`
`
`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’S SUR-REPLY TO PETITIONERS’ REPLY
`
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`___________________________________
`
`
`
`
`
`
`
`
`
`I. Controlling Federal Circuit Authority Makes Clear Service by an Exclusive
`Licensee Triggers 35 U.S.C. §315(b)’s Time Bar
`
`The Federal Circuit in Click-To-Call already considered the exact fact
`
`pattern at issue in this proceeding and determined service by an exclusive licensee
`
`triggers the time bar of 35 U.S.C. §315(b). Click-To-Call Techs., LP v. Ingenio,
`
`Inc., 899 F.3d 1321, 1326 (Fed. Cir. 2018).
`
`In Click-To-Call, the Federal Circuit explicitly relied upon service by an
`
`exclusive licensee in its decision applying 35 U.S.C. §315(b)’s time bar: “On June
`
`8, 2001, Inforocket.com, Inc. (“Inforocket”), the exclusive licensee of U.S.
`
`Patent No. 5,818,836 (“the ’836 patent”), filed a civil action in the United States
`
`District Court for the Southern District of New York. Inforocket served a
`
`complaint asserting infringement of the ’836 patent on defendant Keen, Inc.
`
`(“Keen”)…” Id. Critically, Inforocket remained the sole plaintiff throughout the
`
`Keen action, even though USPTO records show Steven DuVal, the ’836 patent’s
`
`inventor, was its owner. (Ex. 2001). DuVal never served a complaint against Keen.
`
`Rather, Inforocket, in its capacity as the exclusive licensee, was the only party to
`
`serve a complaint against Keen (which later changed its name to Ingenio).
`
`In its review, the Federal Circuit was expressly asked to review the Board’s
`
`determination that exclusive licensee Inforocket’s service of a complaint failed to
`
`meet § 315(b)’s time bar: “Notwithstanding the absence of any facial ambiguity in
`
`the phrase ‘served with a complaint,’ the Board concluded that [Click-To-Call]
`
`‘has not established that service of the complaint in the infringement suit brought
`
`
`
`1
`
`
`
`by Inforocket against Keen bars Ingenio, LLC from pursuing an inter partes
`
`review for the ’836 patent.” Click-To-Call, 899 F.3d at 1332. Based on these facts,
`
`the Federal Circuit rejected the Board’s interpretation of § 315(b) and determined
`
`service by Inforocket, the exclusive licensee, triggered § 315(b)’s time bar. Id. at
`
`1333. Thus, contrary to Petitioners’ arguments at 1, no discussion of Sling TV is
`
`necessary as Click-To-Call squarely teaches service by an exclusive licensee is
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`sufficient to trigger § 315(b)’s time bar.
`
`Here, USC’s exclusive licensee Preservation Technologies, like Inforocket
`
`in Click-To-Call, served a complaint on Petitioners alleging infringement of the
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`patent at issue more than one year before the filing of the instant petition. Based
`
`upon the Federal Circuit’s binding determination in Click-To-Call that exclusive
`
`licensee Inforocket’s service of a complaint on Ingenio’s predecessor Keen barred
`
`Ingenio under § 315(b) from review of its late-filed petition, USC’s exclusive
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`licensee Preservation Technologies’ service of a complaint on Petitioners must
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`likewise bar Petitioners under § 315(b) from review of their late-filed petition.
`
`II. The Plain Language of 35 U.S.C. §315(b) Clearly Does Not Require Service
`by a Patent Owner
`
`
`
`Contrary to Petitioners’ Reply at 3, §315(b)’s text and legislative history do
`
`not suggest or support restricting service of the complaint to patent owners.
`
`§315(b) is titled “Patent Owner’s Action”–not “Service by Patent Owner”–and
`
`thus contemplates any action by patent owner, including, for example, licensing
`
`the patent to another, giving the licensee the right to sue in the licensee’s name,
`
`
`
`2
`
`
`
`and allowing the licensee to serve a complaint. The fact the remaining statutory
`
`language is written in the passive voice (“is served with a complaint”) reinforces
`
`the conclusion that Congress intended the statute to apply to any service, not just
`
`service by a patent owner. Indeed, the Federal Circuit explicitly noted the same use
`
`of the passive voice during Senate debates as indicative that the statute’s drafters
`
`did not intend to narrowly restrict the estoppel provision: “Senator Kyl made clear
`
`that… ‘if a party has been sued for infringement and wants to seek inter partes
`
`review, he must do so within 6 months of when he was served with the
`
`infringement complaint.’” Click-To-Call, 899 F.3d at 1331 (emphasis in original).
`
`III. No Policy Reason Justifies Treating Exclusive Licensees Differently Than
`Patent Owners
`
`
`
`Restricting §315(b)’s time bar provision to only patent owners unfairly
`
`prejudices those owners who chose to exclusively license their patents rather than
`
`enforce the patent rights themselves. Such an interpretation would require every
`
`exclusive licensee to join the licensing patent owner in an infringement suit–in
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`direct contradiction to extensive Federal Circuit authority holding exclusive
`
`licensees may bring suit in their own name for infringement because an exclusive
`
`licensee possesses all substantial rights to enforce the patent. Luminara Worldwide,
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`LLC v. Liown Elecs. Co., 814 F.3d 1343, 1350-51 (Fed. Cir. 2016). Interpreting the
`
`statute this way serves no policy objective and only undermines a well settled
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`regime of patent enforcement– a regime the drafters of §315(b) gave no intention
`
`of wishing to disturb. Accordingly, the Petition must be denied as untimely.
`
`
`
`3
`
`
`
`Date: May 28, 2019
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/s/ Minghui Yang
`Minghui Yang
`Reg. No. 71,989
`Hardy Parrish Yang LLP
`4412 Spicewood Springs Rd.
`Suite 202
`Austin, TX 78759
`Counsel for Patent Owner
`University of Southern California
`
`
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 28th day of May, 2019, a true and correct copy
`
`of the foregoing PATENT OWNER’S SUR-REPLY 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
`
`5
`
`
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