Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: June 18, 2019
`
`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.,
`Petitioner,
`
`v.
`
`UNIVERSITY OF SOUTHERN CALIFORNIA
`PRESERVATION TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-00421
`Patent 6,199,060 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY, KEVIN C. TROCK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 315(b)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: June 18, 2019
`
`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.,
`Petitioner,
`
`v.
`
`UNIVERSITY OF SOUTHERN CALIFORNIA
`PRESERVATION TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-00421
`Patent 6,199,060 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY, KEVIN C. TROCK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 315(b)
`
`
`
`
`
`
`
`Case IPR2019-00421
`Patent 6,199,060 B1
`
`
`I. INTRODUCTION
`MindGeek USA Inc., along with several other entities (“Petitioner”),1
`filed a Petition for inter partes review of claims 1–18 of U.S. Patent No.
`6,199,060 B1 (Ex. 1001, “the ’060 patent”). Paper 1 (“Pet.”). University of
`Southern California (“Patent Owner”)2 filed a Preliminary Response. Paper
`6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply. Paper
`7 (“Reply”). Also with our authorization, Patent Owner filed a Sur-Reply.
`Paper 8 (“Sur-Reply”). For the reasons provided below, we determine the
`Petition is time-barred pursuant to 35 U.S.C. § 315(b). Accordingly, we do
`not institute an inter partes review of the ’060 patent in this proceeding.
`The parties indicate that the ’060 patent is the subject of Preservation
`Technologies LLC v. MindGeek USA Inc. et al., Case No. 2:17-cv-08906-
`DOC-JPR (C.D. Cal.) and Preservation Technologies LLC v. MG Content
`RK Ltd. et al., Case No. 2:18-cv-03058-DOC-JPR (C.D. Cal.), both
`currently pending. Pet. 3; Paper 3, 2. The parties also list at least one
`relevant dismissed proceeding, which we discuss in more detail below. Pet.
`4; Paper 3, 2.
`
`II. DISCUSSION
`The issue before us is whether Petitioner timely filed its Petition under
`
`§ 315(b). We determine that Petitioner did not.
`Section 315(b) states, “[a]n inter partes review may not be instituted if
`the petition requesting the proceeding is filed more than 1 year after the date
`
`
`1 The header on page 1 of this Decision lists all parties representing
`Petitioner. Petitioner lists the same as real parties-in-interest. Pet. 1, 3.
`2 Patent Owner lists exclusive licensee Preservation Technologies LLC as a
`real party-in-interest. Paper 3, 2; Prelim. Resp. 2.
`
`2
`
`
`
`Case IPR2019-00421
`Patent 6,199,060 B1
`
`on which the petitioner . . . is served with a complaint alleging infringement
`of the patent.” 35 U.S.C. § 315(b). In Click-to-Call Technologies, LP v.
`Ingenio, Inc., 899 F.3d 1321, 1328–36 (Fed. Cir. 2018) (en banc in relevant
`part), the court held the time bar of § 315(b) “applies to bar institution when
`an IPR petitioner was served with a complaint for patent infringement more
`than one year before filing its petition, but the district court action in which
`the petitioner was so served was voluntarily dismissed without prejudice.”
`Id. at 1328 n.3. That holding applies to both voluntary, and involuntary,
`dismissals without prejudice. Bennett Regulator Guards, Inc. v. Atlanta Gas
`Light Co., 905 F.3d 1311, 1314–15 (Fed. Cir. 2018).
`Exclusive licensee, Preservation Technologies LLC, filed a complaint
`against MindGeek USA Inc. for infringement of the ’060 patent. Pet. 5.
`The complaint was served on October 14, 2014. Id. On February 2, 2015,
`Preservation Technologies LLC filed a notice of voluntary dismissal of the
`complaint. Id. Petitioner filed the Petition on December 11, 2018, several
`years after the 2014 complaint against MindGeek USA Inc. was served.
`Petitioner acknowledges the holding in Click-to-Call, but argues that
`“Click-to-Call was incorrectly decided.” Id. at 5–6. Petitioner argues that
`we should instead follow Sling TV, LLC v. Realtime Adaptive Streaming,
`LLC, IPR2018-01331, Paper No. 9 (Jan. 31, 2019), a non-precedential Board
`decision where a Board panel determined that § 315(b) requires petitioner be
`served with a patent owner’s complaint to trigger the one-year time bar.
`Reply 2–3. Patent Owner argues that “Click-to-Call is clearly relevant to the
`present IPR and its holding that a complaint’s later voluntary dismissal has
`no bearing on the one year time bar of 35 U.S.C. § 315(b) is controlling.”
`Prelim. Resp. 6–7. Patent Owner further argues that “[t]he Federal Circuit in
`
`3
`
`
`
`Case IPR2019-00421
`Patent 6,199,060 B1
`
`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).” Sur-Reply 1. As such, Patent Owner argues that
`Petitioner is time barred under 35 U.S.C. § 315(b) and the Petition should be
`denied. Prelim. Resp. 6–7; Sur-Reply 2. We agree with Patent Owner.
`Here, Petitioner filed the Petition more than one year after the October
`14, 2014 service of the complaint alleging infringement of the ’060 patent.
`As in Click-to-Call, the defendant (Petitioner) was served with a complaint
`by an exclusive licensee (Preservation Technologies LLC), not the patent
`owner. The court in Click-to-Call held that such service (from an exclusive
`licensee) barred the defendant from filing a petition for inter partes review
`more than a year later, despite the fact that the complaint was subsequently
`voluntarily dismissed. 899 F.3d at 1328 n.3. Sling TV is a non-precedential
`Board decision, which we are not bound to follow. In addition, we note
`Sling TV did not address the issue of whether service by an exclusive
`licensee of a complaint triggers the one-year bar in § 315(b).3 Based on
`current case law regarding 35 U.S.C. § 315(b), the Petition was not timely
`filed, and therefore, we do not institute an inter partes review of the ’060
`patent.
`
`III. CONCLUSION
`For the foregoing reasons, we determine the Petition is time-barred
`pursuant to 35 U.S.C. § 315(b), and do not institute an inter partes review in
`this proceeding.
`
`
`3 We also observe that an exclusive licensee can have standing to sue in its
`own name, without joining the patent holder. See, e.g., Int’l Gamco, Inc. v.
`Multimedia Games, Inc., 504 F.3d 1273, 1276 (Fed. Cir. 2007).
`
`4
`
`
`
`Case IPR2019-00421
`Patent 6,199,060 B1
`
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that the Petition is denied.
`
`
`
`
`5
`
`
`
`Case IPR2019-00421
`Patent 6,199,060 B1
`
`For PETITIONER:
`Frank Gasparo
`William Hector
`VENABLE LLP
`fmgasparo@venable.com
`wahector@venable.com
`For PATENT OWNER:
`Minghui Yang
`Floyd Walker
`HARDY PARRISH YANG LLP
`myang@hpylegal.com
`fwalker@walkerpatents.com
`
`
`
`
`
`6
`
`
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