`
`Filed May 27, 2025
`
`On behalf of FreightCar America, Inc.
`By: Philip Nelson (Reg. No. 62,676)
`Ted M. Cannon (Reg. No. 55,036)
`Justin Gillett (Reg. No. 71,099)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`Emails: FCAIPR-515-047@knobbe.com
`
` FCAIPR-515-048@knobbe.com
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`
`FREIGHTCAR AMERICA, INC.,
`Petitioner,
`
`v.
`
`NATIONAL STEEL CAR LIMITED,
`Patent Owner.
`
`
`
`Case IPR2024-01047
`
`Case IPR2024-01048
`Patent 8,132,515
`
`
`
`PETITIONER’S NOTICE OF RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,132,515
`
`
`
`
`
`
`
`FreightCar America v. National Steel Car
`IPR Petition – U.S. Patent No. 8,132,515
`
`
`Petitioner FreightCar America, Inc. filed two concurrent inter partes review
`
`(“IPR”) petitions against U.S. Patent No. 8,132,515 (“the ’515 Patent”). The
`
`following chart identifies the grounds asserted in both petitions.
`
`GROUND
`
`CLAIMS
`
`OBVIOUSNESS REFERENCES
`
`IPR-2025-01047
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`1–2
`
`Hart and 1906 Cyclopedia
`
`3
`
`4
`
`Hart, 1906 Cyclopedia, and Schuller
`
`Hart, 1906 Cyclopedia, Schuller and Karig
`
`5–6
`
`Hart, 1906 Cyclopedia, and Campbell ’652
`
`7–16, 20–23,
`24–28, 30–31
`
`17–19
`
`Hart, 1906 Cyclopedia, and Wong
`
`Hart, 1906 Cyclopedia, Wong and Campbell
`’051
`
`21–22, 29
`
`Hart, 1906 Cyclopedia, Wong and Schuller
`
`32–34
`
`35–44
`
`Lindström, Wong, Ratcliffe and Hart
`
`Lindström, Wong, Ratcliffe, Hart and 1946
`Cyclopedia
`
`
`
`IPR-2025-01048
`
`GROUND
`
`CLAIMS
`
`OBVIOUSNESS REFERENCES
`
`1
`
`2
`
`1, 2, 5, 6, 20, 23 1946 Cyclopedia and Coates or 1922
`Cyclopedia
`
`3 and 21–22
`
`1946 Cyclopedia, Coates or 1922 Cyclopedia,
`and Schuller
`
`1
`
`
`
`FreightCar America v. National Steel Car
`IPR Petition – U.S. Patent No. 8,132,515
`
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`4
`
`1946 Cyclopedia, Coates or 1922 Cyclopedia,
`Schuller, and Karig
`
`7–16, 18–19, 24–
`27, 30–35, 38–42
`
`1946 Cyclopedia and Wong
`
`17
`
`28
`
`29
`
`36–37
`
`43–44
`
`1946 Cyclopedia, Wong, and Campbell ’051
`
`1946 Cyclopedia, Wong, and Coates or the
`1922 Cyclopedia
`
`1946 Cyclopedia, Wong, Coates or 1922
`Cyclopedia, and Schuller
`
`1946 Cyclopedia, Wong, and Schuller
`
`1946 Cyclopedia, Wong, and Lïndstrom
`
`
`
`Differences Between the Petitions
`
`
`IPR 2025-01047
`
`IPR 2025-01048
`
`I.
`
`
`
`Primary Reference
`
`Hart (claims 1–31)
`
`Lindström (claims 32–44)
`
`Date of primary references Hart (1911)
`
`Lindström (1919)
`
`1946 Cyclopedia
`(claims 1–44)
`
`1946 Cyclopedia
`(1946)
`
`Total references in grounds 10
`
`9
`
`Number of claims addressed
`in two main grounds
`
`2 (Ground 1)
`
`21 (Ground 5)
`
`6 (Ground 1)
`
`27 (Ground 4)
`
`
`The differences between the petitions noted in the chart above are not intended
`
`to be exhaustive.
`
`
`
`2
`
`
`
`FreightCar America v. National Steel Car
`IPR Petition – U.S. Patent No. 8,132,515
`
`II.
`
`Both Petitions Demonstrate That The Claims Are Unpatentable, In
`Materially Different Ways
`
`Both petitions present compelling evidence that every claim of the ’515 patent
`
`is unpatentable. However, because the ’515 patent’s lengthy claim set includes
`
`different variants of the claimed inventions, two petitions are warranted to present
`
`different arguments relying on materially different primary references to present the
`
`strongest unpatentability argument for each variant of the claimed invention. The
`
`differences between the two petitions arise from two sources: (1) the different dates
`
`of the primary references; and (2) the different roles played by the primary
`
`references in the respective petitions.
`
`The first-ranked petition relies on the Hart reference from 1911 as its primary
`
`reference. Hart discloses the allegedly novel aspect on which the patent owner relied
`
`to secure allowance of the patent: a machinery space below the hopper car’s slope
`
`sheet that is “free of primary structure.” Hart demonstrates that this is not new. Hart
`
`dates to the dawn of metal freight cars, and as a result it lacks some of the claimed
`
`features that became standard hopper-car features decades before the patent owner
`
`filed for the ’515 patent in 2009. Thus, the first-ranked petition also relies on
`
`secondary references listed in the Grounds table above, which disclose certain later-
`
`developed hopper-car features, along with all other claimed features.
`
`The second-ranked petition relies on the 1946 Cyclopedia as its primary
`
`reference. The 1946 Cyclopedia demonstrates that the numerous standard hopper-
`
`3
`
`
`
`FreightCar America v. National Steel Car
`IPR Petition – U.S. Patent No. 8,132,515
`
`car features recited in the ’515 patent’s lengthy claims were not novel, even
`
`collectively. This reference was published decades after Hart and therefore discloses
`
`certain claimed hopper-car features that became commonplace after 1911. The
`
`second-ranked petition relies on the secondary references listed in the Grounds table
`
`above, which disclose a machinery space below the hopper car’s slope sheet that is
`
`“free of primary structure,” along with all other claimed features.
`
`Accordingly, while both petitions prove all claims unpatentable, the petitions
`
`rely on materially different prior art to present the strongest unpatentability argument
`
`for each variant of the claimed invention. In view of the compelling and non-
`
`cumulative arguments presented in each petition, Petitioner respectfully requests that
`
`the Board should exercise its discretion to institute both petitions.
`
`III.
`
`
`The Patent Owner Has Asserted A Large Number of Claims In
`Litigation
`
`In National Steel Car Limited v. FreightCar America, Inc. et al., No. 1:24-cv-
`
`00594 (D. Del.), the patent owner has asserted a large number of claims. In
`
`particular, claims 1 and 3–44 have all been asserted, of which 1, 7, 18, 20, 24, and
`
`32 are independent. Thus, a total of 43 claims, and 6 independent claims have been
`
`asserted. Because of the large number of asserted claims—and the fact that the
`
`claims themselves are more than 4,000 words long—it is impractical for Petitioner
`
`to present both its Hart grounds and its 1946 Cyclopedia grounds in a single petition.
`
`4
`
`
`
`FreightCar America v. National Steel Car
`IPR Petition – U.S. Patent No. 8,132,515
`
`Accordingly, the Board should exercise its discretion to institute both petitions to
`
`have the benefit of both the Hart and 1946 Cyclopedia grounds.
`
`IV.
`
`Ranking of Petitions
`
`Petitioner requests that the Board institute both petitions and consider them in
`
`the following order:
`
`Rank
`
`Petition
`
`Primary References
`
`Claims
`
`1
`
`2
`
`IPR2025-01047
`
`IPR2025-01048
`
`Hart (claims 1–31)
`Lindström (claims 32–44)
`
`1946 Cyclopedia
`
`1–44
`
`1–44
`
`
`
`
`
`Dated: May 27, 2025
`
`
`
`
`
` By: / Philip M. Nelson /
`Philip M. Nelson (Reg. No. 62,676)
`KNOBBE MARTENS OLSON & BEAR, LLP
`
`Attorney for Petitioner FreightCar America, Inc.
`
`
`
`5
`
`
`
`FreightCar America v. National Steel Car
`IPR Petition – U.S. Patent No. 8,132,515
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the date below a copy of this Notice
`
`Ranking Petitions was sent by FedEx to the Patent Owner at the correspondence
`
`address of record for the subject patent as follows:
`
`
`21324 – HAHN LOESER & PARKS, LLP
`200 Public Square, Suite 2800
`Cleveland, OH
`UNITED STATES
`
`
`
`A courtesy copy has been sent by email on this day to Patent Owner’s counsel
`
`of record in the matter identified in Section I.B of the Petition as follows:
`
`John W. Shaw
`Andrew E. Russell
`SHAW KELLER LLP
`I.M. Pei Building
`1105 North Market Street, 12th Floor
`Wilmington, DE 19801
`(302) 298-0700
`jshaw@shawkeller.com
`arussell@shawkeller.com
`
`
`Safet Metjahic
`Robert D. Keeler
`ICE MILLER LLP
`1500 Broadway, Suite 2900
`New York, NY 10036
`(212) 824-4940
`Metiahic@icemiller.com
`Robert.Keeler@icemiller.com
`
`Kenneth Sheehan
`ICE MILLER LLP
`200 Massachusetts Ave NW, Suite 400
`Washington, DC 20001
`(202) 807-4055
`Ken.sheehan@icemiller.com
`
`
`
`Dated: May 27, 2025
`
`
`
` By: / Philip M. Nelson /
`Philip M. Nelson (Reg. No. 62,676)
`KNOBBE MARTENS OLSON & BEAR, LLP
`
`
`
`
`-6-
`
`
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