Case No. IPR2015-00198
`Patent No. 6,009,469
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`Paper No. ___________
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`LG ELECTRONICS, INC., et al.
`Petitioners
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`
`________________
`
`Case No. IPR2015-00198
`Patent No. 6,009,469
`
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT
`6,009,469 UNDER 35 U.S.C. §§ 311–319
`
`
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`
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`920374
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`Patent No. 6,009,469
`
`Paper No. ___________
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`LG ELECTRONICS, INC., et al.
`Petitioners
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`
`________________
`
`Case No. IPR2015-00198
`Patent No. 6,009,469
`
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT
`6,009,469 UNDER 35 U.S.C. §§ 311–319
`
`
`
`
`
`
`920374
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`As explained during the March 4, 2015 telephonic hearing, Patent Owner’s
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`two statutory-bar arguments lack factual and legal support. As to Hulu, Patent
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`Owner ignores the determinative fact: Hulu’s complaint in intervention only
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`alleged noninfringement and does not allege invalidity. Plucking quotes out of
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`context from Hulu’s intervention brief does not transmute Hulu’s complaint for
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`noninfringement into one for invalidity. As to the remaining Petitioners, Patent
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`Owner fails to explain why Amkor does not control. Even if Amkor did not
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`control, Patent Owner’s voluntary withdrawal of its ITC complaint renders service
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`of that complaint a nullity that does not and cannot trigger a statutory bar.
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`I.
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`Hulu’s Complaint in Intervention solely sought a declaration of non-
`infringement.
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`Patent Owner’s argument turns on one premise: that Petitioner Hulu pled a
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`cause of action for invalidity in its intervention complaint. Prelim. Resp. at 4.
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`That premise is demonstrably false. Hulu’s Complaint in Intervention only alleges
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`a cause of action for noninfringement. See, e.g., Ex. 2003 at 2 (“Hulu seeks a
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`declaratory judgment of non-infringement”), 3–4 (describing Hulu’s three causes
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`of action). Indeed, the words “invalid” and “invalidity” do not appear anywhere in
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`Hulu’s Complaint in Intervention. See generally Ex. 2003. As the Board has
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`explained, “[a] civil action for a declaratory judgment of non-infringement is not a
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`civil action challenging the validity of a patent.” Ariosa Diagnostics v. Isis
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`Innovation Ltd., IPR2012-00022, Paper 166 at 14 (P.T.A.B. Sept. 2, 2014)
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`920374
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`1
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`(emphasis added). That is because the statutory bar applies only to a petitioner that
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`“filed a civil action challenging the validity of a claim of the patent” before filing
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`its petition for inter partes review. 35 U.S.C. § 315(a)(1) (emphasis added).
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`Patent Owner attempts to avoid the unambiguous language of Hulu’s
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`Complaint in Intervention by selectively quoting Hulu’s Motion to Intervene.
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`Patent Owner cites no decision holding that language in a motion to intervene can
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`transform the allegations in a complaint, and with good reason. Hulu bore the
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`burden of demonstrating the propriety of its intervention in the district court case
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`against its partners LG, Toshiba, and VIZIO; it logically followed that Hulu would
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`describe all of the interests it shared with those partners, including those partners’
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`affirmative defenses and counterclaims of invalidity. See, e.g., Ex. 2001 at 10–11
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`(describing commonalities between Hulu and its partners). But Hulu’s arguments
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`in favor of intervention cannot alter the plain language of Hulu’s Complaint in
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`Intervention, which explicitly and solely requested declaratory judgment of non-
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`infringement. See Ex. 2003 at 2–5.1 Hulu’s complaint therefore complies with
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`Section 315(a)(1).
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`1Similarly, the use of the word “valid” in Hulu’s request for declaratory judgment
`of non-infringement is not a request for a declaration of invalidity and cannot
`possibly transform the plain language of Hulu’s Complaint in Intervention.
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`920374
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`2
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`II.
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`The Petition is timely both under Amkor and because Patent Owner
`voluntarily withdrew its ITC complaint.
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`Petitioners filed the petitions at issue before November 6, 2014, one year
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`after Patent Owner first served complaints against LG, Toshiba, and VIZIO in its
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`civil action in the Eastern District of Virginia. Patent Owner’s contention that the
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`statutory bar period began one year after ITC complaints were served on LG,
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`Toshiba, and VIZIO fails for two independent reasons.
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`First, the ITC investigation involving LG, Toshiba, and VIZIO did not start
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`the Section 315(b) clock. The one-year limitations period relates to “Patent
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`Owner’s Action” and starts to run on “the date on which the petitioner . . . is served
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`with a complaint alleging infringement[.]” 35 U.S.C. § 315(b). Well before
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`Petitioners filed the petitions at issue, the Board twice concluded that Section
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`315(b) applies only to service of a complaint in a civil action and not to
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`administrative proceedings such as an ITC investigation. See Alcon Research, Ltd.
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`v. Dr. Joseph Neev, IPR2014-00217, Paper 21 at 9 (P.T.A.B. May 9, 2014); Amkor
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`Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 98 at 10–12 (P.T.A.B. Jan. 31,
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`2014) (same).
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`In Amkor, the Board rejected the arguments now made by Patent Owner and
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`held that the plain language of Section 315(b) covers only civil actions brought in
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`federal district court. See Amkor, IPR2013-00242, Paper 98 at 7–8 (observing that
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`“Patent Owner’s Action” and “served with a complaint” connote a civil suit), 10
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`920374
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`3
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`(noting that the statute elsewhere uses the word “proceeding” when referencing
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`non-judicial remedies). “[H]ad Congress intended for arbitration, ITC, or other
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`non-judicial proceedings to trigger the time bar of section 315(b), it would have
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`used more encompassing language than ‘Patent Owner’s Action’ and ‘served with
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`a complaint,’ which are harmonious with a civil action.” Id. at 11 (emphasis
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`added).2 ITC investigations are governed by separate rules and statutes that do not
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`apply in civil actions, are instituted by the ITC (not by patent owners), and result in
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`decisions that are not binding in federal court or the Patent and Trademark Office.
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`Patent Owner’s argument that Section 315(b) applies to ITC investigations—which
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`Amkor explicitly addressed and included in its reasoning—fails.
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`Second, even if Patent Owner were correct that the Board should ignore
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`Amkor (which it is not), Patent Owner’s time-bar argument would still fail. The
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`Section 315(b) bar does not attach where a complaint in a civil action is dismissed
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`without prejudice. See Ariosa Diagnostics, IPR2012-00022, Paper 166 at 17.
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`Similarly, the Section 315(b) bar should not attach where an ITC investigation is
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`terminated due to the complainant’s voluntary withdrawal of the complaint
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`because such a termination necessarily is without prejudice. The Commission has
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`explained that it is not permitted “to terminate an investigation ‘with prejudice’
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`2The Board also explicitly considered and rejected Patent Owner’s legislative-
`history argument. Id. at 12–15 (determining that the legislative history “fully
`supports” reading Section 315(b) as limited to civil actions).
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`920374
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`4
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`based upon withdrawal of a complaint.” Certain Bar Clamps, Bar Clamp Pads, &
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`Related Packaging, Display, & Other Materials, Inv. No. 337-TA-429, Comm’n
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`Op., 2001 WL 36114993, at *3 (U.S.I.T.C. Feb. 13, 2001). Such a termination acts
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`as a civil dismissal without prejudice: it leaves the parties as if the ITC proceeding
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`had never been brought, does not determine the merits, and permits Patent Owner
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`to refile on the same patents. Cf. Graves v. Principi, 294 F.3d 1350, 1356 (Fed.
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`Cir. 2002); Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper 18 at 15–
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`16 (P.T.A.B. Jan. 24, 2013).
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`Just such a termination occurred when Patent Owner moved to withdraw its
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`complaint just days before the trial was to begin. The Administrative Law Judge
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`declined to place any conditions on termination of the investigation. Ex. 1037 at 2.
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`Because Patent Owner could therefore refile its ITC complaint, termination of the
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`ITC proceedings did not trigger the Section 315(b) time bar.3
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`III. CONCLUSION
`For the reasons explained above, the Petition is not statutorily barred.
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`3Patent Owner relies on two Board decisions that do not apply here. See Prelim.
`Resp. at 14–15. In both, an earlier district-court action was consolidated with a
`later-filed district-court action, followed by dismissal of the complaint in the
`earlier-filed action. See Histologics, LLC v. CDX Diagnostics, Inc., IPR2014-
`00779, Paper 6 at 3–4 (P.T.A.B. Sept. 12, 2014); Apple Inc. v. Rensselaer
`Polytechnic Inst., IPR2014-00320, Paper 12 at 3, 6 (P.T.A.B. June 12, 2014).
`Patent Owner’s ITC proceeding was, by contrast, terminated by the ALJ more than
`two months prior to the district court’s decision to lift the civil-action stays. See
`Ex. 1037.
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`920374
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`5
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`Respectfully submitted,
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`/ Leo L. Lam /
`Leo L. Lam
`Registration No. 38,528
`Counsel for Petitioner Hulu, LLC
`
`Keker & Van Nest LLP
`633 Battery St.
`San Francisco, CA 94111
`Telephone: 415-391-5400
`llam@kvn.com
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`
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`
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`DATED: March 11, 2015
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`920374
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`6
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Reply to
`Patent Owner’s Preliminary Response to Petition for Inter Partes Review
`together with all exhibits and other papers filed therewith were served on March
`11, 2015 by placing a copy into FEDERAL EXPRESS directed to the attorneys of
`record for the Patent Owner at the following address:
`
`
`Counsel for Straight Path IP Group, Inc.
`William A. Meunier (Reg. No. 41,193)
`Matthew D. Durell (Reg. No. 55,136)
`Mintz, Levin, Cohn, Ferris, Glovsky
` and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`
`Counsel for LGE
`Darren M. Jiron (Registration No. 45,777)
`Rajeev Gupta (Registration No. 55,873)
`FINNEGAN, LLP
`901 New York Ave., NW
`Washington, D.C. 20001
`
`Counsel for VIZIO
`Kevin O’Brien (Registration No. 30,578)
`Richard V. Wells (Registration No. 53,757)
`Baker & McKenzie LLP
`815 Connecticut Avenue, N.W.
`Washington, D.C. 20006
`
`Counsel for Toshiba
`Clint Conner (Registration No. 52,764)
`Paul Meiklejohn (Registration No. 26,569)
`Jennifer Spaith (Registration No. 51,916)
`Dorsey & Whitney
`50 South Sixth Street, Suite 1500
`Minneapolis, Minnesota 55402
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`920374
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`7
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`Dated: March 11, 2015
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`
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`
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`/ Leo L. Lam /
`Leo L. Lam
`Registration No. 38,528
`Counsel for Petitioner Hulu, LLC
`
`Keker & Van Nest LLP
`633 Battery St.
`San Francisco, CA 94111
`Telephone: 415-391-5400
`llam@kvn.com
`
`920374
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`8
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