UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`LG ELECTRONICS, INC. et al.
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE COMMUNCATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`
`________________
`
`Case IPR2015-00198
`Patent 6,009,469
`
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`

`

`I.
`II.
`
`III.
`
`B.
`
`B.
`
`PAGE
`Introduction & Summary of Arguments..........................................................1
`The Petition Is Statutorily Barred....................................................................4
`A.
`The Petition May Not Be Instituted Because Petitioner Hulu
`Previously Filed A Civil Action Challenging The Validity Of
`’469 Patent Claims ................................................................................4
`The Petition May Not Be Granted Because It Was Filed More
`Than One Year After Service Of Straight Path’s ITC Complaint ........7
`1.
`Straight Path’s ITC Complaint Was Served On LG,
`Toshiba, and Vizio More Than A Year Before They Filed
`Their Petition...............................................................................8
`The Petition Is Untimely And Barred Under Section
`315(b)........................................................................................10
`The Petition Does Not Establish The Required Reasonable Likelihood
`That Petitioners Will Prevail In Showing That The Challenged Claims
`Are Unpatentable...........................................................................................15
`A.
`Background And Overview Of The ’469 Patent.................................19
`1.
`The Problems And Solutions Identified By The ’469
`Patent.........................................................................................19
`a. How To Determine (1) Whether A Network Application Is
`Available On-line; and (2) If So, That Application’s
`Address on the Network....................................................19
`Interface Elements For Facilitating The Creation Of Point-
`To-Point Communications Between Processes ................22
`The Challenged ’469 Patent Claims .........................................24
`The ’469 Patent’s Prosecution History.....................................25
`a.
`The Original Prosecution ..................................................26
`b. The Ex Parte Reexaminations...........................................26
`The ’469 Patent’s Relevant Litigation History.........................27
`4.
`Petitioners Fail To Provide The Necessary Support For The
`Proposed Combination Of Pinard With WINS And NetBIOS
`That Forms The Sole Basis For Their Challenge To Claims 1, 2,
`3, 9, 10, 14, 17, 18...............................................................................28
`1.
`Petitioners Bear The Burden Of Proving Why And How
`One Of Ordinary Skill In The Art Would Combine
`Pinard with WINS and NetBIOS..............................................29
`
`TABLE OF CONTENTS
`
`2.
`
`2.
`3.
`
`b.
`
`ii
`
`

`

`2.
`
`Petitioners Have Identified No Evidence Sufficient To
`Meet Their Obviousness Burden ..............................................31
`C. WINS & NetBIOS Do Not Disclose The “Is Connected To The
`Computer Network”/”On-Line”/“Accessible Elements Found In
`Challenged Claims 3, 6, 9, 14, 17, And 18 .........................................36
`1.
`The Correct Claim Construction Analysis of “On-Line”
`and “Is Connected To The Computer Network” ......................38
`a.
`The Correct Claim Construction Standard........................38
`b.
`Petitioners Have Not Overcome The Heavy Presumption
`That “On-Line,” “Accessible,”And “Is Connected To The
`Computer Network” Should Be Given Their Ordinary
`Meaning.............................................................................40
`i. Petitioners’ Proposed Construction Is Not The Ordinary Meaning Of “Is
`Connected To the Computer Network”/“On-Line”/ “Accessible”............42
`ii. The ’469 Specification Confirms That The Ordinary Meaning Should
`Apply Here .................................................................................................43
`iii. The Prosecution History Confirms That The Ordinary Meaning Should
`Apply Here .................................................................................................47
`2.
`Under The Correct Claim Construction, WINS &
`NetBIOS Do Not Disclose The “Is Connected to The
`Computer Network”/“On-Line”/“Accessible” Elements .........48
`D. WINS & NetBIOS Do Not Disclose The “Process” Elements
`Found In Every Challenged Claim......................................................51
`1.
`Petitioners Have Not Overcome The Heavy Presumption
`That “Process” Should Be Given Its Ordinary Meaning..........52
`a.
`Petitioners’ Implicit Construction of “Process” Is
`Inconsistent With Its Ordinary Meaning And The Claims54
`b. The Applicants Did Not Redefine “Process” In The ’469
`Patent’s Specification Or Prosecution History..................55
`Under The Proper Construction, WINS & NetBIOS Do
`Not Disclose The “Process” Elements Found In All
`Challenged Claims Because The WINS and NetBIOS
`References Concern Registering A Computer, Not A
`“Process”...................................................................................57
`IV. Conclusion .....................................................................................................59
`
`2.
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Amkor Technology, Inc. v. Tessera, Inc.,
`Case CBM2013-00242, Paper 98 (PTAB Jan. 31, 2014)...................................14
`
`Apple Inc. v. Rensselaer Polytechnic Institute,
`IPR No. 2014-00320, Paper 12 (PTAB June 12, 2014)…. ................................15
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`IPR No. 2013-00276, Paper 43 (PTAB Oct. 23, 2014)......................................30
`
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) ..........................................................................39
`
`Callcopy v. Verint Americas,
`IPR No. 2013-00486, Paper 11 (PTAB Feb. 5, 2014)…....................................30
`
`Certain Bar Clamps, Bar Clamp Pads, & Related Packaging, Display,
`& Other Materials,
`Inv. No. 337-TA-429, Comm’n Op. (Pub. Version) (Feb. 13, 2001) ................10
`
`Certain Bath Accessories and Component Parts Thereof,
`Inv. No. 337-TA-306, Order No. 6, 1990 ITC LEXIS 426 (USITC
`Feb. 22, 1990) .......................................................................................................8
`
`Certain Integrated Circuit Telecommunication Chips and Products
`Containing Same, Including Dialing Apparatus,
`Inv. No. 337-TA-337, Order No. 63, 1992 ITC LEXIS 625
`(USITC Aug. 28, 1992) ........................................................................................8
`
`Cisco Systems, Inc. v. AIP Acquisition, LLC,
`IPR No. 2014-00247, Paper 20 (PTAB Jul. 10, 2014)…...................................38
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) ........................................... 17, 30, 32, 35, 40, 45
`
`Hill-Rom Servs. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014) ..........................................................................45
`
`iv
`
`

`

`Histologics, LLC v. CDX Diagnostics, Inc.,
`IPR No. 2014-00779, Paper 6 (PTAB Sept. 12, 2014).......................................14
`
`Hoechst Aktiengesellschaft v. Quigg,
`917 F.2d 522 (Fed. Cir. 1990) ............................................................................10
`
`In re Chaganeti,
`554 Fed. Appx. 917, 922 (Fed. Cir. 2014)…......................................................30
`
`In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)… ..........................................................30, 33
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) ............................................................................43
`
`In re Rambus,
`694 F.3d 42 (Fed. Cir. 2012) ..............................................................................38
`
`Innolux Corp. v. Semiconductor Energy Lab.,
`IPR No. 2013-00064, Paper 11 (PTAB Apr. 30, 2013)… .................................38
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (2007)…..........................................................................29, 30
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ..........................................................................40
`
`Laryngeal Mask Co. Ltd. v. Ambu,
`618 F.3d 1367 (Fed. Cir. 2010) ..........................................................................39
`
`Linear Tech Corp. v. Int’l Trade Comm’n,
`566 F.3d 1049 (Fed. Cir. 2009) ..........................................................................40
`
`Microsoft Corp. v. Secure Web Conference Corp.,
`IPR No. 2014-00745, Paper 12 (PTAB Sept. 29, 2014)….....................32, 33, 34
`
`NeuLion, Inc. v. Filippo Costanzo,
`IPR No. 2014-00526, Paper 23 (PTAB Sept. 3, 2014)….............................32, 35
`
`Norman International, Inc. v. Hunter Douglas Inc.,
`IPR No. 2014-00282, Paper 8 (PTAB Jun. 20, 2014)… ....................................34
`
`v
`
`

`

`Sony Corporation v. Straight Path IP Group, Inc.,
`IPR No. 2014-00231 (PTAB Dec. 5, 2013) ...... ………………………………13
`
`Straight Path IP Group, Inc. v. Bandwidth.com, Inc.,
`2014 U.S. Dist. LEXIS 25394 (E.D. Va. Feb. 25, 2014) ...................................28
`
`Symantec Corp. v. RPost Communications Ltd.,
`IPR No. 2014-00355, Paper 12 (PTAB Jul. 15, 2014)….............................29, 30
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ..........................................................................39
`
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012) ....................................................................39, 40
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR No. 2013-00127, Paper 32 (PTAB Jun. 30, 2014)… ..................................38
`
`Wowza Media Systems LLC v. Adobe Systems, Inc.,
`IPR No. 2013-00054, Paper 12 (PTAB Apr. 8, 2013)… .................31, 33, 42, 57
`
`505 Games, Inc. v. Babbage Holdings, Inc.,
`IPR No. 2014-00954, Paper 17 (PTAB Aug. 22,
`2014)………………. ............................................................................................7
`
`Statutes
`35 U.S.C. § 315(a) ............................................................................................passim
`
`35 U.S.C. §§ 315(a)(1).............................................................................................11
`
`35 U.S.C § 315(b) .............................................................................................passim
`
`35 U.S.C. § 325(a)(1)...............................................................................................11
`
`Other Authorities
`
`19 C.F.R. § 210.12 .....................................................................................................8
`
`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011)........................................................3
`
`157 Cong. Rec. S941 (daily ed. Feb. 28, 2011).......................................................12
`
`H.R.Rep. No. 112-98 (2011)..............................................................................12, 13
`
`vi
`
`

`

`TABLE OF EXHIBITS
`
`Description
`Proposed Intervenor Hulu, LLC’s Brief in Support of Motion to
`Intervene Pursuant To Federal Rule of Civil Procedure 24
`Proposed Intervenor Hulu, LLC’s Reply in Support of Motion to
`Intervene
`Hulu, LLC’s Complaint In Intervention filed stamped October 28,
`2014
`Straight Path’s District Court Complaints Against LG, Toshiba, and
`Vizio
`Straight Path’s ITC Complaint and Relevant Exhibits
`Notice of Institution of Investigation
`LG Notice of Appearance
`Vizio Notice of Appearance
`Toshiba Notice of Appearance
`Straight Path’s Motion to Terminate Based on Withdrawal of its
`Complaint
`Straight Path’s Reply in Support of its Motion to Terminate Based
`on Withdrawal of its Complaint
`2014-07-02 Email from Nicholas Armington, counsel for Straight
`Path, to counsel for LG, Toshiba and Vizio
`Reserved
`Reserved
`File History for Reexam Control No. 90/010422
`Joint Submission of Disputed Claim Terms in ITC Inv. No. 337-
`TA-892
`October 26, 2012 Opinion and Order on claim construction in ICT
`v. Vivox (2:12-cv-00007) and ICT v. Stalker Software (2:12-cv-
`00009)
`Excerpt from DICTIONARY OF COMPUTER WORDS (Rev. ed. 1994)
`Excerpt from QUE’S COMPUTER & INTERNET DICTIONARY (6th ed.
`1995)
`Reserved
`
`Exhibit
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`2006
`2007
`2008
`2009
`2010
`
`2011
`
`2012
`
`2013
`2014
`2015
`2016
`
`2017
`
`2018
`2019
`
`2020
`
`vii
`
`

`

`2021
`2022
`2023
`2024
`2025
`
`Excerpt from MICROSOFT COMPUTER DICTIONARY (4th ed. 1999)
`Excerpt from DICTIONARY OF COMPUTER WORDS (Rev. ed. 1994)
`’704 Patent File History
`Reserved
`’469 Patent File History
`
`viii
`
`

`

`Case IPR2015-00198
`Patent No. 6,009,469
`
`I.
`
`Introduction & Summary of Arguments
`
`Straight Path IP Group, Inc.’s U.S. Patent No. 6,009,469 (the ’469 patent)
`
`concerns a system for allowing real-time point-to-point connections between
`
`running applications over a network. To overcome deficiencies in the prior art, the
`
`patent disclosed a connection server and methods for enabling a first application to
`
`determine if a second application is connected to a network and, if so, to obtain
`
`that second application’s network address so that the desired point-to-point
`
`communication can be established.
`
`In contrast, Petitioner’s two references (“WINS” and “NetBIOS”) do not
`
`concern whether an application is on-line and available for communication. Rather,
`
`they concern whether a computer has a valid registered network name. But whether
`
`a computer has a registered name has no bearing on whether that computer is
`
`actually connected to the network – as the references explicitly admit. In both
`
`WINS and NetBIOS, a computer can register its name, then disconnect from the
`
`network, and still have an active registered name despite being offline. The
`
`existence of a computer name in the registry, therefore, does not indicate that the
`
`computer is currently connected to the network.
`
`And even if it did, whether a computer is on-line does not indicate whether
`
`one of its many applications is running and also connected to the network. All of
`
`the challenged claims concern a “process,” and most additionally concern whether
`
`1
`
`

`

`Case IPR2015-00198
`Patent No. 6,009,469
`
`that process “is connected to the computer network,” “on-line” or “accessible.”
`
`The asserted references do not disclose these claim elements, but instead
`
`contemplate only a system that keeps track of a computer’s (not a process’s)
`
`registered network name (not whether it is on-line) and, therefore, cannot render
`
`any challenged claim unpatentable.
`
`In addition, all of the challenged claims except for claims 5 and 6 require
`
`interface and caller/callee process elements that the WINS and NetBIOS references
`
`do not disclose. Petitioners argue that these missing elements are provided by
`
`another reference, Pinard, but Petitioners identify no basis for combining Pinard
`
`with WINS and NetBIOS. Although Petitioners were required to identify evidence
`
`sufficient to meet their burden of showing how and why one of ordinary skill in
`
`the art would have combined these three references to arrive at the claimed subject
`
`matter, Petitioners instead merely argue that one of skill could have combined
`
`these references, which this Board has repeatedly found insufficient to support
`
`institution of an inter partes review.
`
`But the Board need not even consider these substantive failings because the
`
`requested inter partes review is statutorily barred. First, 35 U.S.C. § 315(a)
`
`provides that “an inter partes review may not be instituted if, before the date on
`
`which the petition for such a review is filed, the petitioner or real party in interest
`
`filed a civil action challenging the validity of a claim of the patent.” The requested
`
`2
`
`

`

`Case IPR2015-00198
`Patent No. 6,009,469
`
`inter partes review is thus barred because Petitioner Hulu filed a complaint in
`
`district court challenging the validity of ’469 patent claims on October 28, 2014—
`
`three days before the Petition’s October 31, 2014 filing date.
`
`Second, 35 U.S.C § 315(b) prohibits institution of an inter partes review if a
`
`petitioner was “served with a complaint alleging infringement of the [challenged]
`
`patent” more than one year prior to the filing date of its IPR petition. The inter
`
`partes review requested here is thus barred because Petitioners LG, Toshiba, and
`
`Vizio were each served with an ITC complaint alleging infringement of the ’469
`
`patent on September 4, 2013, well over a year before the Petition’s October 31,
`
`2014 filing date.
`
`In sum, the Patent Trial and Appeal Board should therefore deny LG,
`
`Toshiba, Vizio, and Hulu’s Petition requesting inter partes review of Straight
`
`Path’s ’469 patent because:
`
`(1)
`
`Inter partes review is statutorily barred because Petitioner Hulu filed a
`
`civil action challenging the validity of a claim of the patent before the Petition’s
`
`filing date.
`
`(2)
`
`Inter partes review is statutorily barred because Petitioners LG,
`
`Toshiba, and Vizio were served with a complaint alleging that they infringe the
`
`’469 patent more than one year before the Petition’s filing date.
`
`(3)
`
`The Petition fails to establish the required reasonable likelihood that
`
`3
`
`

`

`Case IPR2015-00198
`Patent No. 6,009,469
`
`Petitioners could establish how and why combining WINS, NetBIOS, and Pinard
`
`to arrive at the patented subject matter would have been obvious to one of ordinary
`
`skill in the art, as required for Petitioners’ entire Count 1 and all of their challenges
`
`to claims 1, 2, 3, 9, 10, 14, 17, and 18.
`
`(4)
`
`The Petition fails to establish the required reasonable likelihood that
`
`Petitioners could establish that WINS and NetBIOS disclose the “is connected to
`
`the computer network,” “on-line,” and “accessible” limitations, as required by
`
`Petitioners’ Counts 1 and 2 and all of their challenges to claims 3, 6, 9, 14, 17, and
`
`18.
`
`(5)
`
`The Petition fails to establish the required reasonable likelihood that
`
`Petitioners could establish that WINS and NetBIOS disclose the “process”
`
`limitations, as required by Petitioners’ Counts 1 and 2 and all of their assertions
`
`against all of the challenged claims.
`
`II.
`
`The Petition Is Statutorily Barred
`
`A.
`
`The Petition May Not Be Instituted Because Petitioner Hulu
`Previously Filed A Civil Action Challenging The Validity Of ’469
`Patent Claims
`
`Straight Path never filed a complaint against Hulu for infringement of the
`
`’469 patent. Nonetheless, before filing this Petition, Hulu chose to file a civil
`
`declaratory judgment action challenging the validity of ’469 patent claims. But
`
`under 35 U.S.C. § 315(a), “an inter partes review may not be instituted if, before
`
`4
`
`

`

`Case IPR2015-00198
`Patent No. 6,009,469
`
`the date on which the petition for such a review is filed, the petitioner or real party
`
`in interest filed a civil action challenging the validity of a claim of the patent.”
`
`Accordingly, under section 315(a), this requested inter partes review “may not be
`
`instituted.”
`
`Hulu filed its declaratory judgment complaint through an October 3, 2014
`
`motion to intervene in the Eastern District of Virginia, where Straight Path had
`
`filed suit against LG, Toshiba, and Vizio – but not Hulu – in August 2013. (See
`
`generally Ex. 2001 (attaching Hulu’s proposed Motion in Intervention) (“Hulu
`
`MTI”)). In Hulu’s own words, “Hulu sought to intervene [in the Eastern District of
`
`Virginia because it was] the jurisdiction that indisputably would provide the fastest
`
`adjudication as to whether Hulu’s product infringes and Straight Path’s patents
`
`are invalid.” (Ex. 2002 at 1) (emphasis added). Indeed, in moving to intervene,
`
`Hulu expressly confirmed that its proposed complaint challenged the validity of the
`
`’469 patent claims. (See Ex. 2001 at 9-10 (“[Hulu] shares with its partners both
`
`their claims of invalidity regarding Straight Path’s patents and their defenses of
`
`non-infringement.”) (emphasis added); see also Ex. 2002 at 4 (describing Hulu’s
`
`request as one for a decision by the court “both as to invalidity and non-
`
`infringement”) (emphasis added); Ex. 2002 at 6 (stating that Hulu’s case “share[s]
`
`significant common questions of fact and law with LG, Toshiba, and VIZIO, both
`
`5
`
`

`

`Case IPR2015-00198
`Patent No. 6,009,469
`
`as to non-infringement … and as to the invalidity of the asserted
`
`patents.”) (emphasis added)).
`
`Over Straight Path’s opposition, the court allowed Hulu to intervene, and
`
`Hulu filed its Complaint In Intervention on October 28, 2014, three days before it
`
`filed this Petition. (See Ex. 2003). And, as Hulu had represented to the court, its
`
`Complaint challenged the validity of ’469 patent claims, expressly seeking a
`
`declaration that “Hulu does not infringe, directly, indirectly, literally or otherwise,
`
`a valid claim, if any, of the ’469 Patent.” (Ex. 2003 at 5) (emphasis added). Thus,
`
`because Hulu filed a “civil action challenging the validity of a claim of the [’469]
`
`patent” before filing this Petition, the requested inter partes review “may not be
`
`instituted.” See 35 U.S.C. § 315(a).
`
`In an apparent effort to avoid the Section 315(a) bar, Hulu called its cause of
`
`action a “Declaratory Judgment of Non-Infringement of the ’469 Patent.” (Ex.
`
`2003 at 3). But this title is inaccurate: as Hulu had represented to the District
`
`Court, Hulu’s cause of action seeks “adjudication as to whether Hulu’s product
`
`infringes and Straight Path’s patents are invalid.” (Ex. 2002 at 1) (emphasis
`
`added). By the Complaint’s explicit allegations, Hulu asserts two alternate theories,
`
`the first being that the claims do not read on Hulu’s actions, the second being that
`
`the claims are invalid and therefore cannot be infringed: “Hulu does not infringe,
`
`6
`
`

`

`Case IPR2015-00198
`Patent No. 6,009,469
`
`directly, indirectly, literally or otherwise, a valid claim, if any, of the ’469 Patent.”
`
`(Ex. 2003 at 5) (emphasis added).
`
`And the resulting Section 315(a) bar applies equally to Hulu and the other
`
`Petitioners because these “separate companies constitute … a single
`
`Petitioner.” 505 Games, Inc v. Babbage Holdings, Inc., IPR2014-00954, Paper 17
`
`at 2 (PTAB Aug. 22, 2014). “[T]here is but a single party filing the petition, no
`
`matter how many companies are listed as petitioner or petitioners.” Id. Therefore,
`
`because Hulu filed a civil action challenging the validity of the ’469 patent prior to
`
`the filing date accorded to the Petition, the Petition may not be granted for any of
`
`the named Petitioners. Section 315(a) thus bars institution of the requested inter
`
`partes review in its entirety.
`
`B.
`
`The Petition May Not Be Granted Because It Was Filed More
`Than One Year After Service Of Straight Path’s ITC Complaint
`
`The Petition is also statutorily barred as untimely under 35 U.S.C. § 315(b),
`
`which requires that “[a]n inter partes review may not be instituted if the petition
`
`requesting the proceeding is filed more than 1 year after the date on which the
`
`petitioner . . . or privy of the petitioner is served with a complaint alleging
`
`infringement of the patent.” 35 U.S.C. § 315(b). Petitioners LG, Toshiba, and
`
`Vizio were served with a complaint alleging infringement of the ’469 patent more
`
`7
`
`

`

`Case IPR2015-00198
`Patent No. 6,009,469
`
`than a year prior to the filing date of the Petition. Thus, “[a]n inter partes review
`
`may not be instituted.” 35 U.S.C. § 315(b).
`
`1.
`
`Straight Path’s ITC Complaint Was Served On LG,
`Toshiba, and Vizio More Than A Year Before They Filed
`Their Petition
`
`On August 1, 2013 Straight Path filed complaints against LG, Toshiba, and
`
`Vizio in both the International Trade Commission (“ITC”) and in the Eastern
`
`District of Virginia (“EDVA”). Each complaint alleged infringement of Straight
`
`Path patents, including of the ’469 patent. (See Ex. 2004). While Straight Path
`
`made the same allegations in both the ITC and in the EDVA complaints, the
`
`allegations in the ITC complaint were substantially more detailed. (Compare, e.g.,
`
`Ex. 2004 (Straight Path’s District Court Complaints), with Ex. 2005 (Straight
`
`Path’s ITC Complaint and Accompanying Claim Charts)). This is because the ITC
`
`has a higher pleading standard than does the district court. See 19 C.F.R. § 210.12;
`
`see also Certain Integrated Circuit Telecommunication Chips and Products
`
`Containing Same, Including Dialing Apparatus, Inv. No. 337-TA-337, Order No.
`
`63, 1992 ITC LEXIS 625, 33 n.7 (U.S.I.T.C. Aug. 28, 1992) (“‘[U]nlike notice
`
`pleading in a district court, the ITC requires fact pleading in section 337
`
`proceedings.’”); Certain Bath Accessories and Component Parts Thereof, Inv. No.
`
`337-TA-306, Order No. 6, 1990 ITC LEXIS 426, 9 (U.S.I.T.C. Feb. 22, 1990)
`
`(“Commission practice requires fact pleading in the Complaint…”). As can be seen
`
`8
`
`

`

`Case IPR2015-00198
`Patent No. 6,009,469
`
`in Exhibit 2005, Straight Path’s ITC Complaint includes claim charts detailing
`
`with particularity Straight Path’s infringement contentions on an element by
`
`element basis.
`
`Pursuant to C.F.R. § 210.11(a)(1), the ITC officially served Straight Path’s
`
`Complaint on LG, Toshiba, and Vizio on September 4, 2013. (See Exhibit 2006
`
`(identifying LG, Toshiba, and Vizio as parties to be served)). Yet, LG, Toshiba,
`
`and Vizio waited for over a year before filing the Petition here, finally filing on
`
`October 31, 2014.
`
`All three Petitioners appeared in the ITC investigation by September 16,
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`2014. (See Ex. 2007 (LG Notice of Appearance); Ex. 2008 (Vizio Notice of
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`Appearance); and Ex. 2009 (Toshiba Notice of Appearance)). Soon thereafter, LG,
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`Toshiba, and Vizio each filed a motion seeking a stay of the parallel EDVA district
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`court actions. The EDVA district court granted the motions and entered orders
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`staying each of the district court matters in view of the co-pending ITC
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`investigation. Service of process in each of the district court actions was made on
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`each of the LG, Toshiba, and Vizio petitioners between November 6, 2014 and
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`November 7, 2014.
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`The Petitioners and Straight Path litigated vigorously in the ITC. The parties
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`conducted substantial fact and expert discovery and submitted proposed claim
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`constructions, numerous expert reports, final infringement and invalidity
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`contentions, and prehearing briefs. On May 5, 2014, Straight Path sought to
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`terminate the ITC investigation to allow the parties to continue to pursue their
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`claims in the pending EDVA actions—a venue better suited to prevent third-party
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`discovery misconduct. (See Ex. 2010; Ex. 2011).
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`The Commission subsequently terminated the ITC investigation. The
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`termination of the ITC matter was neither with nor without prejudice. In fact,
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`terminations at the ITC cannot be “with prejudice” or “without prejudice.” See,
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`e.g., Certain Bar Clamps, Bar Clamp Pads, & Related Packaging, Display, &
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`Other Materials, Inv. No. 337-TA-429, Comm’n Op. (Pub. Version), at 7 (Feb. 13,
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`2001).
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`As a result of the termination, on July 18, 2014, the EDVA court lifted the
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`relevant stays and re-opened Straight Path’s infringement actions against LG,
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`Toshiba, and Vizio. In each case, the parties worked together to transfer the
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`discovery obtained in the ITC for use in each district court case. (See Ex. 2012).
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`2.
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`The Petition Is Untimely And Barred Under Section 315(b)
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`“It is well settled law that the plain and unambiguous meaning of the words
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`used by Congress prevails in the absence of a clearly expressed legislative intent to
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`the contrary.” Hoechst Aktiengesellschaft v. Quigg, 917 F.2d 522, 526 (Fed. Cir.
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`1990). The plain language of the time bar outlined in Section 315(b) is
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`unambiguous, and neither the remaining portions of the Patent Act, nor the
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`legislative history of the AIA suggest anything other than that each word be given
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`its plain meaning.
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`Under the plain meaning of Section 315(b), the analysis is simple. LG,
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`Toshiba, and Vizio filed their Petition on October 31, 2014. However, each was
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`served with Straight Path’s ITC Complaint on September 4, 2013, more than a year
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`before the Petition’s filing date. Consequently, their “petition requesting the
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`proceeding [was] filed more than 1 year after the date on which the petitioner . . .
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`[was] served with a complaint alleging infringement of the patent” and the
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`requested “inter partes review may not be instituted.” See 35 U.S.C. § 315(b).
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`That the complaint served on Petitioners was filed in the ITC rather than in
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`civil court has no bearing on whether the Board should enforce the Section 315(b)
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`statutory bar required by Congress. The plain language of Section 315(b) carves
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`out no exception for ITC complaints, nor does it limit the scope of Section 315(b)
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`to only civil complaints. In contrast, when drafting the amendments to the Patent
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`Act included in the America Invents Act, Congress explicitly identified which
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`statutory bars are limited to civil actions. See, e.g., 35 U.S.C. §§ 315(a)(1) (“Inter
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`partes review barred by civil action”); 35 U.S.C. § 325(a)(1) (“Post-grant review
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`barred by civil action”). Section 315(b) does not include any such language
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`limiting it to only civil actions, but by its explicit and plain language encompasses
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`any complaint alleging patent infringement, including an ITC complaint.
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`In fact, Congress contemplated limiting Section 315(b) to a “civil action”
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`but decided not to do so. Instead, on February 28, 2011, the Senate introduced an
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`amendment, S.23 “Patent Reform Act of 2011,” which amended the proposed
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`version of Section 315(b) from:
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`“(b) PATENT OWNER’S ACTION.—An inter partes review may not be
`instituted if the petition requesting the proceeding is filed more than 3
`months after the date on which the petitioner, real party in interest, or his
`privy is required to respond to a civil action alleging infringement of the
`patent.”
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`to:
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`“(b) PATENT OWNER’S ACTION.—An inter partes review may not be
`instituted if the petition requesting the proceeding is filed more than 6
`months after the date on which the petitioner, real party in interest, or his
`privy is served with a complaint alleging infringement of the patent. The
`time limitation set forth in the preceding sentence shall not apply to a request
`for joinder under subsection (c).”
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`157 Cong. Rec. S941 (daily ed. Feb. 28, 2011) (emphasis added). The Senate
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`introduced Amendment S.23 on January 25, 2011, and passed the amended version
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`on March 8, 2011 with the “civil action” limitation removed. There is thus no basis
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`for limiting the Section 315(b) to civil actions.
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`Indeed, excluding ITC complaints from the scope of Section 315(b) would
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`defeat Congress’s intent that Section 315(b) help ensure that inter partes reviews
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`“provid[e] quick and cost effective alternatives to litigation.” H.R.Rep. No. 112-
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`98, at 48 (2011), as reprinted in 2011 U.S.C.C.A.N. 67, 78. To achieve this stated
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`goal, Section 315(b) was enacted as a “deadline for allowing an accused infringer
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`to seek inter partes review after he has been sued for infringement.” 157 Cong.
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`Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl). The deadline helps to
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`ensure that inter partes review is not intended to be used as a “tool[] for
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`harassment” by “repeated litigation and administrative attacks.” H.R. Rep. No.
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`112-98 at 48, as reprinted in 2011 U.S.C.C.A.N. at 78. Congress expressly
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`recognized that allowing such attacks “would frustrate the purpose of the section as
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`providing quick and cost effective alternatives to litigation.” Id.
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`Excluding ITC complaints from the scope of Section 315(a) bars would
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`allow exactly the type of harassment the bar was intended to prevent, both in
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`general and in this specific case. For example, here, Sony Corporation was a co-
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`defendant in Straight Path’s ITC litigation against LG, Toshiba, and Vizio. Unlike
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`LG, Toshiba, and Vizio, however, Sony filed a timely petition for inter partes
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`review of the ’469 patent only a few months after service of the ITC Complaint.
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`See Sony Corporation v. Straight Path IP Group, Inc., IPR No. 2014-00231
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`(PTAB Dec. 5, 2013). Instead of participating in Sony’s petition, however, the
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`current Petitioners waited over a year to file yet another petition asserting the same
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`prior art cited by previous petitioners, thus resulting in the exact type of
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`“harassment” b