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