UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MORRIS & ASSOCIATES, INC. Petitioner,

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1 Paper No. 01 Filed: December 18, 2014 Filed on behalf of: Morris & Associates, Inc. By: Andrew Crain Robert Gravois Kenneth Knox THOMAS HORSTEMEYER, LLP 400 Interstate North Parkway, SE Suite 1500 Atlanta, Georgia Tel: (770) Fax: (770) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MORRIS & ASSOCIATES, INC. Petitioner, v. COOLING & APPLIED TECHNOLOGY, INC. Patent Owner Case No. To Be Assigned U.S. PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,397,622 UNDER 35 U.S.C AND 37 C.F.R et seq.

2 TABLE OF CONTENTS I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(B)... 1 A. Real Party-In-Interest (37 C.F.R. 42.8(b)(1))... 1 B. Related Matters (37 C.F.R. 42.8(b)(2))... 1 C. Lead and Backup Counsel (37 C.F.R. 42.8(b)(3)) and Service Information (37 C.F.R. 42.8(b)(4))... 1 II. COMPLIANCE WITH REQUIREMENTS FOR INTER PARTES REVIEW PETITION... 2 A. Grounds for Standing (37 C.F.R (a))... 2 B. Challenged Claims and Statutory Grounds (37 C.F.R (b)(1)-(2))... 2 C. Claim Construction (37 C.F.R (b)(3))... 3 D. Unpatentability of the Construed Claims (37 C.F.R (b)(4))... 3 E. Supporting Evidence (37 C.F.R (b)(5))... 3 F. Fees (37 C.F.R )... 4 III. OVERVIEW OF THE 622 PATENT... 4 A. Subject Matter of the 622 Patent... 4 B. Prosecution and Reexamination History of the 622 Patent... 5 IV. PERSON OF ORDINARY SKILL IN THE ART... 8 V. CLAIM CONSTRUCTION... 9 A. semi-cylinder... 9 B. at least one flight i

3 C. wherein an entirety of said inner surface of said tank side walls is positioned parallel to said outer edges of said at least one flight of said auger D. means for removing the food product from said outlet end E. means for discharging chilling water from said inlet end of said tank F. refrigerating means external to saidd outer surface of said tank for refrigerating the chilling water discharged from said inlet end of said tank G. means for re-circulating chilling water from said refrigeratingg means and introducing chilling water into said outlet end of said tank H. means for sloping said tank from said outlet end downwardly toward said inlet end VI. CLAIMS 1-8 OF THE 622 PATENT ARE OBVIOUS OVER THE CITED PRIOR ART REFERENCES A. Overview of the Cited Prior Art References Innes (Ex. 1004) Crawford (Ex. 1005) Morris 000 (Ex. 1006) Morris 101 (Ex. 1007) B. Ground I: Claims 1 and 3-8 Are Obvious overr Innes and Crawford Claim Claim Claim Claim ii

4 Claim Claim Claim C. Ground II: Claim 2 Is Obvious over Innes, Crawford, and Morris D. Ground III: Claims 1 and 3-8 Are Obvious over Innes and Morris Claim Claim Claim Claim Claim Claim Claim E. Ground IV: Claim 2 Is Obvious over Innes, Morris 000, and Morris VII. CONCLUS SION iii

5 CASES TABLE OF AUTHORITIES In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359 (Fed. Cir. 2004)... 9 In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994)... 9 J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed. Cir. 1997)... 7 MacAuto U.S.A. v. BOS GmbH & KG, IPR , Paper 18 (Jan. 24, 2013) 15 MacAuto U.S.A. v. BOS GmbH & KG, IPR , Paper 18, p. 19 (Jan. 24, 2013)... 17, 18 Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006)... 7 Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573 (Fed. Cir. 1983)... 7 STATUTES 35 U.S.C , 12, 13, C.F.R (b)... 9 iv

6 LIST OF EXHIBITS Exhibit Ex Ex Description U.S., including Ex Parte Reexamination Certificate ( the 622 Patent ) U.S. Patent Application No. 09/298,364, which is incorporated by reference in the 622 Patent Ex File History for U.S. Ex U.S. Patent No. 4,860,554 to Innes et al. ( Innes ) Ex U.S. Patent No. 4,788,831 to Crawford et al. ( Crawford ) Ex U.S. Patent No. 5,868,000 to Morris et al. ( Morris 000 ) Ex U.S. Patent No. 3,410,101 to Morris ( Morris 101 ) Ex Declaration of Douglas Smith, Ph.D. Ex Patent Owner s Responses to Interrogatories Ex Deposition Transcript of Andrew C. Estes (with redactions) Ex Exhibit 6 to the Deposition of Andrew C. Estes Ex Patent Owner s Infringement Contentions Ex Exhibit 7 to the Deposition of Andrew C. Estes v

7 I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(B) A. Real Party-In-Interest (37 C.F.R. 42.8(b)(1)) The real party-in-interest for this Petition for Inter Partes Review is Morris & Associates, Inc. ( Petitioner ). B. Related Matters (37 C.F.R. 42.8(b)(2)) U.S. ( the 622 Patent ) is the subject of litigation pending in the United Stated District Court for the Eastern District of Arkansas in the action captioned Cooling & Applied Technology, Inc. v. Morris & Associates, Inc. (Civil Action No. 4:14-cv-0368-BRW (E.D. Ark.)). C. Lead and Backup Counsel (37 C.F.R. 42.8(b)(3)) and Service Information (37 C.F.R. 42.8(b)(4)) Lead Counsel N. Andrew Crain (Reg. No. 45,442) andrew.crain@thomashorstemeyer.com T: (770) ; F: (770) Postal & Hand-Delivery Address Thomas Horstemeyer 400 Interstate North Parkway, SE Suite 1500 Atlanta, GA Back-up Counsel Robert Gravois (Reg. No. 67,224) robert.gravois@thomashorstemeyer.com T: (770) ; F: (770) Kenneth Knox (Reg. No. 71,306) kenny.knox@thomashorstemeyer.com T: (770) ; F: (770) Postal & Hand-Delivery Address Thomas Horstemeyer 400 Interstate North Parkway, SE Suite 1500 Atlanta, GA

8 II. COMPLIANCE WITH REQUIREMENTS FOR INTER PARTES REVIEW PETITION A. Grounds for Standing (37 C.F.R (a)) Pursuant to 37 C.F.R (a), Petitioner certifies that the 622 Patent is available for inter partes review and that Petitioner is not barred or estopped from requesting an inter partes review challenging the 622 Patent. B. Challenged Claims and Statutory Grounds (37 C.F.R (b)(1)-(2)) Petitioner relies on the patents and printed publications listed below. Exhibit Reference Filing Date Availability as Prior Art Ex U.S. Patent No. 4,860,554 to September 19th, 35 U.S.C. 102(b) Innes et al. ( Innes ) 1988 Ex U.S. Patent No. 4,788,831 to September 8th, 35 U.S.C. 102(b) Crawford et al. ( Crawford ) 1987 Ex U.S. Patent No. 5,868,000 to September 8th, 35 U.S.C. 102(b) Morris et al. ( Morris 000 ) 1997 Ex U.S. Patent No. 3,410,101 to November 10th, 35 U.S.C. 102(b) Morris ( Morris 101 ) 1966 The relief requested by Petitioner is that claims 1-8 of the 622 Patent be found unpatentable and cancelled based on the following grounds: Ground Claims Basis I 1 and 3-8 Obvious under 35 U.S.C. 103(a) in view of Innes and Crawford. II 2 Obvious under 35 U.S.C. 103(a) in view of Innes, Crawford, and Morris 101. III 1 and 3-8 Obvious under 35 U.S.C. 103(a) in view of Innes and Morris

9 IV 2 Obvious under 35 U.S.C. 103(a) in view of Innes, Morris 000, and Morris 101. C. Claim Construction (37 C.F.R (b)(3)) Petitioner submits the broadest reasonable construction in light of the specification for a number of claim terms of the 622 Patent in Section V below. For claim elements that invoke means-plus-function treatment under 35 U.S.C , Petitioner identifies the specific portions of the specification that describe the structure that correspond to each claimed function in Section V below. D. Unpatentability of the Construed Claims (37 C.F.R (b)(4)) An explanation of why claims 1-8 of the 622 Patent are unpatentable under the grounds identified above is provided in Section VI below. E. Supporting Evidence (37 C.F.R (b)(5)) The exhibit numbers of the evidence relied upon to support the challenges set forth herein and the relevance of the evidence to the challenges raised, including identifications of the specific portions of the evidence that support the challenges, are provided in the text and claim charts in Section VI below. Additionally, an Exhibit List, including exhibit numbers and a brief description of each exhibit, is provided above. 3

10 F. Fees (37 C.F.R ) The undersigned submits that the fees ($9000 request fee and $14,000 postinstitution fee) set forth in 37 C.F.R (a) have been paid for this Petition. The undersigned further authorizes payment for any additional fees that might be due in connection with this Petition to be charged to Deposit Account No III. OVERVIEW OF THE 622 PATENT A. Subject Matter of the 622 Patent In a poultry processing facility, poultry carcasses are subjected to an evisceration process. Ex. 1008, 12. After the evisceration process, the carcasses are cleaned and chilled in a device known as a chiller to reduce the likelihood of the growth of harmful bacteria, such as e. coli, salmonella, etc. Id. The 622 Patent claims a counter flow, re-circulating, externally refrigerated, auger type of chiller having a semi-cylindrical tank. Ex. 1001, claims 1 and 8. As described in the background of the 622 Patent, in a counter flow chiller, chilled water moves in an opposite direction relative to the direction in which poultry carcasses move. Id. at 1: The background of the 622 Patent admits that counter flow chillers were well known in the art. Id. The 622 Patent admits that recirculation systems were well known in the art. Id. at 1: In such systems, [t]he chilled water enters the chiller at one end, circulates through the chiller, and after being warmed by contact with the 4

11 5 Case No. To Be Assigned poultry carcasses, exits the chiller. The warmed water is again chilled by the refrigeration unit and re-circulated through the chiller. Id. at 1: The background of the 622 Patent also admits that auger type chillers having walls of semi-cylindrical cross-sections were known in the art. Id. at 2: According to the 622 Patent, the semi-cylindrical shape results in water being forced to flow in a helical path determined by the auger. Id. at 2:42-3:6. B. Prosecution and Reexamination History of the 622 Patent The application that resulted in the 622 Patent was filed on August 11, 2000 with two claims: independent claim 1 and dependent claim 2. Ex. 1003, p. 20. During prosecution of the application that resulted in the 622 Patent, one Office Action was issued. Cooling & Applied Technology, Inc. ( Patent Owner ) responded to the rejection of independent claim 1 by arguing that the cited references did not teach means for discharging chilling water from said inlet end of said tank and means for... introducing chilling water into said outlet end of said tank. Id. at 49. A Notice of Allowability issued thereafter. Id. at 60. After waiting eleven years, Patent Owner filed a request for ex parte reexamination of the 622 Patent, claiming that previously-considered prior art had not been adequately considered. Id. at 69 and The Patent Office found that Morris 000 (Ex. 1006) and U.S. Patent No. 5,456,091 to Zittel ( Zittel ), raised substantial new questions of patentability and ordered ex parte reexamination of

12 6 Case No. To Be Assigned the 622 Patent. Id. at In the Office Action that followed, the Examiner rejected independent claim 1 as being anticipated by, or in the alternative obvious over, Morris 000. Id. at 183. The Examiner also rejected independent claim 1 as being anticipated by, or in the alternative obvious over, Zittel. Id. at 185. The Office Action also rejected claim 2 as being obvious over (i) Morris 000 in view of U.S. Patent No. 4,697,508, to Tallafus ( Tallafus ), and (ii) Zittel in view of Tallafus. Id. at In response to the Office Action, Patent Owner substantially amended independent claim 1 and added new claims 3-8. Id. at Patent Owner argued that the prior art failed to show or suggest the amended claim elements. Id. at However, as discussed in Section VI below, the prior art shows or suggests each and every element of the claims. During the ex parte reexamination, Patent Owner also filed a declaration under 37 C.F.R that included sales numbers and statements made by Patent Owner s president. Id. at Patent Owner used this declaration to argue that the combination of (1) a tank where the entire inner surface of the tank side walls is positioned parallel to the outer edges of the flights of the auger; (2) a tank filled with chilling water to a water level above the shaft of the auger and below the top of the flights of the auger; and (3) a tank where the entire inner surface of the tank side walls conforms closely to the outer edges of the flights of

13 the auger resulted in commercial success, thereby demonstrating that the independent claims of the 622 Patent were not obvious. Id. at However, as discussed in Section VI below, all of these elements are indeed shown or suggested by a single prior art reference, namely Innes (Ex. 1004). Because the elements that Patent Owner contended resulted in commercial success were known in the prior art, the purported commercial success should not have been deemed pertinent to the obviousness inquiry. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) ( [I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent [to the obviousness inquiry]. ); see J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) ( [T]he asserted commercial success of the product must be due to the merits of the claimed invention beyond what was readily available in the prior art. ); see also, Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (finding commercial success immaterial to the obvious inquiry when the patent owner failed to show that the commercial success was due to features that were not already available in the prior art). 7

14 Nonetheless, the Examiner issued a Notice of Intent to Issue Inter Partes Reexamination Certificate, 1 finding claims 1 and 2 patentable as amended. Ex. 1003, p The newly added claims 3-8 were also found patentable by the Examiner. Id. In the Statement of Reasons for Patentability and/or Confirmation, the Examiner stated that the prior art did not teach certain claim elements and that the declaration under 37 C.F.R was found to be persuasive and convincing. Id. at Patent Owner did not respond to the Examiner s Statement of Reasons for Patentability and/or Confirmation. IV. PERSON OF ORDINARY SKILL IN THE ART The technical field of the 622 Patent is poultry chillers. Ex. 1001, 1:5-9 ( The present invention relates to auger type poultry chillers[.] ); Ex. 1008, 12. A person of ordinary skill in the art of the of 622 Patent at the time of the alleged invention would typically have had a bachelor s degree in science or engineering, or a related field, and approximately two years of practical experience working directly with poultry chillers in a poultry processing facility that operates poultry chillers or by designing and manufacturing poultry chillers. Id. at The 622 Patent was subject to an ex parte reexamination not an inter partes reexamination. 8

15 V. CLAIM CONSTRUCTION A claim subject to inter partes review is given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). [C]laim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). Petitioner submits the broadest reasonable construction for a number of claim terms below. Petitioner reserves the right to apply different claim constructions in different forums, as different claim construction standards may be applicable. As identified below, several claim limitations invoke means-plus-function treatment under 35 U.S.C The broadest reasonable construction of a claim limitation that invokes 35 U.S.C is the structure, material, or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material, or act. In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994). A. semi-cylinder The term semi-cylinder is recited in claims 1 and 8. The 622 Patent states that the longitudinal walls 70 form a semi-cylinder which conforms closely to the 9

16 outer edges 72 of the auger 71. Ex. 1001, 4: FIGS. 1 & 5 of the 622 are shown below and illustrate a semi-cylinder, as the term is used in the 622 Patent. As shown in FIGS. 1 and 5, the cylindrical tank has a longitudinal opening. So, for the purposes of this inter partes review, the broadest reasonable interpretation of semi-cylinder is cylinder having a longitudinal opening. See Ex. 1008, 27. B. at least one flight The phrase at least one flight is recited in claims 1 and 8. The 622 Patent states, [t]he auger 10 may comprise one or more flights 11 which together form a helical structure. Ex. 1001, 4:2-4. In the ongoing litigation on the 622 Patent, Patent Owner submitted that the ordinary and accustomed meaning of flight includes one complete turn of something. Ex. 1009, p. 8. Thus, for the purposes of this inter partes review, Petitioner submits Patent Owner s proposed construction of this term, such that the phrase at least one flight means at least one complete turn of something. 10

17 C. wherein an entirety of said inner surface of said tank side walls is positioned parallel to said outer edges of said at least one flight of said auger The phrase wherein an entirety of said inner surface of said tank side walls is positioned parallel to said outer edges of said at least one flight of said auger is recited in claims 1 and 8. The term parallel does not appear in the specification of the 622 Patent. However, Patent Owner acted as its own lexicographer and clearly set forth and specified a definition of parallel. Specifically, during the ex parte reexamination of the 622 Patent, Patent Owner declared, As used herein, parallel means everywhere equally distant. Ex. 1003, p Thus, for the purposes of this inter partes review, Petitioner adopts Patent Owner s definition of parallel. As such, the phrase wherein an entirety of said inner surface of said tank side walls is positioned parallel to said outer edges of said at least one flight of said auger therefore means wherein an entirety of said inner surface of said tank side walls is positioned everywhere equally distant to said outer edges of said at least one flight of said auger. See Ex. 1012, pp It should also be noted that the very dictionary definition of parallel cited and relied upon by Patent Owner during the reexamination also provides as part of the definition the term concentric, which is also relevant to this analysis. See Ex. 1003, pp. 256 and

18 D. means for removing the food product from said outlet end The phrase means for removing the food product from said outlet end is recited in claims 1 and 3 and invokes means-plus-function treatment under 35 U.S.C In the ongoing litigation on the 622 Patent, Patent Owner has submitted that the structure in the 622 Patent that performs this recited function is an unloader, mentioned in col. 4, lines 29-32, of the 622 Patent. Ex. 1009, p. 8. For the purposes of this inter partes review, Petitioner submits Patent Owner s position that the unloader in col. 1, lines 31-32, 2 of the Ex Parte Reexamination Certificate for the 622 Patent is the structure that performs this recited function. E. means for discharging chilling water from said inlet end of said tank The phrase means for discharging chilling water from said inlet end of said tank is recited in claims 1 and 4 and invokes means-plus-function treatment under 35 U.S.C In the ongoing litigation on the 622 Patent, Patent Owner has submitted that a chilling water line is provided in col. 4, lines 20-29, and FIG. 2 of the 622 Patent and performs the recited function. Ex. 1009, p. 8. For the purposes of this inter partes review only, Petitioner submits Patent Owner s 2 Col. 1, lines 31-32, of the Ex Parte Reexamination Certificate amends col. 4, lines 29-32, of the 622 Patent as originally issued. 12

19 position that a chilling water line, provided in col. 4, lines 20-29, of the 622 Patent, performs this recited function. F. refrigerating means external to said outer surface of said tank for refrigerating the chilling water discharged from said inlet end of said tank The phrase refrigerating means external to said outer surface of said tank for refrigerating the chilling water discharged from said inlet end of said tank is recited in claims 1, 6, and 7 and invokes means-plus-function treatment under 35 U.S.C The structure in the 622 Patent that performs the recited function is a refrigeration system and/or a heat exchanger mentioned in col. 4, lines 23-27, and FIG. 2 of the 622 Patent. Ex. 1008, 31. G. means for re-circulating chilling water from said refrigerating means and introducing chilling water into said outlet end of said tank The phrase means for re-circulating chilling water from said refrigerating means and introducing chilling water into said outlet end of said tank is recited in claims 1 and 5 and invokes means-plus function treatment under 35 U.S.C In the ongoing litigation on the 622 Patent, Patent Owner has submitted that a chilling water line is provided in col. 4, lines 20-29, and FIG. 2 of the 622 Patent and performs the recited function. Ex. 1009, p. 8. For the purposes of this inter partes review, Petitioner submits Patent Owner s position 13

20 that a chilling water line, provided in col. 4, lines 20-29, of the 622 Patent, performs this recited function. H. means for sloping said tank from said outlet downwardly toward said inlet end end The phrase means for sloping said tank from said outlet end downwardly toward said inlet end is recited in claim 2 and invokes means-plus-function treatment under 35 U.S.C The structure in the 622 Patent that performs the recited function is a tank base or stand thatt is referred to in col. 5, lines 13-23, and FIG. 3 of the 622 Patent. Ex. 1008, 33. VI. CLAIMS 1-8 OF THE 622 PATENT ARE OBVIOUS OVER THE CITED PRIOR ART REFERENCES A. Overview of the Cited Priorr Art References 1. Innes (Ex. 1004) Innes describes a counter-flow auger-style poultry chiller having a tank of substantially semi-cylindrical form with a worm (i.e., an auger) mounted on a shaft within the interior of the tank. Ex. 1004, 3: The worm 4 is dimensioned so as to closely approach the surface of the tank 3 which may be semicylindrical and extend 270 or more aroundd the worm. Id. at 3: The worm is mounted within the tank such that thee worm s shaft is coaxial with the tank s axis. Id. at 4:67-5:1. 14

21 15 Case No. To Be Assigned During operation, water, which may be pre-chilled by an external refrigeration system, is provided to the tank through an inlet at the end of the tank where poultry carcasses are unloaded from the tank. Id. at 4: The chilled water flows towards an overflow pipe that is located on the end of the tank where eviscerated carcasses are added. Id. at 3:50-52 and 2: Innes discloses that the worm rotates, causing the poultry carcasses to proceed from the input end to the output end of the tank. Id. at 2:51-52, 3:21-24, and 4: When a carcass arrives at the output end of the tank, the carcasses are removed using an unloader. Id. at 4:25-27; see, Ex. 1008, 15; see also, Ex. 1010, 171:14-172:4 (Andrew Estes, one of the inventors of the 622 Patent, identifying the discharge mechanism of Innes as being an unloader). Although Innes was considered during the prosecution of the application that resulted in the 622 Patent, Innes was not later relied upon as a basis for rejection during the ex parte reexamination, when all of the independent claims were either substantially amended or added. See Ex. 1003, pp Therefore, arguments presented herein using Innes as a basis for invalidity have not been previously considered by the Patent Office. Moreover, even if the Patent Office had previously considered the arguments presented herein (which it has not), the Board would still be permitted to institute trial. MacAuto U.S.A. v. BOS GmbH & KG, IPR , Paper 18, p. 19 (Jan. 24, 2013) ( [The Board] is not required by

22 statute to reject a Petition based upon the fact that certain arguments or art were previously considered by the Office[.] ). 2. Crawford (Ex. 1005) Crawford describes a drag-style poultry chillerr that conveys poultry carcasses through an elongated, open-top tank. Ex. 1005, 2:46-60; Ex. 1008, 16. Chilled water enters the tank near the end of the tank where carcassess are discharged and flows to the end of the tank where the carcasses enter the tank. Ex. 1005, 3: A portion of the chilled water, along with grease and particles, exits the tank throughh an overflow line. Id. at 3:5-10. Another portion of the chilled water exits the tank through a chilling water line that is inn communication with a pump that provides this water to a refrigeration system. Id. at 3:5-13; Ex. 1008, 44. The refrigeration system chills the received water through use 1005, 2:68-3:5. Another chilling water line provides the of a heat exchanger. chilled water to the Ex. tank near the outlet end of the tank. Id. at 2:68-3:5; Ex. 1008, 45. Although Crawford was considered duringg the prosecution of the application that resulted in the 622 Patent, Crawford was not later relied upon as a basiss for rejection during the ex parte reexamination, when all off the independent claims were either substantially amended or the arguments presented herein using added. Ex. 1003, pp Therefore, Crawfordd as a basis for invalidity have not 16

23 been previously considered d by the Patent Office. Moreover, even if the Patent Office had previously considered the arguments presented herein (which it has not), the Board would still be permitted to institute trial. See MacAuto U.S.A. v. BOS GmbH & KG, IPR , Paper 18, p. 19 (Jan. 24, 2013) ( [The Board] is not required by statute to rejected a Petitionn based upon the fact that certain arguments or art were previously considered by the Office[ [.] ). 3. Morris 0000 (Ex. 1006) Morris 0000 describes a counter-flow auger-style chiller in which an auger rotates to move poultry carcasses from an inlet end to an outlet end of a tank. Ex. 1006, 1:6-8 and 1: The water exits the tank at the end where carcasses enter the tank and is provided to a refrigeration unit that re-chills the water. Id. at 1: The re-chilled water is then returned to the tank near the end of the tank where carcasses are output. Id. When a poultry carcass arrives at the output end, an unloader removes the carcass from the tank. Ex , 73 and 80. Although Morris 0000 was considered during the ex parte reexamination of the 6222 Patent, the arguments presented hereinn using Morris 000 as a basiss for invalidity have not been previously considered d by the Patent Office. Moreover, even if the Office had previously considered d the arguments presented herein (which they have not), the Board would still be permitted to institute trial. See MacAuto U.S.A. v. BOS GmbH & KG, IPR , Paper 18, p. 19 (Jan. 24, 17

24 2013) ( [The Board] is not required by statute too rejected a Petition based upon the fact thatt certain arguments or art were previouslyy considered by the Office[.] ).. 4. Morris 101 (Ex. 1007) Morris 1011 describess a poultry chiller that has an elongated cylindrical tank. Ex. 1007, 1:9-11. The tank is mounted on a base such that the tank is sloped downwardly from the discharge end to the feed end of the tank. Id. at 3: In particular, a saddle beam 19 rises from the base frame to position the tank in a sloped position. Id. Morris 101 was not used as a basiss for rejecting any of the claims in either the prosecution or the reexamination of the 622 Patent. B. Ground I: Claims 1 and 3-8 Are Obvious over Innes Crawford and The following claim charts and discussionn below demonstratee that claims 1 and 3-8 are obvious over Innes and Crawford. 1. Claim 1 Claim Limitation ns Disclosure by the Prior Art [1.P] An auger type food product Ex (Innes), abstract: A counter- chiller, comprising: flow food chiller provided with an oscillating screw-feed. [1.A] a tank comprising longitudinal Ex (Innes), 3:38-42: the chiller side walls having an inlet end and an consistss of a tank 3 of substantially semi- to outlet end, an inlet wall closing said cylindrical form of a size sufficient inlet end, an outlet wall closing said containn the desired quantity of carcasses outlet end, wherein said longitudinal and water and which includes in its side walls comprise an inner surface interiorr a worm 4[.] and an outer surface, wherein said longitudinal side walls, said inlet wall Ex (Innes),, 3:47-52: Refrigeration and said outlet wall together form a coils 7 are mounted on the exterior of the 18

25 semi-cylinder having an inner surface and an outer surface; [1.B] an auger comprising a shaft and a helical blade, wherein said helical blade forms at least one flight having outer edges, wherein said helical blade and said inner surface of said tank side walls forms a helical path between said inlet end of said tank and said outlet end of said tank, said auger mounted for rotation within said tank and having an axis of rotation whereby rotation of said auger moves a food product along said helical path from said inlet end of said tank to said outlet end of said tank; tank 3..., and a suitable water inlet [is] provided at 8 at the output end of the chiller. A water overflow is provided at the input end 10[.] Ex (Innes), FIG. 1. Ex (Innes), 3:38-44: the chiller consists of... a worm 4 mounted on a shaft 5. The shaft 5 passes through a suitable seal in the end of the tank and is connected to and driven by a reciprocating drive 6. Ex (Innes), 4:10-12: The worm picks up the carcasses and tumbles them about by the action of the paddles and the steps in the worm. Ex (Innes), 4:21-25: because the average motion of the worm is such as to cause the carcasses to proceed down the tank from the evisceration line to the discharge end, the net motion of the carcasses is towards the discharge. Ex (Innes), 4:30-36: By selecting a suitable rate of rotation, the carcasses can be agitated in the tank... and, at the same time, the ratio of forward motion to backward motion can be adjusted to ensure that the dwell time in the tank is optimized to produce sufficient chilling of the carcass[.] Ex (Innes), 3:14-19: Revolutions are indexed so that reverse revolutions are less than the forward revolutions and a net forward action occurs at a rate appropriate to retaining the carcasses in the chill 19

26 [1.C] a volume of chilling water, wherein said tank is filled with said volume of said chilling water to a water level above said shaft of said auger and below a top of said at least one flight of said auger, system long enough to extract the body heat necessary to reduce the internal meat temperature[.] Ex (Innes), 3:49-52: a suitable water inlet [is] provided at 8 at the output end 9 of the chiller. A water overflow is provided at the input end 10 and is designated 11. Ex (Innes), 2:32-38: To chill poultry most efficiently, it would be preferable to use water as a chilling medium,... with a surplus of water being added to the tank at the end of the tank where the chilled poultry is exited and the overflow of water occurring at the end where the unchilled poultry is received into the tank. Ex (Innes), 4:12-15: Water from inlet 8, which may be prechilled, is introduced adjacent the output end of the tank tending to chill the carcasses at that end and is further cooled by the refrigeration coils 7[.] [1.D] wherein an entirety of said inner surface of said tank side walls is positioned parallel to said outer edges of said at least one flight of said auger and wherein said entirety of said inner surface of said tank side walls conforms closely to said outer edges of said one or more flights of said auger, thereby forcing said chilling water to flow along said helical path when said auger rotates and impeding a flow of said chilling water between said tank Ex (Innes), FIG. 1. Ex (Innes), 3:44-47: The worm 4 is dimensioned so as to closely approach the surface of tank 3 which may be semicylindrical and extend 270 or more around the worm. Ex (Innes), 4:67-5:1: a screw-feed mechanism mounted within said tank with its axis coaxial with axis of said tank and its outer edges closely approaching the inner surface of said tank. 20

27 side walls and said outer edges of said at least one flight of said auger when said auger rotates; [1.E] means from removing the food product from said outlet end; Ex (Innes), 3:54-56: A discharge mechanism 14 at the output end removes the carcasses from the chiller and discharges them for further processing. Ex (Innes), 4:25-27: After tumbling and chilling in the cold water, the carcasses are discharged into the discharge chute 14. [1.F] means for discharging chilling water from said inlet end of said tank; Ex (Innes), FIG. 1. Ex (Innes), 3:50-51: A water overflow is provided at the input end 10 and is designated 11. Ex (Innes), FIG. 1. Ex (Crawford), 3:5-10: The chilled liquid then flows downstream through the tank 12 and exists [sic] adjacent the loading end of the tank 12 at either position 28 as water overflow which is discarded as waste water along with floating grease and particles, or at position 30 as water for recycle. Ex (Crawford), 5:8-9: Further details of the tank 12 include an outlet 128 at position 30 for providing liquid to pump 32 for recycle. [1.G] refrigerating means external to said outer surface of said tank for refrigerating the chilling water discharged from said inlet end of said Ex (Crawford), FIG. 4. Ex (Crawford), 3:10-13: Recycled water exiting at position 30 enters pump 32 and is pumped through a cooling system 34, wherein the recycled water is 21

28 tank; and [1.H] means for re-circulating chilling water from said refrigerating means and introducing chilling water into said outlet end of said tank. cooled by giving off heat to a heat exchanger 36, such as a refrigeration unit. Ex (Innes), 3:49-50: [A] suitable water inlet provided at 8 at the output 9 of the chiller. Ex (Innes), 4:12-14: Water from inlet 8, which may be prechilled, is introduced adjacent the output end[.] Ex (Innes), FIG. 1. Ex (Crawford), 5:10-13: Known in the art but not shown is a liquid inlet at position 24 for return of the cooled recycled liquid to the tank 12 at position 26. Claim element [1.A] recites, a tank comprising longitudinal side walls having an inlet end and an outlet end, an inlet wall closing said inlet end, [and] an outlet wall closing said outlet end. FIG. 1 of outlet wall Innes, a portion of which is shown to the right, illustrates that Innes s tank has longitudinal side walls, an inlet wall, and an outlet wall. Claim element [1.A] also recites, wherein said longitudinal side walls, said inlet wall and said side walls inlet wall outlet wall together form a semi-cylinder. The background of the 622 Patent admits that Innes discloses an auger chiller with a semi-cylindrical tank. Ex. 22

29 23 Case No. To Be Assigned 1001, 2:48-51, 1: See also, Ex. 1008, Furthermore, Andrew Estes, one of the named inventors of the 622 Patent, has admitted that Innes s tank is a semi-cylindrical tank. Ex. 1010, 146:13-147:16; see also, Ex. 1011, p. 2 (Andrew Estes s annotations of FIG. 1 of Innes). Claim element [1.B] recites, wherein said helical blade and said inner surface of said tank side walls forms a helical path between said inlet end of said tank and said outlet end of said tank. Innes discloses an auger that closely approach[es] the surface of the tank. Ex. 1004, 3: By virtue of this configuration, as one of ordinary skill in the art would know, the auger and the interior walls of the tank disclosed in Innes form a helical path between the inlet end and the outlet end of the tank. Ex. 1008, 35 and 37. Claim element [1.B] also recites, whereby rotation of said auger moves a food product along said helical path from said inlet end of said tank to said outlet end of said tank. The auger in Innes rotates such that carcasses move from the inlet end to the outlet end of the tank. Ex. 1008, 35 and 38. The background of the 622 Patent also admits that Innes s chiller uses an auger to move carcasses from the input end to the output end of the tank. Ex. 1001, 1: Claim element [1.C] recites, wherein said tank is filled with said volume of said chilling water to a water level above said shaft of said auger and below a top of said at least one flight of said auger. FIG. 1 of Innes, a portion of which is

30 provided below, shows that the pipe for water overflow 11 is above the shaft 5, indicating that the water level rises above the shaft of the auger. Ex. 1008, 35 and 39; see also Ex. 1010, 185:16-186:4 and 103:6-23 (Andrew Estes, one of the named inventors of the 622 Patent, describing how the overflow pipe 11 of Innes sets the water level so that the water level is above the auger shaft, and thereby top of flight top of tank admitting the water level is above the shaft). Additionally, FIG. 1 of Innes shows that the top of the refrigeration coils are higher than the shaft of the top of coils overflow pipe auger, further indicating that the water shaft level is above the shaft of the auger, since the refrigeration coils would otherwise be chilling air, which would be inefficient and contrary to the goal of chilling poultry carcasses. Ex. 1008, 39. Because the top of the flight of Innes s auger is above the tank s open top, the water level cannot be above the top of the flight. Id. Accordingly, the chilling water in the tank in Innes satisfies claim element [1.C]. Claim element [1.D] recites, said inner surface of said tank side walls is positioned parallel to said outer edges of said at least one flight of said auger. Innes discloses that the auger is coaxial with the axis of the tank, and the outer edges of the auger closely approach the inner surface of the tank. Ex. 1004, 24

31 25 Case No. To Be Assigned 4:67-5:1, 3: To be coaxial is to have a common axis, or to be concentric, which, notably, is the very term contained in the definition relied upon by Patent Owner during the reexamination of the 622 Patent. See Ex. 1003, pp. 256 and 268. In order to be parallel or everywhere equally distant, the axis of the tank and the axis of the auger flights have to be the same, or concentric/coaxial. Thus, in Innes, the inner surface of the tank side walls is positioned equally distant to the outer edges of the flight of the auger. See Ex. 1008, 35 and 40. Claim [1.D] also recites, said inner surface of said tank side walls conforms closely to said outer edges of said one or more flights of said auger. The outer edges of the auger in Innes closely approach the surface of the tank. Ex. 1004, 3:44-47 and 4:67-5:1. Thus, the inner surface of Innes s tank has a similar shape, and is near in space relative to, the outer edges of the one or more flights of the auger. Ex. 1008, 35 and 41. By virtue of the auger being coaxial with the axis of the tank and the auger s outer edges closely approaching the inner surface of the tank, chilling water in Innes is (i) forced to flow in a helical path along the tank and (ii) impeded from flowing between the tank side walls and the outer edges of the auger to the same extent as described in the 622 Patent. Id. Claim [1.E] recites, means for removing the food product from said outlet end. Innes discloses a discharge mechanism, which includes an unloader that removes food product from the outlet end of the tank. Ex. 1008, 35 and 42. In

32 particular, a step associated with the auger uplifts carcasses and delivers the carcasses to a discharge chute, thereby unloading the carcass from the tank. Id. Innes s unloader discharges birds from the tank and is at least an equivalent to the unloader of the 622 Patent. Id. Indeed, Andrew Estes, one of the named inventors of the 622 Patent, identified Innes s discharge mechanism as being an unloader. Ex. 1010, 171:14-172:4. Claim element [1.F] recites, means for discharging chilling water from said inlet end of unloader discharge chute step said tank. In Innes, the overflow pipe 11 at the input end 10 of the tank 3 performs the claimed function of discharging chilling water from the inlet end of the tank. Ex. 1004, 3: Ex. 1008, 35 and 43. Also, Crawford discloses a chilling water line that performs this recited function as well. Ex. 1005, 3:5-10, 5:8-9; Ex. 1008, 35 and 43. FIG. 4 of Crawford, a portion of which is provided below, also illustrates this chilling water line. Additionally, the background of the 622 Patent admits that Crawford discloses this claim element. See Ex. 1001, 1:27-37, 1: Furthermore, during the reexamination of the 622 Patent, Patent Owner stated, Crawford arguably teaches means for discharging chilling water from said inlet end of said tank[.] See Ex. 1003, pp

33 Claim element [1.G] recites, refrigerating means external to said outer surface of said tank for refrigerating the chilling water discharged from said inlet end of said tank. The cooling system and/or the heat exchanger in Crawford is a refrigeration system that performs this recited function while being outside of the tank. Ex. 1005, 3:10-13; Ex. 1008, 35 and 44. FIG. 4 of Crawford, a portion of which is provided above, also illustrates the disclosed refrigeration system. Additionally, the background of the 622 Patent admits that Crawford discloses this claim element. See Ex. 1001, 1:25-37, 1: Furthermore, during the reexamination of the 622 Patent, Patent Owner stated, Crawford arguably teaches... refrigeration means external to said outer surface of said tank for refrigerating the chilling water discharged from said inlet end of said tank[.] See Ex. 1003, pp chilling water line [1.H] Claim element [1.H] recites, means for re-circulating chilling water from said refrigerating means and introducing chilling water into said outlet end of said tank. Crawford discloses a chilling water line that performs this recited function. Ex. 1005, 5:10-13; Ex. 1008, 35 and 45. FIG. 4 of Crawford, a portion of which is provided above, illustrates this chilling water line. Additionally, the background 27 refrigeration system chilling water line [1.F]

34 28 Case No. To Be Assigned of the 622 Patent admits that Crawford discloses this claim element. See Ex. 1001, 1:25-37, 1: Furthermore, during the reexamination of the 622 Patent, Patent Owner stated, Crawford arguably teaches... means for re-circulating chilling water from said refrigeration means[.] See Ex. 1003, pp In addition, Innes also discloses a chilling water line that introduces prechilled water into the outlet end of the tank. Ex. 1004, 3:49-50, 4:12-14; Ex. 1008, 35 and 45. It would have been obvious to a person of ordinary skill in the art to combine the water refrigeration/recirculation system of Crawford with the chiller of Innes. See Ex. 1008, 46. For example, Crawford s chilling water line at point 30 in FIG. 4 could easily be coupled to the end of Innes s tank where carcasses are input. Id. In addition, Crawford s chilling water line (at point 24 in FIG. 4) could easily be coupled to the end of Innes s tank where carcasses are unloaded. Id. Essentially, the chiller tank 12 in FIG. 4 of Crawford could easily be replaced with the chiller tank 3 of Innes at Innes s water inlet 8 and water overflow 11. Id. Additionally, Innes suggests the use of an external refrigeration system by discussing the use of pre-chilled water from an external refrigeration system being provided to the tank. See Ex. 1004, 4: Furthermore, a person having ordinary skill in the art would be motivated to use Crawford s water refrigeration/recirculation system with Innes s chiller to, for example, conserve water being used to chill carcasses through recirculation. Ex. 1008, 46. Plus,

35 one of ordinary skill in the art would be motivated to use Crawford s refrigeration/recirculation system to chilling versus the refrigeration coils achieve a higher efficiency level of water 7 of Innes that jacket the outer shell of the tank 3, thereby resulting in greater chilling capabilities for the poultry carcasses. Id. Indeed, the background of the 622 Patent even cites Crawford as an example of a more common water recirculation system that has an external refrigeration system. See Ex. 1001, 1:28-37, 1: Furthermore, the combinationn of Crawford and Innes would be using Crawford s water refrigeration/recirculation system for its intended purpose, whichh is refrigerating and recirculating water. See Ex. 1005, 3:5-13. Therefore, the combination of Innes with Crawford would have been an obvious combination that would have been well within the abilities of a person having ordinary skilll in the art. See Ex. 1008, Claim 3 Claim Limitation ns [3] The auger type food product chiller of claim 1, wherein said means for removing the food product from said outlet end comprises an unloader. Disclosure by the Prior Art Ex (Innes), 3:54-56, A discharge mechanism 14 at t the outpu end removes the carcasses from the chiller and discharges them for further processing. Ex (Innes), 4:25-27, After tumbling and chilling in the cold water, the carcasses are discharged into the discharge chute

36 As discussed above in Section VI.B.1, Innes teaches the use of an unloader to remove carcasses from the tank. See Ex. 1008, 35, 42, and Additionally, Andrew Estes, one of the named inventors of the 622 Patent, identified Innes ss discharge mechanism as being an unloader. See Ex. 1010, 171:14-172:4. 3. Claim 4 Claim Limitation ns [4] The auger type food product chiller of claim 1, wherein said means for discharging chilling water from said inlet end of said tank comprises a first chilling water line. Disclosure by the Prior Art Ex (Innes), 3:50-52: A water overflow is provided at the input end 10 and is designated 11. Ex (Innes), FIG. 1. Ex (Crawford), 3:5-10: The chilled liquid then flows downstream throughh the tank 12 and exists [sic] adjacent the loadingg end of the tank 12 at either positionn 28 as water overflow which is discarded as waste water along with floatingg grease and particles, or at positionn 30 as water for recycle. Ex (Crawford), 5: :8-9: Further details of the tank 12 include an outlet 128 at position 30 for providing liquid to pump 32 for recycle. Ex (Crawford), FIG

37 As discussed above in Section VI.B.1, both Innes and Crawford teach use of a chilling water line to discharge chilling water Ex. 1008, 35, 43, and from the inlet end of the tank. See 4. Claim 5 Claim Limitation ns [5] The auger type food product chiller of claim 1, wherein said means for re- circulating chilling water from said refrigerating means and introducing chilling water into said outlet end of said tank comprises a second chilling water line. Disclosure by the Prior Art Ex (Innes), 3:50-51: A water overflow is provided at the input end 10 and is designated 11. Ex (Innes), 4:12-14: : Water from inlet 8, which may be prechilled, is introduced adjacent the output end of the tank[.] Ex (Innes), FIG. 1. Ex (Crawford), 5:10-13: Known in the art but not shown is a liquid inlet at positionn 24 for return of the cooled recycledd liquid to the tank 12, and an inlet for entry of the make-up water into the tank 122 at position 26. As discussed above in Section VI.B.1, Crawford teaches use of a chilling water line to recirculate chilling water from the refrigeration system and to introduce the chilling water into the outlet end of the tank.. See Ex. 1008, 35, 45, and In addition, Innes discloses that a water inlet 8 to tank 3 is used for introducing prechilled water into the tank 3. Id. 31

38 5. Claim 6 Claim Limitation ns [6] The auger type food product chiller of claim 1, wherein said refrigeratingg means external to said outer surface of said tank for refrigerating the chilling water discharged from said inlet end of said tank comprises a refrigeration system. Disclosure by the Prior Art Ex (Crawford), 3:10-13: Recycled water exiting at position 30 enters pump 32 andd is pumped through a cooling system 34, wherein the recycled water is cooled by giving off heat to a heat exchanger 36, such as a refrigeration unit. As discussed above Ex (Crawford), FIG. 4. in Section VI.B.1,, the cooling system and/or heat exchanger disclosed by Crawford is a refrigeration system that refrigerates the chilling water discharged from the tank. See Ex , 35, 44, and Claim 7 Claim Limitation ns [7] The auger type food product chiller of claim 1, wherein said refrigeratingg means external to said outer surface of said tank for refrigerating the chilling water discharged from said inlet end of said tank comprises a heat exchanger. Disclosure by the Prior Art Ex (Crawford), 3:10-13, Recycled water exiting at position 30 enters pump 32 andd is pumped through a cooling system 34, wherein the recycled water is cooled by giving off heat to a heat exchanger 36, such as a refrigeration unit. Ex (Crawford), FIG. 4. As discussed above in Section VI.B.1, Crawford discloses a heat exchanger that is used to refrigerate the chilling water discharged from the tank. Seee Ex. 1008, 35, 44, and