidated under § 103 in view of the Triple+ NWL.
`
`Dated: February 12, 2019
`
`Respectfully submitted,
`
`
`
`
`
`/s/ Mark C. Johnson
`Mark C. Johnson, Reg. No. 51,854
`mjohnson@rennerotto.com
`Kyle B. Fleming (not yet admitted)
`RENNER OTTO
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`T: 216-621-1113
`F: 216-621-6165
`
`Counsel for Triple Plus Ltd.
`
`
`
`18
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. §§ 42.24 et seq., the undersigned certifies that this
`
`Petition complies with the 5,600 word type-volume limitation. The brief was
`
`prepared in Times New Roman 14 point font, double spaced, using Microsoft®
`
`Word and contains 4,044 words as indicated by Word, excluding the table of
`
`contents, table of authorities, mandatory notices under § 42.8, certificate of
`
`compliance, certificate of service, or appendix of exhibits or claim listing.
`
`
`
`
`
`
`
`
`
` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`mjohnson@rennerotto.com
`RENNER OTTO
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`T: 216-621-1113
`F: 216-621-6165
`
`Counsel for Triple Plus Ltd.
`
`19
`
`
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`
`I certify that the foregoing PETITIONER’S REPLY was served on the
`
`Patent Owner by electronic notification, as consented by Patent Owner, at the
`
`following email address:
`
`meir@mdpatent.co.il
`
`Dated: February 12, 2019
`
`
`
`
`
`
`
`
` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`mjohnson@rennerotto.com
`RENNER OTTO
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`T: 216-621-1113
`F: 216-621-6165
`
`Counsel for Triple Plus Ltd.
`
`20
`
`
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