UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`MINDGEEK USA INC., MINDGEEK S.À.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.À.R.L.,
`9219-1568 QUÉBEC INC. d/b/a ENTREPRISE MINDGEEK CANADA, and
`COLBETTE II LTD.,
`
`Petitioners
`
`v.
`
`UNIVERSITY OF SOUTHERN CALIFORNIA
`Patent Owner
`
`Case IPR2019-00421
`Patent No. 6,199,060
`____________________________________________________________
`
`PETITIONERS’ REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE FOR INTER PARTES REVIEW
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`MINDGEEK USA INC., MINDGEEK S.À.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.À.R.L.,
`9219-1568 QUÉBEC INC. d/b/a ENTREPRISE MINDGEEK CANADA, and
`COLBETTE II LTD.,
`
`Petitioners
`
`v.
`
`UNIVERSITY OF SOUTHERN CALIFORNIA
`Patent Owner
`
`Case IPR2019-00421
`Patent No. 6,199,060
`____________________________________________________________
`
`PETITIONERS’ REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE FOR INTER PARTES REVIEW
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.,
`905 F.3d 1311 (Fed. Cir. 2018)..................................................................................................2
`
`Click-To-Call Techs., LP v. Ingenio, Inc.,
`899 F.3d 1321 (Fed. Cir. 2018)..............................................................................................1, 2
`
`GoPro v. 360Heros,
`IPR2018-01754, Paper No. 23 (May 10, 2019) .........................................................................2
`
`Sling TV, LLC v. Realtime Adaptive Streaming, LLC,
`IPR2018-01331, Paper No. 9 (Jan. 31, 2019) ....................................................................1, 2, 3
`
`Statutes
`
`35 U.S.C. §100(d) ............................................................................................................................3
`
`35 U.S.C. §313 .................................................................................................................................3
`
`35 U.S.C. §315(a)(2)(A)&(B) ..........................................................................................................3
`
`35 U.S.C. §315(b) .................................................................................................................. passim
`
`Other Authorities
`
`IPR2019-00420, IPR2019-00422, IPR2019-00423 .........................................................................1
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`In response to the petition for Inter Partes Review (“IPR”), University of
`
`Southern California (“USC”) alone filed a preliminary response. USC defined itself
`
`as the “Patent Owner” and excluded from this definition purported exclusive
`
`licensee Preservation Technologies LLC (“PT”). Given only USC is the Patent
`
`Owner and given USC never served Petitioners with a complaint alleging
`
`infringement, Petitioners are not time barred under §315(b). Sling TV, LLC v.
`
`Realtime Adaptive Streaming, LLC, IPR2018-01331, Paper No. 9, 7 (Jan. 31, 2019)
`
`(holding that Ҥ 315(b) . . . requir[es] the Petitioner to be served with a patent
`
`owner’s complaint to trigger the one-year time bar.”) (emphasis in original).
`
`II.
`
`BACKGROUND
`
`On October 10, 2014, PT—not Patent Owner—served MindGeek USA with
`
`a complaint and dismissed without reason on February 2, 2015. Petition, at 6. After
`
`several years of complete silence, on December 11, 2017, PT filed suit again. Id., 6.
`
`On December 11, 2018, Petitioners filed IPR petitions: IPR2019-00420, IPR2019-
`
`00421, IPR2019-00422 and IPR2019-00423. Attorneys from Hardy Parrish Yang
`
`appeared for Patent Owner USC. See Paper Nos. 3-4. No attorney has appeared for
`
`PT in this IPR. On January 31, 2019, the Board rendered Sling TV. In its Preliminary
`
`Response on April 11, 2019, USC defined only itself as the “Patent Owner,” but it
`
`still argued that Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir.
`
`1
`
`
`
`2018) bars Petitioners and not surprisingly failed to mention Sling TV. See Paper
`
`No. 6, 1-2 (“POPR”). On May 13, 2019, the Board authorized this reply. Of note,
`
`the Precedential Opinion Panel recently accepted a case that may address related
`
`issues. GoPro v. 360Heros, IPR2018-01754, Paper No. 23 (May 10, 2019).
`
`III. THE PETITION IS NOT TIME BARRED UNDER §315(b)
`
`A.
`
`Sling TV: §315(b) Applies Only to a Patent Owner’s Complaint
`
`In Sling TV, Realtime Data LLC (“Realtime Data”) filed and dismissed a
`
`complaint because “it did not own the . . . patent . . . [as] it had previously recorded
`
`an assignment” to Realtime Adaptive Streaming (“RAS”). Sling TV, 5. RAS later
`
`filed a complaint and contended that non-patent owner Realtime Data’s dismissed
`
`complaint triggered the time bar because allegedly §315(b) “endorses no exceptions
`
`for dismissed complaints.” Id., 6; Bennett Regulator Guards, Inc. v. Atlanta Gas
`
`Light Co., 905 F.3d 1311, 1315 (Fed. Cir. 2018); Click-To-Call, 899 F.3d at 1330.
`
`Rejecting this argument, the Board held that “only a patent owner’s action
`
`triggers § 315(b)’s time bar.” Sling TV, 7. This holding was based on the title of the
`
`relevant section of the statute (“Patent owner’s action”) and the legislative history
`
`(“patent owner has filed an action for infringement”), which both emphasize the
`
`patent owner. Id. (citations omitted). The Board further distinguished Click-To-Call
`
`because that case did not address “whether a complaint filed without standing
`
`triggers § 315(b)’s time bar . . . .” Id., 6-7 (citing Hamilton Beach Brands, Inc. v.
`
`2
`
`
`
`F’real Foods, LLC, 908 F.3d 1328, 1337 (Fed. Cir. 2018) (noting this issue was “not
`
`present, or considered, in Click-to-Call.”)). Thus, Sling TV requires a patent owner’s
`
`complaint—not an exclusive licensee’s complaint—to trigger the §315(b) time bar.
`
`B.
`
`USC, the Self-Identified Patent Owner, Is Bound By Sling TV
`
`USC is in the same position as RAS in Sling TV by arguing that a complaint
`
`filed by a “non-patent owner” (PT and Realtime Data) triggers the one-year time bar.
`
`Thus, Sling TV is binding here, and USC cannot escape it. Indeed, USC conceded
`
`that it alone is the Patent Owner, both in the caption and text. POPR, cover page, 1;
`
`Paper No. 3. PT has not appeared in this IPR. Id., 7 (“Counsel for Patent Owner”
`
`USC). Because Patent Owner USC never served Petitioners with a complaint
`
`alleging infringement, Petitioners’ petition is not time barred. This conclusion, as
`
`noted in Sling TV, is supported by §315(b)’s text and legislative history, which both
`
`reference action by the “patent owner.” Other provisions reinforce that reading.
`
`First, provisions related to §315(b) reference patent owner not an exclusive licensee.
`
`§§315(a)(2)(A) & (B); §313. Second, despite defining patentee in 35 U.S.C. §100(d)
`
`with “successors in title to the patentee,” Congress in §315(b) chose the narrower
`
`“patent owner” with no such successor language. Otherwise, a patent owner could
`
`shield itself from IPR review if any party (e.g., non-exclusive licensee, inventor)
`
`files and serves a complaint, even if meritless. The statutory text and history support
`
`no such expansive reading. Petitioners respectfully request that the IPR be instituted.
`
`3
`
`
`
`Dated: May 21, 2019
`
`Respectfully submitted,
`
`By: /Frank M. Gasparo/
`Frank M. Gasparo
`Registration No. 44,700
`Venable LLP
`Rockefeller Center
`1270 Avenue of the Americas
`Twenty-Fourth Floor
`New York, NY 10020
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that a true and
`
`correct
`
`copy of PETITIONERS’ REPLY TO PATENT OWNER’S
`
`PRELIMINARY RESPONSE was served in entirety on May 21, 2019, by electronic
`
`mail to Patent Owner’s counsel of record as follows:
`
`HARDY PARRISH YANG, LLP
`Minghui Yang (myang@hpylegal.com)
`R. Floyd Walker (fwalker@hpylegal.com)
`SPICEWOOD BUSINESS CENTER
`4412 SPICEWOOD SPRINGS RD, SUITE 202
`AUSTIN, TEXAS 78759
`
`By: /Frank M. Gasparo/
`Frank M. Gasparo
`Registration No. 44,700
`Venable LLP
`Rockefeller Center
`1270 Avenue of the Americas
`Twenty-Fourth Floor
`New York, NY 10020
`
`5
`
`
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