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DEFENDANT.
Defendant Seirus Innovative Accessories, Inc. hereby notifies the Court that on July 26,
2017, the U.S. Patent and Trademark Offices Patent Trial and Appeal Board instituted trial on
Third Party Ventex Co., Ltd.s (Ventex) two Petitions for Inter Partes Review (IPR) of U.S.
Patent Nos. 8,453,270 (270 Patent) and 8,424,119 (119 Patent) on all challenged claims.
Specifically, the Patent Trial and Appeal Board instituted trial on:
Claims 1, 2, 7, and 17 of the 270 Patent are invalid based on U.K. Patent App. No.
GB 2,073,613 to Fottinger (Fottinger);
Claim 2 of the 270 Patent is invalid based on Fottinger in view of U.S. Patent Pub.
No. 2006/0179539 to Harber (Harber);
Claims 1, 2, 8, 15, 16, and 20 of the 119 Patent are invalid based on Fottinger; and
s/ Matthew D. Murphey
JASMINE C. HITES, OSB # 104056
Troutman Sanders LLP
100 SW Main Street, Suite 1000
Portland, OR 97204
Telephone: (503) 290-2344
Facsimile: (503) 290-2405
jasmine.hites@troutmansanders.com
EXHIBIT A
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v.
Case IPR2017-00789
Patent 8,453,270 B2
____________
DECISION
Instituting Inter Partes Review
37 C.F.R. 42.108
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IPR2017-00789
Patent 8,453,270 B2
I. INTRODUCTION
Ventex Co., Ltd. (Petitioner) filed a Petition for inter partes review
of claims 1, 2, 7, and 17 of U.S. Patent No. 8,453,270 B2 (Ex. 1001, the
270 patent). Paper 1 (Pet.), 1. Columbia Sportswear North America,
Inc. (Patent Owner) filed a Preliminary Response. Papers 9, 10 (Prelim.
Resp.). 1 Institution of an inter partes review is authorized by statute only
when the information presented in the petition . . . and any response . . .
shows that 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 37 C.F.R. 42.108. For the reasons set forth below, we
conclude that the information presented in the Petition establishes a
reasonable likelihood that Petitioner will prevail in showing the
unpatentability of claims 1, 2, 7, and 17. Accordingly, we institute an inter
partes review as to those claims.
A. Related Matters
Petitioner and Patent Owner identify the following district court
proceeding as a related matter: Columbia Sportswear North America, Inc. v.
Seirus Innovative Accessories, No. 3:15-cv-00064-HZ (D. Or.) (the district
court litigation). Pet. 5; Paper 3, 2. Petitioner and Patent Owner also
identify Ventex Co., Ltd. V. Columbia Sportswear North America, Inc.,
IPR2017-00651 as a related matter because it involves a patent closely
related to the 270 patent, U.S. Patent No. 8,424,119 B2. Pet. 4; Paper 3, 2.
Petitioner also asserts that certain proceedings before the Korean Intellectual
1
Paper 9 is a version of the Preliminary Response that has been filed under
seal. Paper 10 is a public, redacted version.
2
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Property Trial and Appeal Board and the Supreme Court of Korea are
related matters because they involve a Korean patent related to the 270
patent. See Pet. 5; Exs. 1012, 1013.
3
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C. Claims
Of the challenged claims, claims 1 and 17 are independent. Claim 1 is
illustrative and is reproduced below:
1. A heat management material adapted for use with body
gear, comprising:
a base material having a transfer property that is adapted to allow,
impede, and/or restrict passage of a natural element through
the base material; and
a discontinuous array of discrete heat-directing elements, each
independently coupled to a first side of a base material, the
heat directing elements being positioned to direct heat in a
desired direction, wherein a surface area ratio of heat-
directing elements to base material is from about 7:3 to about
4
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II. ANALYSIS
A. Statutory Bar
As an initial matter, we consider Patent Owners argument that we
reject the Petition because Petitioner is statutorily barred from bringing this
inter partes review. Prelim. Resp. 4345. The parties sought and obtained
permission to file additional briefs on this issue. See Paper 13, 4
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We agree with Petitioner that Patent Owner has not established, on the
current record, that Seirus and Petitioner are in privity with one another
under 315(b). The mere existence of an indemnity obligation, standing
alone, does not establish privity or that Petitioner had the ability to present
arguments and evidence in the district court litigation, a point implicitly
acknowledged by Patent Owner. See Paper 16, 13. Moreover, we are not
persuaded that asserting rights to ensure compliance with protective orders
establishes that Petitioner and Seirus are in privity with one another.
Accordingly, we decline Patent Owners request to deny the Petition due to a
statutory bar under 315(b). We do not reach Patent Owners requests for
discovery at this time. Patent Owner may seek such discovery during the
trial phase.
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Petitioner also asserts that even using a coating with only 8.4% metal solids
in Fottinger Is Example will allow the coating to reflect heat. Patent Owner
argues that Fottinger Is binder alone does not direct heat, and even the
coating that includes metal particles does not direct heat. Prelim. Resp. 30
31, 3438. Patent Owner focuses on Fottinger Is Example, and the
inclusion of relatively small percentages of metal in the coating rather than
Fottinger Is maximum of 50% metal solids. See id. at 3436; Ex. 1003,
2:1115.
Based on our review of the current record, Petitioner demonstrates
sufficiently that Fottinger I discloses a coating that reflects heat. Fottinger I
itself indicates that radiated heat . . . is reflected by a sheet of the
invention. Ex. 1003, 2:7173. The parties dispute whether Fottinger Is
specific Example discloses a coating that reflects heat, but we need not rely
on that Example at this time given Fottinger Is express disclosure of a
coating that reflects heat.2
The parties also dispute whether Fottinger I discloses or renders
obvious the limitation requiring a surface area ratio of heat-directing
elements to base material is from about 7:3 to about 3:7. Pet. 3137;
2
The parties also dispute whether we should consider another Fottinger prior
art reference, Fottinger II, in considering what Fottinger I discloses. See
Pet. 5152; Prelim. Resp. 4143; Ex. 1033 (U.S. Patent No. 4,316,931
(Fottinger II)). Patent Owner argues that we should not even consider
Fottinger II because Petitioners Grounds only rely on Fottinger I and
Harber. See Prelim. Resp. 4143. Although we need not resolve any issues
related to Fottinger II at this time, we disagree with Patent Owners assertion
that we cannot consider Fottinger II when determining how one of ordinary
skill in the art would interpret Fottinger I. The parties may continue to
address the relevance of Fottinger II during the trial phase.
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efficient way to direct body heat back to the user. See id. (citing
Brookstein Decl. 7273). Patent Owner generally disagrees with
Petitioner, arguing that each of Fottinger I and Harber fails to disclose the
limitation or render it obvious. Prelim. Resp. 3840. In support of its view,
Patent Owner relies on its own declarant, Dr. Cole, who discounts the
teachings of the prior art as to placement options of the coated surface. Id.
(citing Ex. 2005 4748).
We are cognizant the conflicting testimony of Dr. Brookstein and Dr.
Cole, which brings issues of material fact into dispute. Based on the current
record, however, we are persuaded that Petitioners view, as supported by
Dr. Brookstein, in connection what a person of ordinary skill in the art
would understand from Fottinger Is teachings, is reasonable. In particular,
at this time, we are satisfied that Petitioner demonstrates sufficiently that,
given Fottinger Is disclosure of coating at least one face of fabric, including
the lining facing the wearer, that it would have been obvious to one of
ordinary skill in the art to coat the innermost surface of the innermost layer
in order to reflect heat back to the user.3 Accordingly, on the present record,
we are satisfied that Petitioner sufficiently demonstrates a reasonable
3
Although not a focus in the Petition, Petitioner also cites to a portion of
Fottinger I that discloses the use of the coating on outer fabrics for articles
of clothing, in which case the coated face will be on the inside of the
article. See Ex. 1003, 2:4852; Pet. 22, 38 (citing Ex. 1003, 2:4852). We
interpret that passage as expressly disclosing application of Fottinger Is
coating on the exterior of a clothing (i.e., not on the interior of the clothing,
unexposed to the wearer or the elements), and facing the user. This
interpretation would appear to disclose the requirements of claim 2 because
the coating would be on the innermost surface of the innermost layer of the
garment. The parties may address this passage further during trial.
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likelihood that it would prevail in its challenge that claim 2 would have been
obvious under 35 U.S.C. 103 in view of Fottinger I.
c. Claims 7 and 17
Claim 7 depends from claim 1 and further requires a surface area
ratio of heat-directing elements to base material is from about 3:2 to about
2:3. Ex. 1001, 8:3739. According to the specification, this claimed ratio
amounts to coverage of about 40% to about 60% by area. Ex. 1001, 5:60
65. Similar to claim 1, Petitioner asserts that Fottinger Is disclosure of an
overlapping range (540%) discloses a portion of the claimed range and at a
minimum renders the claim obvious. See Pet. 4041. Patent Owner does
not address claim 7 directly. Based on our review of the present record,
Petitioner demonstrates a reasonable likelihood of success in showing that
claim 7 would have been obvious in view of Fottinger I.
Independent claim 17 contains limitations similar to those of claim 1,
although claim 17 requires heat-reflective elements rather than heat-
directing elements. See Ex. 1001, 8:669:11. Petitioner relies on evidence
and arguments made in connection with claim 1 in its challenge to claim 17.
See Pet. 4244. Patent Owner does not address claim 17 directly, although
we understand Patent Owners arguments with respect to claim 1 to apply to
similar limitations in claim 17. For the same reasons discussed above with
respect to claim 1, based on our review of the present record, Petitioner
demonstrates a reasonable likelihood of success in showing that claim 17
would have been obvious in view of Fottinger I.
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direct heat back to the user. Id. at 47. Patent Owner argues that Harber fails
to disclose the coating location required by claim 2. Prelim. Resp. 4041.
Based on the current record, Petitioner demonstrates sufficiently that
the combination of Fottinger I and Harber discloses all of the limitations of
claim 2 and Petitioner provided an adequate rationale for the proposed
modification, namely, that one of ordinary skill in the art would have been
motivated to apply the coating to the innermost surface to direct heat most
efficiently back to the user.
Based on the foregoing, the explanations and supporting evidence
presented by Petitioner sufficiently demonstrate that claim 2 is unpatentable
over Fottinger I and Harber. Accordingly, we conclude that inter partes
review of claim 2 as challenged by Petitioner is warranted.
III. CONCLUSION
Having evaluated the Petition, its underlying supporting evidence, and
Patent Owners Preliminary Response, we determine that Petitioner has
shown a reasonable likelihood of success in its challenge to claims 1, 2, 7,
and 17 as set forth in the Petition and discussed above.
At this stage of the proceeding, the Board has not made a final
determination as to the construction of any claim term or the patentability of
claims 1, 2, 7 and 17 of the 270 patent.
IV. ORDER
It is ORDERED that, pursuant to 35 U.S.C. 314(a), an inter partes
review is hereby instituted to determine whether claims 1, 2, 7, and 17 are
unpatentable based on the statutory grounds of obviousness under 35 U.S.C.
103 as asserted in the Petition and identified in section I.E. above;
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For PETITIONER:
David A. Garr
dgarr@cov.com
Andrea G. Reister
areister@cov.com
Brenna K. Legaard
blegarrd@schwabe.com
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EXHIBIT B
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Trials@uspto.gov Paper: 17
571-272-7822 Entered: July 26, 2017
v.
Case IPR2017-00651
Patent 8,424,119 B2
____________
DECISION
Instituting Inter Partes Review
37 C.F.R. 42.108
Case 3:15-cv-00064-HZ Document 175-2 Filed 07/27/17 Page 3 of 22
IPR2017-00651
Patent 8,424,119 B2
I. INTRODUCTION
Ventex Co., Ltd. (Petitioner) filed a Petition for inter partes review
of claims 1, 2, 8, 15, 16, and 20 of U.S. Patent No. 8,424,119 B2 (Ex. 1001,
the 119 patent). Paper 1 (Pet.). Columbia Sportswear North America,
Inc. (Patent Owner) filed a Preliminary Response. Papers 9, 10 (Prelim.
Resp.). 1
Institution of an inter partes review is authorized by statute only when
the information presented in the petition . . . and any response . . . shows
that 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 37 C.F.R. 42.108. For the reasons set forth below, we
conclude that the information presented in the Petition establishes a
reasonable likelihood that Petitioner will prevail in showing the
unpatentability of claims 1, 2, 8, 15, 16, and 20. Accordingly, we institute
an inter partes review as to those claims.
A. Related Matters
Petitioner and Patent Owner identify the following district court
proceeding as a related matter: Columbia Sportswear North America, Inc. v.
Seirus Innovative Accessories, No. 3:15-cv-00064-HZ (D. Or.) (the district
court litigation). Pet. 5; Paper 3, 2. Petitioner and Patent Owner also
identify Ventex Co., Ltd. V. Columbia Sportswear North America, Inc.,
IPR2017-00789 as a related matter because it involves a patent closely
related to the 119 patent, U.S. Patent No. 8,453,270 B2. Pet. 4; Paper 3, 2.
1
Paper 9 is a version of the Preliminary Response that has been filed under
seal. Paper 10 is a public, redacted version.
2
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Petitioner also asserts that certain proceedings before the Korean Intellectual
Property Trial and Appeal Board and the Supreme Court of Korea are
related matters because they involve a Korean patent related to the
119 patent. See Pet. 45.
3
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C. Claims
Of the challenged claims, claims 1, 15, and 20 are independent.
Claim 1 is illustrative and is reproduced below:
1. A heat management material adapted for use with body
gear, comprising:
a base material having a transfer property that is adapted to allow,
impede, and/or restrict passage of a natural element through
the base material; and
one or more heat-directing elements, each coupled to a first side
of a base material, the one or more heat-directing elements
being positioned to direct heat in a desired direction, wherein
a surface area ratio of heat-directing elements to base material
is from about 7:3 to about 3:7, and wherein the surface area
4
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II. ANALYSIS
A. Statutory Bar
As an initial matter, we consider Patent Owners argument that we
reject the Petition because Petitioner is statutorily barred from bringing this
inter partes review. Prelim. Resp. 4446. The parties sought and obtained
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C. Claim Construction
In an inter partes review, a claim in an unexpired patent shall be given
its broadest reasonable construction in light of the specification of the patent
in which it appears. 37 C.F.R. 42.100(b); Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 214446 (2016) (upholding the use of the broadest
reasonable interpretation standard). Consistent with the broadest reasonable
construction, claim terms are presumed to have their ordinary and customary
meaning as understood by a person of ordinary skill in the art in the context
of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
Petitioner proposes constructions for heat-directing elements
(claims 1, 2, 8, 15, 16, and 20) and heat-reflective elements (claim 20).
Petitioner notes that in the district court litigation, the district court
construed heat-directing elements as elements that alter the direction of
heat. Pet. 1415. Petitioner asserts that at a minimum, we should
construe the term to encompass the same thing, which the Petitioner
contends encompass[es] materials that reflect or conduct heat. Id.
Petitioner cites to portions of the specification that mention certain materials
as heat directing as support for its use of the term materials in the
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1. Principles of Law
A claim is unpatentable under 35 U.S.C. 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Intl Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
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determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17
18 (1966). We analyze this ground based on obviousness in accordance with
the above-stated principles.
2. Overview of Fottinger I
Fottinger I discloses a textile sheet with a discontinuous coating
comprising a binder and metal powder. Ex. 1003, (57). The coating covers
540% of the surface area of the fabric. Id. According to Fottinger I, [b]y
ensuring that the individual coated areas are mutually separated, it appears
that the porosity/breathing and draping properties of the fabric need not be
substantially impaired with respect to the uncoated sheet. Id. at 1:6165.
Fottinger I refers to the coating as a binder dispersion comprising fine
metal particles. Id. at 2:89. The dispersion has a maximum solids
content of 50% by weight and it should not comprise more than 10 to 50%
by weight, based on the weight of the solids, of a metal powder. Id.
at 2:1014. The coated fabric does not transmit heat but instead heat is
reflected by a sheet of the invention. Id. at 2:6873.
Fottinger I discloses use of the invention as interlinings and as lining
fabrics for articles of clothing. Id. at 2:4850. The products may also be
used as outer fabrics for articles of clothing, in which case the coated face
will be on the inside of the article. Id. at 2:5052.
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3. Discussion Fottinger I
a. Claim 1
With respect to claim 1, Petitioner relies on Fottinger Is disclosure
and the expert declaration of Dr. David Brookstein in support of its
allegation that Fottinger I renders claim 1 obvious. See Pet. 2440; Ex. 1017
(Brookstein Declaration), 4771. For example, with respect to the
preamble, Petitioner asserts that Fottinger I discloses heat management
materials comprised of textile sheets, [Ex. 1003], 1:59, containing the
heat-directing material in the form of individual . . . areas of discontinuous
coating, id., 1:5465, created by using a binder and metal powder
dispersion, id., 2:715, which allows for maintenance of . . . temperature
differences while maintaining air permeability, id., 2:6876, 1:6165.
Pet. 2425. With respect to the first limitation of claim 1 requiring a base
material having a transfer property, Petitioner argues that Fottinger I
discloses a base material that allows moisture to pass through its uncoated
areas. Id. at 2526. In connection with the last limitation of claim 1
wherein the surface ratio of heat-directing elements to base material
permits the base material to retain partial performance of the transfer
propertyPetitioner relies on Fottinger Is disclosure of the breathability of
the fabric with the coating due to the open areas in the discontinuous
coating. Id. at 3940. Patent Owner does not address these limitations
directly, or argue that Fottinger I fails to disclose these limitations. Based on
our review of the current record, Petitioner demonstrates sufficiently that
Fottinger I discloses these limitations.
With respect to the limitations requiring a one or more heat-directing
elements, each coupled to a first side of a base material and the one or
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2
The parties also dispute whether we should consider another Fottinger prior
art reference, Fottinger II, in considering what Fottinger I discloses. See
Pet. 5758; Prelim. Resp. 4244; Ex. 1033 (U.S. Patent No. 4,316,931
(Fottinger II)). Patent Owner argues that we should not even consider
Fottinger II because Petitioners Grounds only rely on Fottinger I and
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Harber. See Prelim. Resp. 4244. Although we need not resolve any issues
related to Fottinger II at this time, we disagree with Patent Owners assertion
that we cannot consider Fottinger II when determining how one of ordinary
skill in the art would interpret Fottinger I. The parties may continue to
address the relevance of Fottinger II during the trial phase.
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fabrics for articles of clothing of the garment. Pet. 40 (citing Ex. 1003,
1:54, 1:55, 1:6162, 2:4852). Petitioner asserts that one of ordinary skill in
the art would regard Fottinger Is disclosure of lining[s] as the innermost
layer of an article of clothing, and that a skilled artisan would have
recognized that coating the innermost surface of that layer is one of a limited
number of known options for such placement. See id. at 4142. In support
of that position, Petitioner also cites to the testimony of its declarant, Dr.
Brookstein, who testifies that coating that surface would be the most
efficient way to direct body heat back to the user. See id. (citing
Brookstein Decl. 7273).
Patent Owner generally disagrees with Petitioner, arguing that each of
Fottinger I and Harber fails to disclose the limitation or render it obvious.
Prelim. Resp. 3942. In support of its view, Patent Owner relies on its own
declarant, Dr. Cole, who discounts the teachings of the prior art as to
placement options of the coated surface. Id. (citing Ex. 2005 4748).
We are cognizant of the conflicting testimony of Dr. Brookstein and
Dr. Cole, which brings issues of material fact into dispute. Based on the
current record, however, we are persuaded that Petitioners view, as
supported by Dr. Brookstein, in connection with what a person of ordinary
skill in the art would understand from Fottinger Is teachings, is reasonable.
In particular, at this time, we are satisfied that Petitioner demonstrates
sufficiently that, given Fottinger Is disclosure of coating at least one face of
fabric, including the lining facing the wearer, that it would have been
obvious to one of ordinary skill in the art to coat the innermost surface of the
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3
Although not a focus in the Petition, Petitioner also cites to a portion of
Fottinger I that discloses the use of the coating on outer fabrics for articles
of clothing, in which case the coated face will be on the inside of the
article. See Pet. 35, 40 (citing Ex. 1003, 2:4852). We interpret that
passage as expressly disclosing application of Fottinger Is coating on the
exterior of a clothing (i.e., not on the interior of the clothing, unexposed to
the wearer or the elements), and facing the user. This interpretation would
appear to disclose the requirements of claim 2 because the coating would be
on the innermost surface of the innermost layer of the garment. The parties
may address this passage further during trial.
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1. Overview of Harber
Harber discloses garments that include targeted vent or heat retention
zones including openings or heat retention areas in the fabric. Harber,
Abstract. The location and size of the openings or insulation areas may be
derived from thermal profiles of the wearer of the garments. Id.
The insulation designed for heat retention areas may be provided by
adding an additional layer of material over the base layer of material in the
fabric. Id. at 80. The insulating material can be made from the same
material as the base layer or a heat-reflective material. Id. When provided
as an additional layer, the additional layer of material may be provided on
the inside of the garment structure and/or on the outside of the garment
structure. Id.
18
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III. CONCLUSION
Having evaluated the Petition, its underlying supporting evidence, and
Patent Owners Preliminary Response, we determine that Petitioner has
shown a reasonable likelihood of success in its challenge to claims 1, 2, 8,
15, 16, and 20 as set forth in the Petition and discussed above. At this stage
of the proceeding, the Board has not made a final determination as to the
construction of any claim term or the patentability of claims 1, 2, 8, 15, 16,
and 20 of the 119 patent.
IV. ORDER
It is ORDERED that, pursuant to 35 U.S.C. 314(a), an inter partes
review is hereby instituted to determine whether: (1) claims 1, 2, 8, 15, 16,
and 20 are unpatentable as obvious under 35 U.S.C. 103 over Fottinger I;
and (2) claim 2 is unpatentable as obvious under 35 U.S.C. 103 over
Fottinger I and Harber;
FURTHER ORDERED that inter partes review is not instituted in this
proceeding on any other grounds; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial. The trial
will commence on the entry date of this decision.
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For PETITIONER:
David A. Garr
Andrea G. Reister
COVINGTON & BURLING LLP
dgarr@cov.com
areister@cov.com
Steven J. Prewitt
Brenna K. Legaard
SCHWABE, WILLIAMSON & WYATT, P.C.
SPrewitt@schwabe.com
BLegarrd@schwabe.com
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