`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MINDGEEK USA INC., MINDGEEK S.A.R.L., MG FREESITES LTD., MG
`FREESITES II LTD., MG CONTENT RK LTD., MG CONTENT DP LTD., MG
`CONTENT RT LTD., MG PREMIUM LTD., MG CONTENT SC LTD., MG
`CYPRUS LTD., LICENSING IP INTERNATIONAL S.A.R.L., 9219-1568
`QUEBEC INC. d/b/a ENTERPRISE MINDGEEK CANADA, and COLBETTE II
`LTD.,
`Petitioners,
`
`v.
`
`UNIVERSITY OF SOUTHERN CALIFORNIA,
`Patent Owner.
`_______________
`
`Case IPR2019-00421
`Patent 6,199,060
`_______________
`___________________________________
`
`PATENT OWNER UNIVERSITY OF SOUTHERN CALIFORNIA’S
`PRELIMINARY RESPONSE UNDER 37 C.F.R. § 42.107
`___________________________________
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`I. INTRODUCTION .................................................................................................. 2
`II. STATEMENT OF MATERIAL FACTS IN DISPUTE ...................................... 2
`III. STATEMENT OF RELIEF REQUESTED ..................................................... 3
`A. OVERVIEW OF THE ’060 PATENT ................................................................ 3
`B. LEVEL OF ORDINARY SKILL IN THE ART ................................................. 5
`C. CLAIM CONSTRUCTION ................................................................................ 6
`IV. THE PETITION FAILS TO MEET THE REQUIREMENTS FOR
`INSTITUTING AN INTER PARTES REVIEW ........................................................ 6
`IV. CONCLUSION ................................................................................................ 7
`
`
`
`
`
`
`
`
`ii
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`
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`I. INTRODUCTION
`Patent Owner University of Southern California (“Patent Owner”)
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`respectfully submits this Patent Owner Preliminary Response under 35 U.S.C. §
`
`313 and 37 C.F.R. § 42.107(a) in response to a Petition filed by Petitioners
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`MindGeek USA, Inc. and MindGeek S.A.R.L., among other MindGeek entities
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`(collectively, “Petitioners”). It is being timely filed on or before May 6, 2019
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`pursuant to 37 C.F.R. § 42.107(b).
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`“The Director may not authorize an inter partes review to be instituted unless
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`the Director determines that the information presented in the petition filed under
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`section 311 and any response filed under section 313 shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
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`the claims challenged in the petition.” 35 U.S.C. § 314(a). Here, institution should
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`be denied because Petitioners admit they are time barred under 35 U.S.C. § 315(b)
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`because the Petition was filed more than one year after the date on which Petitioners
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`were served with a complaint alleging infringement of the patent:
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`The complaint was served on October 14, 2014 [more than 1 year before the
`filing of the instant petition]. Petitioners acknowledge recent Federal Circuit
`precedent that even if a complaint is voluntarily dismissed, the one year IPR
`time bar applies to such a complaint.
`
`Paper 1 (Petition) at 5.
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`II.
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioners did not submit a statement of material facts in its Petition for inter
`
`
`
`2
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`
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`partes review. Paper 1 (Petition). Accordingly, no response to a statement of
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`material facts is due pursuant to 37 C.F.R. § 42.23(a). Patent Owner notes
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`Petitioners do not dispute that Preservation Technologies LLC, the exclusive
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`licensee of the ’060 patent, served on Petitioners a complaint alleging infringement
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`of the ’060 patent on October 14, 2014, more than 1 year prior to the filing date of
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`the Petition. Paper 1 (Petition) at 5. Although the case at issue, Preservation
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`Technologies LLC v. MindGeek USA Incorporated, 1:14-cv-01292-SLR (D. Del.),
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`was dismissed without prejudice, it is also undisputed service of this complaint
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`triggered the one year time bar under 35 U.S.C. § 315(b). Id.; see Click-To-Call
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`Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1328 (Fed. Cir. 2018).
`
`III. STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 314(a), Patent Owner respectfully requests that the
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`Board deny institution of a trial with respect to all claims of the ‘060 Patent.
`
`
`
`
`A. OVERVIEW OF THE ’060 PATENT
`The USC Shoah Foundation, formerly known as Survivors of the Shoah
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`Visual History Foundation, (the “Shoah Foundation”) developed the patented
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`technology described in the ’060 patent. In the mid-1990s, Steven Spielberg
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`founded the Shoah Foundation to preserve the testimonies of the then living 50,000
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`holocaust survivors before their first-hand accounts of the Holocaust were lost as
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`that generation passed away. The Shoah Foundation’s impetus was to gather,
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`catalog, and make available for access thousands of video testimonies. In doing so,
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`
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`3
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`
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`the Shoah Foundation sought to build one of the largest video libraries in the world
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`comprising nearly 52,000 video testimonies in 32 languages from 56 countries.
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`In 1996, there was no digital library or other multimedia system that could
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`handle the large volume of video testimonies collected and maintained by the
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`Shoah Foundation. At the time of invention, development of multimedia
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`distribution systems was in its infancy. Transmission of video and multimedia
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`over existing computer communication networks, including the Internet, struggled
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`with bandwidth and compatibility issues that impeded the development of early
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`multimedia distribution systems. No system existed that could catalogue, store,
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`and deliver tens of thousands of videos in an effective manner, so Samuel
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`Gustman, CTO of the Shoah Foundation and an inventor of the ’060 patent, set out
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`to design one.
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`The invention developed by Gustman and claimed by the ’060 patent filled
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`this absence in the art by providing a unique modular, distributed infrastructure
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`incorporating techniques for indexing, accessing, distributing, and surveying
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`multimedia data. Gustman created a digital library system that incorporated
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`generalized interfaces to connect numerous multimedia components. The
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`invention includes a data capture and cataloguing system that catalogues portions
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`of multimedia data using specific data structures referred to as catalogue elements
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`and attribute elements. ’060 patent, 9:9-12:13. The catalogue and attribute
`
`
`
`4
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`
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`elements are used by the cataloguing system to deliver desired search content to
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`users. Id. In this way, the system may associate specific people or specific
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`testimonies to portions of multimedia (i.e., a smaller clip within a larger video file)
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`and present them to users based on the user’s search. Id. The inventions
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`underlying Gustman’s system were captured in 11 U.S. patents—including the
`
`’060 patent. Today, these inventions are used to enhance the consumer multimedia
`
`streaming experience in nearly every major internet company.
`
`
`
`
`LEVEL OF ORDINARY SKILL IN THE ART
`B.
`“The person of ordinary skill in the art is a hypothetical person who is
`
`presumed to have known the relevant art at the time of the invention.” Manual of
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`Patent Examining Procedure (“MPEP”) 2141.II.C. Factors that may be considered
`
`in determining the level of ordinary skill in the art may include: (1) type of problems
`
`encountered in the art; (2) prior art solutions to those problems; (3) rapidity with
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`which innovations are made; (4) sophistication of the technology; and (5)
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`educational level of active workers in the field. In re GPAC, 57 F.3d 1573, 1579
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`(Fed. Cir. 1995).
`
`Petitioners’ proposed definition of the level of ordinary skill in the art is
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`partially consistent with Patent Owner’s view. Petitioners assert that “a person of
`
`ordinary skill in the art would have had at least a B.S. degree in computer science or
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`electrical engineering (or comparable degree) and two years of experience in
`
`
`
`5
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`
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`databases or networks.” Paper 1 (Petition) at 16. Patent Owner notes a POSITA may
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`alternatively have more years of experience (e.g., five) in databases or networks in
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`lieu of a bachelor’s degree.
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`C. CLAIM CONSTRUCTION
`In an inter partes review, the Board construes claim terms under the claim
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`construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
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`2005) and its progeny. 83 F.R. 51340. Under the Phillips standard, the Board must
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`construe the claims so as to sustain their validity, if possible. Phillips, 415 F.3d at
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`1329.
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`Patent Owner disagrees with Petitioners that the claim terms of the ’060 patent
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`should take their ordinary and customary meaning in this proceeding and explicitly
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`reserves the right to propose constructions for one or more terms should the Board
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`institute review. However, at this stage of the proceeding, Patent Owner submits
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`claim construction is unnecessary because Petitioners have not shown that they are
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`entitled to request an IPR challenging the ’060 patent.
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`IV. THE PETITION FAILS TO MEET THE REQUIREMENTS FOR
`INSTITUTING AN INTER PARTES REVIEW
`The Petition should be denied because Petitioners are barred by 35 U.S.C. §
`
`315(b) from requesting inter partes review of the ’060 patent. The undisputed
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`facts are (1) Petitioners were served with a complaint alleging infringement of the
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`’060 patent more than one year before the filing of the Petition and (2) under
`
`
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`6
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`
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`controlling Federal Circuit authority, service of any complaint alleging
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`infringement triggers the one year time bar of 35 U.S.C. § 315(b), even if the
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`underlying case is subsequently dismissed without prejudice. Paper 1 (Petition) at
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`5; Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311, 1321
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`(Fed. Cir. 2018) (reiterating the “statute endorses no exceptions for dismissed
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`complaints”); Click-To-Call, 899 F.3d at 1328. Click-To-Call is clearly relevant
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`to the present IPR and its holding that a complaint’s later voluntary dismissal has
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`no bearing on the one year time bar of 35 U.S.C. § 315(b) is controlling. Because
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`Petitioners were served with a complaint alleging infringement of the ’060 patent
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`more than one year before the filing of the Petition, Petitioners are time barred
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`under 35 U.S.C. § 315(b) and the Petition must be denied.
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`IV. CONCLUSION
`Petitioners admit they are ineligible to seek inter partes review of the ’060
`
`patent because they were served with a complaint alleging infringement of the ’060
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`patent more than one year before the filing of the Petition. Accordingly, the Petition
`
`is time barred and trial should not be instituted under 35 U.S.C. § 314(a).
`
`
`
`Date: May 6, 2019
`
`
`
`
`
`
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`
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`Respectfully Submitted,
`
`
`
`
`
`/s/ Minghui Yang
`Minghui Yang
`Reg. No. 71,989
`
`
`
`
`7
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`
`
`Hardy Parrish Yang LLP
`4412 Spicewood Springs Rd.
`Suite 202
`Austin, TX 78759
`Counsel for Patent Owner
`University of Southern California
`
`
`
`8
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`
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`CERTIFICATE OF WORD COUNT UNDER 37 C.F.R. § 42.24(b)(1)
`
`I, the undersigned, do hereby certify that the foregoing Patent Owner
`Preliminary Response, including footnotes, contains 1,398 words, as measured by
`the Word Count function of Word 2007. This is less than the limit of 14,000 words
`as specified by 37 C.F.R. § 42.24(b)(1).
`
`
`
`
`
`
`
`
`
`/s/ Minghui Yang
`Minghui Yang
`
`
`
`
`
`
`9
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 6th day of May, 2019, a true and correct copy of
`the foregoing PATENT OWNER PRELIMINARY RESPONSE was served, via
`electronic mail upon the following counsel for Petitioners:
`
`
`Frank M. Gasparo
`William Hector
`Venable LLP
`1270 Avenue of the Americas, 24th Floor
`New York, NY 10020
`Phone: 212-370-6273
`Facsimile: 212-307-5598
`Email: FMGasparo@Venable.com
`
`
`
`
`
`/ s / Minghui Yang
`Minghui Yang, Reg. No. 71,989
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`10
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