IPR2014-00766
`U.S. Patent 8,214,873
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`YAMAHA CORPORATION OF AMERICA
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`
`___________________
`
`Case No. IPR2014-00766
`U.S. Patent 8,214,873
`
`___________________
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING ON THE
`INSTITUTION DECISION PURSUANT TO 37 C.F.R. §42.71
`
`
`U.S. Patent 8,214,873
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`YAMAHA CORPORATION OF AMERICA
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`
`___________________
`
`Case No. IPR2014-00766
`U.S. Patent 8,214,873
`
`___________________
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING ON THE
`INSTITUTION DECISION PURSUANT TO 37 C.F.R. §42.71
`
`
`
`TABLE OF CONTENTS
`
`IPR2014-00766
`U.S. Patent 8,214,873
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED .......... 1
`
`STANDARD OF REVIEW ............................................................................ 2
`
`III. BASIS FOR RELIEF REQUESTED ............................................................. 3
`
`A.
`
`The Board Erred In The Application Of The Law Governing
`The One-Year Petition Filing Deadline Under 35 U.S.C. §
`315(b) ................................................................................................... 3
`
`IV. CONCLUSION ............................................................................................... 7
`
`
`
`-i-
`
`
`
`IPR2014-00766
`U.S. Patent 8,214,873
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Histologics, LLC v. CDX Diagnostics, Inc., et al., IPR2014-00779, Paper 6
`(PTAB, September 12, 2014) ......................................................................passim
`
`Page(s)
`
`Histologics, LLC v. CDX Diagnostics, Inc., et al., IPR2014-00779, Paper 9
`(PTAB, October 16, 2014) ............................................................................ 2, 5, 6
`
`STATUTES
`
`35 U.S.C. § 315 (b) .................................................................................................... 2
`
`
`
`-ii-
`
`
`
`IPR2014-00733
`U.S. Patent 8,458,356
`
`TABLE OF EXHIBITS
`
`
`
`Exhibit Description (Previously Submitted)
`
`Exhibit #
`
`Declaration of Gareth Loy and Exhibits A - N thereto (previously
`filed in IPR2013-00598 (U.S. Patent 8,214,873) as Ex. 2011)
`
`Deposition Transcript of Dr. Bove dated 5/29/2014 (previously
`filed in IPR2013-00598 (U.S. Patent 8,214,873) as Ex. 2012)
`
`
`2001
`
`2002
`
`
`
`
`
`-iii-
`
`
`
`IPR2014-00766
`U.S. Patent 8,214,873
`Pursuant to 37 C.F.R. § 42.71(d), Black Hills Media, LLC (“Patent Owner”)
`
`hereby submits the following Request for Rehearing in response to the Decision,
`
`Institution of Inter Partes Review of U.S. Patent No. 8,214,873 (“Decision”)
`
`(Paper 7).
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`
`In the Decision, the Board declined to deny the Petition under 35 U.S.C. §
`
`315(b), stating:
`
`Thus, neither Patent Owner’s original 2012 complaint nor its FAC
`were viable federal pleadings. Patent Owner finally filed a federal
`complaint properly alleging its standing to sue, on January 21, 2014.
`The instant petition was filed in May 2014. Accordingly, Patent
`Owner’s argument under § 315(b) fails.
`
`(Decision at 9). It is respectfully submitted that the Board reached an erroneous
`
`conclusion of law when it failed to find that the September 19, 2012, First
`
`Amended Complaint involving the ‘873 patent did not become a nullity upon
`
`dismissal without prejudice because, to this day, Petitioner remains answerable to
`
`the district court for the allegations made in the original First Amended Complaint
`
`and pursuant to the schedule issued from the First Amended Complaint. As such,
`
`the parties were not left in the same legal position as if the First Amended
`
`Complaint had never been filed.
`
`
`
`
`
`In light of the Board’s recent decisions to deny a petition pursuant to 35
`
`IPR2014-00766
`U.S. Patent 8,214,873
`
`
`U.S.C. § 315(b) based on a similar fact pattern to the instant proceedings, and
`
`specifically the decisions issued on September 12, 2014 and October 16, 2014, in
`
`Histologics, LLC v. CDX Diagnostics, Inc., et al., IPR2014-00779, Paper 6 and
`
`Paper 9 (PTAB, September 12, 2014 and October 16, 2014, respectively), Patent
`
`Owner requests reconsideration of the Board’s Decision that the Petition is not
`
`barred under 35 U.S.C. § 315(b).
`
`II.
`
`STANDARD OF REVIEW
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`
`panel will review the decision for an abuse of discretion.” “An abuse of discretion
`
`occurs where the decision is based on an erroneous interpretation of the law, on
`
`factual findings that are not supported by substantial evidence, or represents an
`
`unreasonable judgment in weighing relevant factors.” Gose v. United States Postal
`
`Service, 451 F.3d 831, 836 (Fed. Cir. 2006) (internal quotations omitted).
`
`III. BASIS FOR RELIEF REQUESTED
`A. The Board Erred In The Application Of The Law Governing The
`One-Year Petition Filing Deadline Under 35 U.S.C. § 315(b)
`
`In case factually similar to the present Petition where the original complaint
`
`lacked standing because one of the two co-owners was not joined as a party,
`
`Histologics, LLC v. CDX Diagnostics, Inc., et al., IPR2014-00779, Paper 6 (PTAB,
`
`-2-
`
`
`
`September 12, 2014),1 the Board barred the petition as untimely under 35 U.S.C. §
`
`IPR2014-00766
`U.S. Patent 8,214,873
`
`
`315(b).
`
`In Histologics, Shared Medical Resources, LLC (“SMR”), co-owner of U.S.
`
`Patent 6,258,044, (“the ‘044 patent”) filed a patent infringement complaint against
`
`Petitioner Histologics on April 19, 2012 in the U.S. District Court for the Central
`
`District of California (“the First ‘612 Action”). Histologics moved to dismiss the
`
`First ‘612 Action on the basis that SMR lacked standing to sue without the co-
`
`owner of the ’044 patent. SMR explained that CDx did not join as a plaintiff
`
`because CDx was subject to an automatic stay in bankruptcy. Although the court
`
`granted Histologics’ motion and ordered the First ‘612 Action dismissed without
`
`prejudice, the First ‘612 Action was stayed pending the outcome of CDx’s
`
`bankruptcy proceeding.
`
`More than a year later, on May 24, 2013, SMR and CDx jointly filed and
`
`served a second complaint against Histologics for infringement of the ’044 patent
`
`in the U.S. District Court for the Southern District of New York (“the Second ‘909
`
`Action”). On June 14, 2013, Histologics informed the California Court in the First
`
`
`1 Histologics, LLC v. CDX Diagnostics, Inc., et al., IPR2014-00779, Paper 6
`
`(PTAB, September 12, 2014) issued after Patent Owner submitted its Preliminary
`
`Response (Paper 5).
`
`-3-
`
`
`
`‘612 Action that CDx had emerged from bankruptcy and, shortly thereafter, filed
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`IPR2014-00766
`U.S. Patent 8,214,873
`
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`declaratory judgment counterclaims in the First ‘612 Action. On July 3, 2013, the
`
`California Court issued an order lifting the stay on the First ‘612 Action and
`
`“restor[ing] this case to its active caseload” without referencing the dismissal of
`
`the First Action.
`
`On October 25, 2013, the New York Court ordered the Second ‘909 Action
`
`transferred to the California Court. On February 11, 2014, the California Court
`
`consolidated the First ‘612 Action with the Second ‘909 Action and dismissed the
`
`First ‘612 Action. The order dismissing the First ‘612 Action did not specify
`
`whether the dismissal was with or without prejudice. Histologics argued that its
`
`petition is timely” because it was filed not more than one year after the date it was
`
`served with a ‘non-jurisdictionally-deficient’ complaint.” Histologics, Paper 6 at
`
`4. The Board disagreed and determined that the First ‘612 Action bars
`
`Histologics’ Petition stating:
`
`Histologics was served with a complaint alleging infringement of the
`’044 patent more than one year before it filed its Petition. It remains
`involved in litigation stemming from that complaint. The allegation
`of patent infringement in the ’612 action was consolidated into the
`’909 action, as were Histologics’s counterclaims filed in the ’612
`action. To the extent that the ’612 action was dismissed, it did not
`render service of the complaint in the ’612 action a nullity, because
`
`-4-
`
`
`
`IPR2014-00766
`U.S. Patent 8,214,873
`
`
`Histologics remains answerable to the U.S. District Court for the
`Central District of California for the allegations made in that
`complaint. The parties are not left in the same legal position as if the
`’612 action had never been filed.
`
`Histologics, Paper 6 at 5 (emphasis added). The Board further found that the
`
`earlier dismissal for lack of standing of the First ‘612 Action did not nullify the
`
`effect of earlier service, reasoning as follows:
`
`Although the Court characterized the disposition of the case as a
`dismissal without prejudice, the actions of both the Court and
`Histologics demonstrate that the case was merely stayed, not
`dismissed. The Court expressly stayed the ’612 action at the same
`time as it ordered dismissal. The Court later lifted the stay and
`“restore[d] this case to its active caseload”—in effect vacating the
`dismissal. Ex. 3001. Histologics, similarly, treated the ’612 action as
`not dismissed, by filing counterclaims in the ’612 action and in
`characterizing the ’612 action as “pending” and “not . . . dismissed.”
`
`Id. at 5-6. The Board denied Histologics’ request for rehearing, Histologics, LLC
`
`v. CDX Diagnostics, Inc., et al., IPR2014-00779, Paper 9 (PTAB, October 16,
`
`2014), reiterating:
`
`As we explained, the issue in this case was whether service of SMR’s
`complaint was nullified by the Court’s dismissal of the ’612 action.
`We explained that service was not nullified, because Histologics
`remained answerable to the Court for the allegations made in the
`
`-5-
`
`
`
`original ’612 action complaint, and that the parties were not left in
`the same legal position as if the ’612 action had never been filed.
`
`IPR2014-00766
`U.S. Patent 8,214,873
`
`
`Paper 9 at 3 (citations omitted) (emphasis added). Despite the fact that the First
`
`‘612 Action suffered from lack of standing, the Board still found that because the
`
`action continued by virtue of Histologics’ having to answer “to the Court for the
`
`allegations made in the original ‘612 action complaint, and that the parties were
`
`not left in the same legal position as if the ’612 action had never been filed.” Id.
`
`
`
`Similarly in the case at bar, when the Patent Owner refiled the complaint on
`
`January 21, 2014, Petitioner remained answerable to the Court for the allegations
`
`made in the First Amended Complaint and the refiled complaint continued
`
`according to the schedule of the First Amended Complaint. As Patent Owner
`
`stated in the Preliminary Response (Paper 6 at 4), the court ordered that “[i]f
`
`Plaintiff files new complaints in the Central District of California and serves
`
`Defendants with these complaints by January 21, 2014, the Court shall maintain
`
`the schedule set forth in the November 12, 2013 Scheduling Conference as
`
`allowed under Fed. R. Civ. P. 16(a).” Id. (citations omitted) (emphasis in the
`
`original). Thus, under Histologics, the dismissal of the First Amended Complaint
`
`is not a nullity, and the service of that complaint is not nullified, because Petitioner
`
`remained answerable to the court for the allegations made in the First Amended
`
`-6-
`
`
`
`Complaint. As such, the Petition was filed more than one year after the date on
`
`IPR2014-00766
`U.S. Patent 8,214,873
`
`
`which it was served with a complaint alleging patent infringement.
`
`IV. CONCLUSION
`For all the reasons stated above, Patent Owner respectfully requests that the
`
`Board deny the Petition as untimely under 35 U.S.C. § 315(b).
`
`Dated: December 8, 2014
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Lana A. Gladstein /
`Lana A. Gladstein, Reg. No. 48,502
`Thomas J. Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02210
`Tel: (617) 204-5100
`Fax: (617) 204-5150
`
`Christopher Horgan, Reg. No. 40,394
`Concert Technology
`1438 Dahlia Loop
`San Jose, CA 95126
`Tel: (408) 687-8306
`
`Counsel for Patent Owner
`Black Hills Media, LLC
`
`-7-
`
`
`
`IPR2014-00766
`U.S. Patent 8,214,873
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on December 8, 2014, a true and accurate copy of this
`paper, PATENT OWNER’S REQUEST FOR REHEARING ON THE
`INSTITUTION DECISION PURSUANT TO 37 C.F.R. §42.71, was served on the
`following counsel for Petitioner via email:
`
`
`
`David L. Fehrman, Esq.
`Mehran Arjomand, Esq.
`Morrison & Foerster LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`
`(dfehrman@mofo.com)
`(marjomand@mofo.com)
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Lana A. Gladstein /
`Lana A. Gladstein, Reg. No. 48,502
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02210
`Tel: (617) 204-5100
`Fax: (617) 204-5150
`
`
`Dated: December 8, 2014
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