Paper No.
`Filed: October 26, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`OCEAN TOMO, LLC,
`
`
`Petitioner
`v.
`
` PATENTRATINGS, LLC,
`
`Patent Owner
`_________________
`Case CBM2015-00157
`U.S. Patent No. 9,075,849
`_________________
`Patent Owner’s Preliminary Response
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`I.
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`II.
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`Case No. CBM2015-00157
`U.S. Patent No. 9,075,849
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`TABLE OF CONTENTS
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`PRELIMINARY STATEMENT ............................................................................ 1
`
`TRIAL SHOULD NOT BE INSTITUTED BECAUSE THE
`PETITION FAILS TO DEMONSTRATE THAT PETITIONER
`MEETS THE ELIGIBILITY REQUIREMENTS OF 37 C.F.R. §
`42.302(A) TO PURSUE CBM REVIEW OF THE ’849 PATENT ................. 3
`
`A.
`
`The Petition Fails to Establish that Petitioner Has Been
`“Sued for Infringement” or “Charged with Infringement” of
`the ’849 Patent ................................................................................................ 5
`
`1.
`
`2.
`
`3.
`
`Petitioner Mischaracterizes the Underlying Business
`Relationship with PatentRatings and Fails to Mention
`That the “PR Patents” Are Licensed to Petitioner
`“Royalty-Free” .................................................................................... 6
`
`Petitioner Mischaracterizes PatentRatings’ Amended
`Counterclaim, Which Does Not Constitute a Charge
`of Infringement of the ‘849 Patent .................................................. 8
`
`Petitioner Mischaracterizes PatentRatings’ Discovery
`Requests, Which Do Not Constitute a Charge of
`Infringement of the ‘849 Patent ..................................................... 11
`
`B.
`
`The Petition Fails to Establish that a “Real and Substantial
`Case or Controversy” Exists Regarding Infringement of the
`’849 Patent ..................................................................................................... 13
`
`1.
`
`2.
`
`Petitioner’s Reliance on MedImmune Is Misplaced;
`Unlike in MedImmune, There Is No Case or
`Controversy Regarding Infringement of Any Patent,
`Let Alone the ’849 Patent ............................................................... 13
`
`Petitioner’s Pending Declaratory Judgment Action in
`District Court Does Not Establish CBM Standing
`Because That Action Is Not Based on Alleged
`Infringement or Non-Infringement the ’849 Patent.................... 18
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`III. EVEN ASSUMING PETITIONER COULD DEMONSTRATE IT
`MEETS THE ELIGIBILITY REQUIREMENTS OF 37 C.F.R. §
`42.302(A), TRIAL SHOULD NOT BE INSTITUTED BECAUSE
`THE PETITION FAILS TO ESTABLISH THAT THE ’849
`PATENT IS A COVERED BUSINESS METHOD PATENT ....................... 21
`
`A.
`
`B.
`
`The Claims of the ’849 Patent Recite Context-Neutral
`Elements Directed to Technologies Common across
`Business Enterprises Having No Particular Relation to
`Financial Products or Services ................................................................... 23
`
`The Petition Improperly Relies on Examples from the
`Specification to Establish that the Claims of the ‘849 Patent
`are Complementary to a Financial Activity ............................................ 27
`
`IV. THE PETITION FAILS TO SATISFY THE THRESHOLD
`REQUIREMENTS FOR INSTITUTION ON § 101 GROUNDS ................. 31
`
`A.
`
`B.
`
`C.
`
`Petitioner Cannot Show It Is “More Likely Than Not” To
`Prevail on § 101 Grounds When the Office Duly Considered
`§ 101 Post-Alice and Found the Claims Patent Eligible Less
`Than Four Months Ago ............................................................................... 32
`
`The Petition Relies on Impermissible Testimonial Evidence
`to Conclude the Challenged Claims are Directed to Patent-
`Ineligible Subject Matter Under § 101 ..................................................... 35
`
`Petitioner’s § 101 Analysis Is Deficient Because the Petition
`Fails to Analyze the Challenged Claims as a Whole ............................. 38
`
`V.
`
`CONCLUSION ........................................................................................................ 41
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`Case No. CBM2015-00157
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Alice Corp. Pty. Ltd. v. CLS Bank International,
`134 S. Ct. 2347 (2014) .............................................................................. 3, 38, 40
`
`buySAFE, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014) .......................................................................... 34
`
`Cat Tech LLC v. TubeMaster, Inc.,
`528 F.3d 871 (Fed. Cir. 2008) ............................................................................ 17
`
`DDR Holdings LLC v. Hotels.Com LP,
`773 F.3d 1245 (Fed. Cir. 2014) .................................................................... 33, 34
`
`Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
`758 F.3d 1344 (Fed. Cir. 2014) .......................................................................... 34
`
`Gen-Probe Inc. v. Vysis, Inc.,
`359 F.3d 1376 (Fed. Cir. 2004) .......................................................................... 15
`
`Lujan v. Defenders of Wildlife,
`504 U.S. 555 (1992) ............................................................................................ 18
`
`Matthews Intern. Corp. v. Biosafe Engineering, LLC,
`695 F. 3d 1322 (Fed. Cir. 2012) ......................................................................... 17
`
`MedImmune, Inc. v. Genentech, Inc.,
`549 U.S. 118 (2007) ..........................................................................13, 14, 15, 16
`
`Planet Bingo, LLC v. VKGS, LLC,
`576 Fed. App’x 1005 (Fed. Cir. 2014) ............................................................... 34
`
`Public Serv. Comm'n v. Wycoff Co.,
`344 U.S. 237 (1952) ............................................................................................ 17
`
`Sandoz, Inc. v. Amgen Inc.,
`773 F. 3d 1274 (Fed. Cir. 2014) ......................................................................... 17
`
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`Streck, Inc. v. Research & Diagnostic Systems,
`665 F. 3d 1269 (Fed. Cir. 2012) ......................................................................... 14
`
`Texas v. United States,
`523 U.S. 296 (1998) ............................................................................................ 17
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014). ..................................................................... 33, 34
`
`Statutes
`
`28 U.S.C. §§ 2201-2202 .......................................................................................... 19
`
`35 U.S.C. § 101 .................................................................................................passim
`
`35 U.S.C. § 322 .................................................................................................. 32, 41
`
`35 U.S.C. § 324 ........................................................................................................ 31
`
`AIA § 18 ............................................................................................................passim
`
`Rules
`
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 32
`
`37 C.F.R. § 42.302(a) ........................................................................................passim
`
`37 C.F.R. § 42.304(a) ........................................................................................... 3, 21
`
`37 C.F.R. § 42.304(b)(4) .......................................................................................... 32
`
`37 C.F.R. § 42.65 ......................................................................................... 35, 38, 39
`
`Other Authorities
`
`77 Fed. Reg. 48620 (Aug. 14, 2012) ...................................................................... 32
`
`77 Fed. Reg. 48756 (Aug. 14, 2012) ...................................................................... 21
`
`79 Fed. Reg. 74618 (Dec. 16, 2014) ........................................................................ 34
`
`157 Cong. Rec. S5402 (daily ed. Sept. 8, 2011) ...................................................... 22
`
`157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) ...................................................... 22
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`Conopco, Inc. v. The Proctor & Gamble Co.,
`IPR2013-00510, Paper 9, (Feb. 12, 2014) .......................................................... 41
`
`J.P. Morgan Chase & Co. v. Intellectual Ventures II,
`CBM2014-00160, Paper 11 (Jan. 29, 2014) .............................. 21, 22, 23, and 28
`
` Global Tel*Link Corp v. Securus Technologies Inc.,
`CBM2014-00166, Paper 17 (February 16, 2015) ................................................. 3
`
`Google Inc. v. SimpleAir, Inc.,
`CBM2015-00019, Paper 11 (May 19, 2014) .......................................... 23, 27, 31
`
`Roxane Laboratories, Inc., v. Jazz Pharameuticals, Inc.,
`CBM2014-00161 and CBM2014-00175, Paper 16 (February 9,
`2015) ................................................................................................................... 28
`
`Salesforce.com, Inc. v. Applications in Internet Time LLC,
`CBM2014-00162, Paper 11 (Feb. 2, 2015) ...................................... 21, 22, 28, 29
`
`Sony Corp. of Am. v. Network-1 Tech., Inc.,
`CBM2015-00078, Paper No. 7 (July 1, 2015) .................................................... 31
`
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`v
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`I.
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`Case No. CBM2015-00157
`U.S. Patent No. 9,075,849
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`PRELIMINARY STATEMENT
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`Patent Owner PatentRatings, LLC (“PatentRatings”) develops specialized
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`software for document searching, data mining, and data visualization across
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`various business sectors and business enterprises. In 2001, PatentRatings
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`developed a specialized database and software system for identifying, analyzing
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`and rating documents of interest to those in the science, technology, academic, and
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`legal fields (i.e., the “PR System”), elements of which are claimed by various U.S.
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`patents. On July 22, 2014, PatentRatings filed a continuation application directed
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`to additional elements of the PR System. This new application, U.S. Patent
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`Application No. 14/338,208, issued as U.S. Patent No. 9,075,849 (“the ’849
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`patent”) on July 7, 2015. For at least the reasons outlined below, the Board should
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`deny Petitioner Ocean Tomo, LLC’s Petition for covered business method (CBM)
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`review of the ’849 patent.
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`First, the Petition sets forth insufficient evidence to establish that Petitioner
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`can pursue CBM review of the ’849 patent under 37 C.F.R. § 42.302. Neither
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`Petitioner, nor its customers, nor its privies have been sued for infringement of the
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`’849 patent. Moreover, Petitioner’s inaccurate statements regarding PatentRatings’
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`business relationship with Petitioner, PatentRatings’ Amended Counterclaim, and
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`PatentRatings’ discovery requests fail to establish a charge of infringement of the
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`’849 patent. As outlined below, PatentRatings’ Amended Counterclaim and
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`discovery requests are silent regarding the ’849 patent, and even if they were not,
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`PatentRatings’ actions regarding the Amended Counterclaim and discovery
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`requests would be insufficient to amount to a charge of infringement of the ’849
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`patent. Accordingly, the Petition fails to articulate facts establishing the existence
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`of a “real and substantial controversy” between the parties regarding infringement
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`of the ‘849 patent.
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`Second, even assuming Petitioner could pursue CBM review under
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`§ 42.302, which it cannot, the ’849 patent is not a CBM patent. The challenged
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`claims of the ’849 patent recite context-neutral elements with no particular relation
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`to financial products or services. No reasonable claim construction, including that
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`proposed by Petitioner, could result in these elements being considered financial in
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`nature. Further, the specification of the ’849 patent discloses that the claimed,
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`content-neutral techniques can be implemented across various business enterprises
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`having no particular relation to the financial services sector. Indeed, the ’849
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`specification explicitly states that the claimed context-neutral techniques are not
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`limited to any particular embodiments, let alone to financial embodiments.
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`Third, the Petition fails to satisfy the threshold requirements for institution
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`on § 101 grounds. Indeed, the Office duly considered and applied the post-Alice §
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`101 standards during examination of the ’849 patent, which issued less than four
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`months ago. Petitioner does not—and cannot—offer any explanation as to why the
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`Board should find that the challenged claims are more likely than not patent-
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`ineligible under § 101 when the Office, applying the same legal standard, found
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`them patent-eligible less than four months ago. Moreover, the Petition relies on
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`testimonial evidence that sets forth inadmissible legal analyses and conclusions,
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`and absent this inadmissible testimonial evidence, the Petition fails to consider the
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`subject matter eligibility of the claims as a whole, as required by Alice Corp. Pty.
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`Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014).
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` TRIAL SHOULD NOT BE INSTITUTED BECAUSE THE PETITION II.
`
`
`FAILS TO DEMONSTRATE THAT PETITIONER MEETS THE
`ELIGIBILITY REQUIREMENTS OF 37 C.F.R. § 42.302(A) TO
`PURSUE CBM REVIEW OF THE ’849 PATENT
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`
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`Standing to petition for CBM review is a threshold issue, and a petition for
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`CBM review must set forth the petitioner’s grounds for standing. Global Tel*Link
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`Corp v. Securus Technologies Inc., CBM2014-00166, Paper 17 at 2 (February 16,
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`2015). Specifically, “[t]he petitioner must demonstrate [in the petition] that the
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`patent for which review is sought is a covered business method patent, and that
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`the petitioner meets the eligibility requirements of § 42.302.” 37 C.F.R.
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`§ 42.304(a) (emphasis added).
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`
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`Under the AIA, a party may not petition for CBM patent review “unless the
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`[petitioner], the [petitioner’s] real party-in-interest, or privy has been sued for
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`infringement of the patent or has been charged with infringement under that
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`patent.” AIA § 18(a)(1)(B). Further, § 42.302(a) explains that “charged with
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`infringement” means that “a real and substantial controversy regarding
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`infringement of a covered business method patent exists such that the petitioner
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`would have standing to bring a declaratory judgment action in Federal court.” 37
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`C.F.R. § 42.302(a) (emphasis added).
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`
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`In response to comments on the final rules governing CBM patent review,
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`the U.S. Patent and Trademark Office emphasized that:
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`To establish standing, a petitioner, at a minimum, would
`be required to certify with explanation that the patent is
`a covered business method patent and that the petitioner
`meets the eligibility requirements of § 42.302. This
`requirement is to ensure that a party has standing to file
`the covered business method patent review and would
`help prevent spuriously instituted reviews. Facially
`improper standing is a basis for denying the petition
`without proceeding to the merits of the decision.
`77 Fed. Reg. 48,680, 48,709 (Aug. 14, 2012) (Response to Comment 102;
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`emphases added). Thus, any petition for CBM patent review must provide
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`“sufficient proof” that the petition meets the eligibility requirements set forth in 37
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`C.F.R. § 42.302(a), and failure to do so warrants dismissal of the petition. See also
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`Id. at Response to Comment 106 (“The petition is required to show specifically
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`that it meets the requirements of § 42.302, i.e., that the petitioner, the petitioner’s
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`real party-in-interest, or a privy of the petitioner has been sued for infringement of
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`the patent or has been charged with infringement under that patent[,] . . . [and that
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`a] showing can only be made through sufficient proof.”).
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`For the reasons discussed below, the Petition fails to show sufficient proof of
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`standing under AIA § 18(a)(1)(B).
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`A.
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`The Petition Fails to Establish that Petitioner Has Been “Sued for
`Infringement” or “Charged with Infringement” of the ’849 Patent
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`
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`Petitioner has not argued that it or any of its customers or privies has been
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`“sued for infringement” of the ‘849 patent. Instead, Petitioner states that it is a
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`licensee of the ‘849 patent under the terms of a License Agreement (which
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`Petitioner alleges covers all patents owned by PatentRatings --i.e., the “PR
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`Patents1”-- including the ‘849 patent), and it alleges that Petitioner has been
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`“charged with infringement” of the ‘849 patent because “[PatentRatings] has
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`accused [Petitioner] of breaching the License Agreement by, inter alia, failing to
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`pay amounts due thereunder.” Petition, p. 12. Specifically, Petitioner asserts that
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`“[PatentRatings’] allegations that [Petitioner] is in breach of the License
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`1 The Petition defines the “PR Patents” as all patents owned by PR, including:
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`6,556,992; 7,657,476; 7,716,226; 7,949,581; 7,962,511; 8,131,701; 8,504,560;
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`8,818,996 and 9,075,849. See Petition, pp. 13-14.
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`Agreement constitute a threat that [PatentRatings] will bring suit against
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`[Petitioner] based on the PR Patents and creates a reasonable apprehension by
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`[Petitioner] that [PatentRatings] will enforce the PR Patents against [Petitioner].”
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`Id., p. 15.
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`Petitioner’s assertions are incorrect. As explained below, the alleged proof
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`Petitioner offers in support of its assertion of standing under AIA § 18(a)(1)(B) is
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`facially insufficient.
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`1.
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`
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`Petitioner Mischaracterizes the Underlying Business
`Relationship with PatentRatings and Fails to Mention That
`the “PR Patents” Are Licensed to Petitioner “Royalty-Free”
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`Petitioner mischaracterizes its business relationship with PatentRatings and,
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`specifically, the import of the U.S. patents held by PatentRatings in that
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`relationship. For instance, in summarizing its ongoing litigation with
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`PatentRatings, Petitioner alleges that “[t]he PR Patents, and the technology
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`allegedly covered thereby, are the foundation of the business relationship between
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`[PatentRatings] and [Petitioner,] . . . [and at] its core, this relationship … revolves
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`around the PR Patents.” Petition, pp. 14-15. Even if true, this characterization of
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`Petitioner’s business relationship with PatentRatings is immaterial and is facially
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`insufficient to support Petitioner’s assertion that it has been “charged with
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`infringement” of the ‘849 patent. A mere business relationship—even one built
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`upon a foundation of patents—does not automatically amount to a charge of
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`infringement as to a specific patent.
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`Petitioner also fails to mention the critical fact that the License Agreement
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`between the parties explicitly states that the licensed patent rights granted to
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`Petitioner are “royalty-free.” Ex. 1002, §§ 1.11, 3.1, 4.1. Specifically, in the
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`License Agreement, PatentRatings granted Petitioner “a limited exclusive, royalty-
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`free, worldwide, non-transferable . . . license” to “reproduce, install and use the
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`PatentRatings Tools,” which are defined as including the patents held by
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`PatentRatings related to its proprietary software and databases (i.e., the PR
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`System). Ex. 1002, § 1.11 (defining “PatentRatings Tools”) and § 3.1 (license
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`grant). PatentRatings also granted Petitioner a royalty-free “Technology License”
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`to facilitate Petitioner’s access to the PR System. Id., § 4.1.
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`Thus, the License Agreement sets forth no payment obligations arising
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`from Petitioner’s use or exploitation of any patents owned by PatentRatings,
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`including the ‘849 patent. See Id. Further, no provision in the License Agreement
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`conditions any payment or other contractual obligation on the scope or validity of
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`any patent held by PatentRatings. See Id.
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`To the contrary, Petitioner’s payment obligations arise from its continued
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`use and exploitation of the PR system and PatentRatings’ proprietary software and
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`databases, which are indisputably owned by PatentRatings. See Ex. 1002, pp. 4-5,
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`20-21; §§ 3.2, 4.2, and 4.3. Whether any portion of the PR System is covered by
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`issued patents, and whether those issued patents are valid or invalid or infringed or
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`not infringed, is therefore irrelevant to PatentRatings’ right to control Petitioner’s
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`access to, and commercial exploitation of, the PR System. In other words, the
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`payments Petitioner owes to PatentRatings are for Petitioner’s for-profit use of
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`PatentRatings’ proprietary software and databases, not for practicing
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`PatentRatings’ patents. Put differently, even if every one of the “PR Patents” were
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`declared invalid, Petitioner would still owe the same payment amounts under the
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`License Agreement for its commercial, for-profit use of PatentRatings’ proprietary
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`software and databases.
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`2.
`
`Petitioner Mischaracterizes PatentRatings’ Amended
`Counterclaim, Which Does Not Constitute a Charge of
`Infringement of the ‘849 Patent
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`Petitioner further asserts that the alleged breach of the License Agreement
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`creates a reasonable apprehension that PatentRatings will enforce the PR patents
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`against Petitioner, thus allegedly satisfying the threshold requirement that
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`Petitioner be charged with infringement of the ‘849 patent. See Petition, pp. 14-16.
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`Specifically, Petitioner asserts that, in ¶ 91 of PatentRatings’ Amended
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`Counterclaim, “[PatentRatings] has alleged that [Petitioner] breached the License
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`Agreement by, for example, failing to pay revenues due under the License
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`Agreement for [Petitioner’s] use of the PR Patents.” Petition, p. 15 (emphasis
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`added). But Petitioner’s characterization of the cause of the alleged breach and the
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`Amended Counterclaim is inaccurate.
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`Contrary to Petitioner’s position, the Amended Counterclaim does not assert
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`that unpaid revenues are due for Petitioner’s use of the PR Patents.2 Indeed,
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`¶ 91 of the Amended Counterclaim, as referenced in the Petition and reproduced
`
`below, does not mention any patents, let alone the ‘849 patent:
`
`91. [Petitioner] also has breached the License Agreement
`by failing to timely account for and pay all revenues
`owed by [Petitioner] and by frustrating PatentRatings’
`exercise of its audit rights under Section 4.5 of the
`License Agreement.
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`Ex. 1005, ¶91. Thus, Petitioner’s characterization of the cause of the alleged
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`breach, which Petitioner relies upon to demonstrate standing under 37 C.F.R.
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`§ 42.302(a), is inconsistent with the language of the Amended Counterclaim.
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`Pursuant to the License Agreement, revenues are owed to PatentRatings for the
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`commercial use of the PR System (i.e., proprietary software and databases), not
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`for practicing the PR Patents, which are explicitly licensed to Petitioner “royalty-
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`free.” See Ex. 1002, pp. 3-4; §§ 3.1, 4.1.
`
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`2 Petitioner’s definition of the “PR Patents” includes the ‘849 patent. See Petition,
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`p. 17.
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`In further support of its position, Petitioner states that, in ¶ 110 of the
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`Amended Counterclaim, “[PatentRatings] . . . asserts that the license has been
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`terminated and/or should be rescinded [as a result of Petitioner’s alleged breach].”
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`Petition, p. 15. This, too, is incorrect. Nowhere does the Amended Counterclaim
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`state or claim that PatentRatings terminated or rescinded the License Agreement
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`with Petitioner. Instead, as reproduced below, ¶ 110 of the Amended Counterclaim
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`indicates that PatentRatings sought only to rescind the Amendment3, the Note, and
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`the Security Agreement:
`
`110. PatentRatings has suffered and will continue to
`suffer substantial harm and injury under the Amendment,
`the Note and the Security Agreement if they are not
`rescinded in that PatentRatings will be deprived of the
`benefit of its bargain in that, by way of example and
`without limitation, PatentRatings agreed to accept a
`substantially reduced revenue share in exchange for the
`promises made by [Petitioner].
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`Ex. 1005, ¶110. Petitioner’s characterization of the alleged termination or
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`rescission, upon which Petitioner relies to demonstrate standing under 37 C.F.R.
`
`
`3 A rescission of the Amendment (e.g., as set forth in Ex. 1002) would rescind only
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`the changes made by the Amendment to the License Agreement. It would not
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`rescind or terminate the License Agreement.
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`§ 42.302(a), is therefore inconsistent with the plain language of the Amended
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`Counterclaim.
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`Moreover, the U.S. Patent and Trademark Office issued the ‘849 patent on
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`July 7, 2015. See Ex. 1001. In contrast, the Amended Counterclaim was filed on
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`January 13, 2015—more than five months before the ‘849 patent issued. See Ex.
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`1005. Thus, the Amended Counterclaim could not possibly “charge” Petitioner
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`with infringement of the ‘849 patent since that patent had not even issued when the
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`Amended Counterclaim was filed. In short, the Amended Counterclaim simply
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`cannot support Petitioner’s false claim that it has been “charged with infringement”
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`of the ‘849 patent.
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`3.
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`Petitioner Mischaracterizes PatentRatings’ Discovery
`Requests, Which Do Not Constitute a Charge of
`Infringement of the ‘849 Patent
`Finally, Petitioner asserts that PatentRatings’ discovery requests, 4 which
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`
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`were served in the pending district court litigation on March 23, 2015, “[create] a
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`reasonable apprehension of suit for infringement and a justiciable patent
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`4 PatentRatings objects to Petitioner’s use of these discovery requests because such
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`use violates the district court’s Protective Order, which provides in relevant part
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`that “[a]ll Discovery Materials produced in this litigation may only be used for
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`purposes of the litigation between the Parties….” See Ex. 2004, p. 5 at § IV.8.
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`Case No. CBM2015-00157
`U.S. Patent No. 9,075,849
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`controversy between [Petitioner] and [PatentRatings].” Petition, p. 16.
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`Specifically, Petitioner relies on PatentRatings’ discovery requests, which
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`allegedly ask Petitioner to:
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`(1) [i]dentify each and every product or service currently
`offered or sold by [Petitioner] that: (a) is covered by, or
`(b) but for the License Agreement would infringe, any
`claim (whether valid, invalid, or otherwise) of the [PR]
`Patents;” and
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`(2) “[i]dentify each and every software, system or
`method operated or practiced by [Petitioner] that: (a) is
`covered by, or (b) but for the License Agreement would
`infringe, any claim (whether valid, invalid or otherwise)
`of the [PR] Patents.”
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`Petition, p. 16 (emphases added).
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`
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`But Petitioner mischaracterizes PatentRatings’ discovery requests by
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`substituting the term “[PR] Patents,” which Petitioner defines to include the ‘849
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`patent, for the actual term that was used in these discovery requests, “Challenged
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`Patents.” See Ex. 1006, p. 2. PatentRatings’ discovery requests expressly define
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`the “Challenged Patents” to exclude the ’849 patent. See Id. (listing the
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`“Challenged Patents” and not including the ’849 patent). Indeed, the ‘849 patent
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`did not even issue until over three months after PatentRatings’ service of these
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`discovery requests on Petitioner. Thus, these discovery requests do not support
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`Case No. CBM2015-00157
`U.S. Patent No. 9,075,849
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`Petitioner’s assertion that it has been “charged with infringement” of the ‘849
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`patent.
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`Moreover, even if Petitioner’s characterization of the PatentRatings’
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`discovery requests was accurate, which it is not, these discovery requests still
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`would not support Petitioner’s assertion that it has been “charged with
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`infringement” of the ‘849 patent. Petitioner has cited no legal authority supporting
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`the notion that merely requesting that a party in litigation identify products or
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`services that may infringe a set of patents amounts to a “charge of infringement” of
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`those patents. In any event, by express definition, the ’849 patent is not included
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`in the “Challenged Patents” that are referred to in these discovery requests.
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`B.
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`1.
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`The Petition Fails to Establish that a “Real and Substantial Case
`or Controversy” Exists Regarding Infringement of the ’849 Patent
`Petitioner’s Reliance on MedImmune Is Misplaced; Unlike
`
`in MedImmune, There Is No Case or Controversy
`Regarding Infringement of Any Patent, Let Alone the ’849
`Patent
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`
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`Petitioner asserts that a justiciable controversy exists between Petitioner and
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`PatentRatings regarding the ’849 patent because: (i) Petitioner is a field-of-use
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`exclusive licensee under the License Agreement (which allegedly includes the ’849
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`patent); and (ii) PatentRatings has alleged that Petitioner breached that License
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`Agreement by failing to pay certain amounts due. Petition, p. 12. Based on these
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`allegations and relying primarily upon MedImmune, Inc. v. Genentech, Inc., 549
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`U.S. Patent No. 9,075,849
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`U.S. 118 (2007), Petitioner contends it “has standing to bring a declaratory
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`judgment action regarding each and every one of the patents covered by the
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`License Agreement.” Id. This, however, is not correct.
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`
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`Contrary to Petitioner’s assertion, “MedImmune does not stand for the
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`proposition that an Article III case or controversy exists automatically whenever a
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`competitor desires to mount a validity challenge.” Streck, Inc. v. Research &
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`Diagnostic Systems, 665 F. 3d 1269, 1284. In particular, and “[u]nder
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`MedImmune, a party seeking declaratory judgment still ‘has the burden of
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`establishing the existence of an actual case or controversy.’” Id. (citing
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`MedImmune, 549 U.S. at 140). A justiciable controversy exists when “the facts
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`alleged, under all the circumstances, show that there is a substantial controversy,
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`between parties having adverse legal interests, of sufficient immediacy and reality
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`to warrant the issuance of a declaratory judgment.” Id. at 1282.
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`
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`In MedImmune, a disputed license agreement included an issued patent
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`relating to the production of certain “chimeric antibodies” and a then-pending
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`patent application relating to certain “co-expression antibodies.” MedImmune, 549
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`U.S. at 122. The licensee agreed to pay royalties on sales of “Licensed Products,”
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`which were defined as a specified antibody, “[t]he manufacture, use or sale of
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`which ... would, if not licensed under the Agreement, infringe one or more claims
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`of either or both of [the covered patents,] which have ne