UNITED STATES PATENT AND TRADEMARK OFFICE
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`PaperNo. 13 A
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Ocean Tomo, LLC,
`Petitioner
`
`V.
`
`PatentRatings, LLC,
`Patent Owner
`
`Case: CBM2015-00157
`
`Patent No. 9,075,849 B2
`
`Mail Stop PA TENT BOARD
`Patent Trial and Appeal Board
`U.S.P.T.O.
`
`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`PETITIONER’S REPLY TO
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`CHICAGO/#2779248
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`
`
`PaperNo. 13 A
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Ocean Tomo, LLC,
`Petitioner
`
`V.
`
`PatentRatings, LLC,
`Patent Owner
`
`Case: CBM2015-00157
`
`Patent No. 9,075,849 B2
`
`Mail Stop PA TENT BOARD
`Patent Trial and Appeal Board
`U.S.P.T.O.
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`CHICAGO/#2779248
`
`
`
`Covered Business Method Patent Review
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`Paper No. 13
`
`U.S. Patent No. 9,075,849
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`In its Preliminary Response, PatentRatings, LLC (“PR”) made the following
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`bold and explicit statement regarding the business relationship between Petitioner
`
`Ocean Tomo, LLC (“OT”) and PR:
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`Thus,
`
`the License Agreement sets forth no payment obligations
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`arising from Petitioner’s use or exploitation of any patents owned by
`
`PatentRatings, including the ‘849 patent.
`
`(Paper No. 10 at 7) (emphasis in original).
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`This statement is both false and contrary to statements made by PR in
`
`briefing during prior actions between the parties regarding the agreement between
`
`the parties (the “License Agreement”). More importantly, this false statement
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`forms the basis for PR’s assertion that OT does not have standing based on its
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`alleged failure to demonstrate the requirement under 37 C.F.R. § 42.3 O2(a) that OT
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`has been “charged with infringement.” If, in fact, the License Agreement actually
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`requires “payment obligations arising from OT’s use or exploitation of any patents
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`owned by PatentRatings,” then PR’s ability to challenge the “charged with
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`infringement” requirement vanishes.
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`I.
`
`The License Agreement Requires OT to Pay PR for the Use and
`Exploitation of the PatentRatings Patents
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`Section 4.3 of the License Agreement states that:
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`Revenue Transfer.
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`In consideration for the licenses granted herein
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`and other terms and conditions hereof, LICENSEE agrees to pay
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`CHICAGO/#2779248
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`
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`Covered Business Method Patent Review
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`Paper No. 13
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`U.S. Patent No. 9,075,849
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`LICENSOR any revenues received by LICENSEE in accordance with
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`Section 4.2,‘ for access and use of PatentRatings Analysis. . ..
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`(Exhibit 1002 at 5). Section 1.7 of the License Agreement states:
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`“PatentRatings Analysis” means any information or report including
`
`or using the data output of one or more PatentRatings Tools, including
`
`patent ratings reports (e.g. IPQ scores and related analysis), portfolio
`
`mapping analysis, strategic analysis and recommendations, and patent
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`Valuation (collectively, “PatentRatings Analysis”).
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`Id. at 2. Thus, Section 1.7 defines PatentRatings Analysis as “using the data output
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`of one or more PatentRatings Tools.”
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`Further, Section 1.11 of the License
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`Agreement defines PatentRatings Tools as:
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`LICENSOR’S technology, know-how, software (,
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`[sic] computer
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`algorithms,
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`techniques,
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`[sic]
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`for
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`statistically analyzing,
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`rating,
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`mapping and Valuing patents and/or other intellectual property assets,
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`and including any documentation and research relating to such
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`software) and other LICENSOR intellectual property relating to the
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`foregoing (including the PatentRatings Patents, PatentRatings
`
`Copyrights and Patentkatings Marks).
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`Id. at 3 (emphasis added). Hence, “PatentRatings Analysis” includes “any
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`1 Section 3.l(b) of the License Agreement limits Licensee (OT) to “distribute, sell,
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`license or other transfer for use
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`and display PatentRatings Analysis to third
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`parties for afee.” (Exhibit 1002 at 4.) (emphasis added).
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`CHICAGO/#2779248
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`
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`Covered Business Method Patent Review
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`U.S. Patent No. 9,075,849
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`‘
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`Paper No. 13
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`information or report including or using the data output of’ the PatentRatings
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`Patents. “PatentRatings Patents,” in turn, is defined in Section 1.10 as “all patent
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`applications and patents, and all continuations, continuations-in-part, divisionals,
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`and foreign counterparts of such patents and patent applications that are owned by
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`LICENSOR.” Id. at 3.
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`The amendment to the License Agreement entered into on July 19, 2007
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`does not alter the relationship between the PatentRatings Analysis and the
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`PatentRatings Patents, nor the requirement for OT to pay PR for such use.
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`(Exhibit 1002 at 20—2l)2 Throughout the various agreements, the use of the
`PatentRatings Analysis has always included the use of the PatentRatings Patents
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`and payment for that use.
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`II.
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`PR’s Pleadings and Briefs in Related Litigation Confirm This Business
`Relationship between the Parties
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`PR has made clear in related litigation that the business relationship between
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`the parties requires OT to pay for the use and exploitation of PR’s intellectual
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`property,
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`including PR’s patents.
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`(See Exhibit 1026 at 5)
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`(“The legal and
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`contractual relationship between PR and OT is properly stated as ‘Licensor’ and
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`‘Licensee’——that is PR owns certain rights and OT pays royalties to use those
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`2 The Supplemental License Agreement dated also does not change the License
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`Agreernent’s relevant terms. (Exhibit 1027.)
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`CHICAGO/#2779248
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`
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`Covered Business Method Patent Review
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`Paper No. 13
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`U.S. Patent No. 9,075,849
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`rights”) PR further admitted that “PR has no employees and no business
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`operations whatsoever other than licensing its Intellectual Property3 and collecting
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`royalties.” Id.
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`In addition, and contrary to the attempt in PR’s Preliminary Response to
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`distinguish software and algorithms from the patented technology, PR merged the
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`two in its previous submissions. For example, PR notes in its arbitration brief that
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`“PR developed and patented the intellectual property rights to various software,
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`algorithms and techniques for statistically analyzing and valuing patents (the
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`‘Intellectual Property’).” Id. at 7. PR further confirmed that the technology it uses
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`is covered by its patents. Id. (“PR soon established itself as a leading authority on
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`rating and valuing patents using its patented statistical techniques”).
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`PR’s Amended Counterclaim in the Illinois District Court action confirmed
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`that the algorithm was covered by the PatentRatings Patents. (Exhibit 1005 at 2.)
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`(“The statistical rating algorithm underlying the PatentRatings System has been
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`awarded multiple patents by the United States Patent and Trademark Office. . ..”)
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`IH.
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`PR’s Arguments Challenging OT’s Assertion Based On Medlmmune
`That It Has Been “Charged With Infringement” Relies Solely on PR’s
`Assertion That No Royalty Is Owed for the Use of Patented Technology
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`3 In this brief, PR defines “Intellectual Property” as “innovative patents and other
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`intellectual property.” Id.
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`CHICAGO/#2779248
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`
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`Covered Business Method Patent Review
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`Paper No. 13
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`U.S. Patent No. 9,075,849
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`PR argues that “the parties’ License Agreement includes no provisions that i
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`A
`
`I
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`condition payment or other contractual obligation on the scope or validity of any
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`patents held by PatentRatings.”
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`(Paper No. 10, at 16). As noted above, the
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`License Agreement clearly requires payment for the use of the PatentRatings
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`Patents. Moreover, PR has admitted in prior proceedings that the software and
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`algorithms are protected by the PatentRatings Patents. The License Agreement is
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`in fact “based on but—for patent infringement” as required under Medlmmune Inc.
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`v. Genentech, Inc., 549 U.S. 118, 137 (2007). Consequently, the dispute with PR
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`includes the requisite immediacy and reality to support the exercise of declaratory
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`judgment jurisdiction over the questions of patent infringement and validity.
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`Having demonstrated that the only basis for alleging that OT has not been
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`“charged with infringement” as defined in Section l8(a)(l)(B) of the Leahy—Smith
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`America Invents Act, and elaborated on in 37 C.F.R.
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`§ 42.302(a), has been
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`eliminated, OT has standing to bring this petition with respect to a covered
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`business method patent.
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`Dated: December 1, 2015
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`CHICAGO/#2779248
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`
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`Robert S. Rigg, Lead Counse
`Reg. No. 36,991
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Reply to Patent OWner’s Preliminary Response was served Via email directed to
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`counsel of record for the Patent Owner at the following:
`
`James Cooke
`
`j arnes.cooke@finnegan.com
`
`Joshua Goldberg
`joshua.goldberg@finnegan.con1
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`Dated: December 1, 2015
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`
`
`By:4_£kf
`lliobert S. Rigg
`Registration No. 36,991
`
`CHICAGO/#2779248
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