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 SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,009,469 UNDER 35
`U.S.C. §§ 311-319
`
`
`
`________________
`
`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 SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,009,469 UNDER 35
`U.S.C. §§ 311-319
`
`
`
`Case IPR2015-00198
`Patent No. 6,009,469
`
`I.
`
`Petitioners Do Not Address Or Dispute The Language In Hulu’s
`Complaint Challenging The Validity Of The ’469 Patent And Creating
`A Section 315(a) Bar
`
`In both Straight Path’s Preliminary Response and the March 4, 2015
`
`telephonic hearing, Straight Path explicitly identified the language from Hulu’s
`
`Complaint by which Hulu challenged the validity of the ’469 patent: Hulu’s
`
`Complaint asserts that “Hulu does not infringe…a valid claim, if any, of the ’469
`
`Patent” (Ex. 2003 at 3, ¶14).1 Hulu has thus explicitly challenged “if any” claims
`
`of the ’469 patent are “valid,” and the district court cannot resolve Hulu’s
`
`allegation without first determining whether any ’469 patent claims are invalid.
`
`(Id.). Hulu challenging the validity of ’469 patent claims in the context of its non-
`
`infringement assertion is consistent with the case law, which establishes that one
`
`avenue to a judgment of non-infringement is to prove that the claim is invalid. See
`
`Cimline, Inc. v. Crafco, Inc., 413 Fed. Appx. 240, 247 (Fed. Cir. 2011) (entering
`
`judgment of non-infringement “because we hold that the ’375 patent is invalid”);
`
`Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 412 F.3d 1284, 1291 (Fed. Cir. 2005)
`
`(“It is axiomatic that one cannot infringe an invalid patent”).
`
`Tellingly, Petitioners’ Reply completely ignores this key language and fails
`
`to offer any reason why it is not a challenge to the validity of the ’469 patent.
`
`
`1 All emphases in this Response are added.
`
`1
`
`
`
`Case IPR2015-00198
`Patent No. 6,009,469
`
`Instead, Petitioners avoid the issue and argue merely that Hulu called its action one
`
`for a declaratory judgment of non-infringement. (Reply at 1). But what Hulu called
`
`its action is irrelevant, what matters is that Hulu’s Complaint challenged the
`
`validity of the ’469 patent.
`
`And this explicit challenge – which Petitioners wholly fail to address or
`
`refute – is consistent with Hulu’s representation and admission to the district court
`
`that Hulu’s Complaint would seek “adjudication as to whether … Straight Path’s
`
`patents are invalid.” (Ex. 2002 at 1). This challenge to the validity of the ’469
`
`patent creates a Section 315(a) bar to the institution of this Petition, and, as
`
`Petitioners do not dispute, this bar applies to all Petitioners, not just Hulu. See 505
`
`Games, Inc v. Babbage Holdings, Inc., IPR2014-00954, Paper 17 at 2 (PTAB Aug.
`
`22, 2014).
`
`II.
`
`There Is No ITC Exception To Section 315(b) Bars
`
`Unlike Section 315(a), the plain language of Section 315(b) is not limited to
`
`civil actions and carves out no exception for ITC complaints: “[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 . . . is served with a complaint
`
`alleging infringement of the patent.” 35 U.S.C. § 315(b).
`
`Petitioners rely heavily on Amkor Tech., Inc. v. Tessera, Inc., CBM2013-
`
`00242, Paper 98 (PTAB Jan. 31, 2014), to support their argument that the Board
`
`2
`
`
`
`Case IPR2015-00198
`Patent No. 6,009,469
`
`should nonetheless create an ITC complaint exception to 315(b) bars. But, as
`
`raised during the March 4, 2015 telephonic hearing, the only issue faced in Amkor
`
`was “whether an allegation of infringement in an arbitration proceeding triggers
`
`the one-year time period under section 315(b).” Amkor at 2. Amkor did not face the
`
`question of whether the service of an ITC complaint was outside the scope of
`
`315(b). Petitioners’ Reply simply ignores that the Amkor decision is thus not
`
`controlling on the issue now facing this Board.
`
`And to the extent that Amkor dicta suggests that service of an ITC complaint
`
`cannot be a 315(b) triggering event, that dicta is wrong as directly contrary to the
`
`plain language of the statute and legislative history (Paper No. 19 at 12-15),
`
`directly contrary to Federal Circuit precedent, and unsupported by the basis for
`
`Amkor’s conclusion that arbitration allegations are outside the scope of 315(b).
`
`Amkor reasoned that where a Section 315(b) triggering event was “service of
`
`a complaint alleging infringement of the patent,” the arbitration had no such
`
`complaint2 and no such service. Amkor also based its decision on the fact that
`
`mediation was not litigation or an action, but was instead “an alternative dispute
`
`resolution.” Amkor at 6, 13-15.
`
`
`2 Amkor at 8, 17 (“the arbitral tribunal expressly stated that ‘[t]his is not an
`infringement action. This is a counterclaim for breach of a licensing agreement”
`and Tessera admitted that “its counterclaim did not ‘plead a cause of action of
`patent infringement’” but “suggested that any verbal or written notice might suffice
`to meet the ‘complaint’ language of section 315(b).”)
`
`3
`
`
`
`Case IPR2015-00198
`Patent No. 6,009,469
`
`But none of these reasons applies to the ITC complaints served on
`
`Petitioners. Those were indisputably “complaint[s] alleging infringement of the
`
`patent,” they were indisputably served on LG, Toshiba, and Vizio, and the
`
`resulting ITC actions were indisputably “litigation.” See 19 CFR § 210.12
`
`(defining a “complaint” in ITC litigation); 19 CFR § 210.11 (defining “service of
`
`complaint” in ITC litigation); 19 CFR § 210.27 (describing ITC actions as
`
`“litigation”). Indeed, the Federal Circuit already has rejected the notion that
`
`Section 337 ITC “actions” initiated by a “complaint” are not “litigation”:
`
`In the field of patent law… “litigation” does not exclude ITC
`proceedings under section 337. Section 337 proceedings are inter
`partes actions initiated by the filing of a complaint and including
`discovery, filing of briefs and motions, and testimony and arguments
`at a hearing before an administrative law judge. See 19 U.S.C. §
`1337(c). In section 337 proceedings relevant to patent infringement,
`the ITC follows Title 35 of the United States Code and the case law of
`this court. See 19 U.S.C. § 1337(c). In sum, this court has
`consistently treated section 337 patent infringement proceedings
`as litigation.
`
`Texas Instruments, Inc. v. Tessera, Inc., 231 F.3d 1325, 1330 (Fed. Cir. 2000).
`
`And excluding ITC complaints and litigation from the scope of Section
`
`315(b) would defeat Congress’s intent that the bar help ensure that inter partes
`
`reviews “provid[e] quick and cost effective alternatives to litigation.” H.R.Rep.
`
`No. 112-98, at 48 (2011). The ITC has become a key destination for both domestic
`
`and foreign patent litigants, and many of the highest profile patent disputes now
`
`4
`
`
`
`Case IPR2015-00198
`Patent No. 6,009,469
`
`include litigation before the ITC. See GE v. ITC, 670 F.3d 1206, 1220 (Fed. Cir.
`
`2012) (noting that the ITC is one of the key forums for protecting U.S. intellectual
`
`property.) Moreover, the ITC is the only viable forum for patent infringement
`
`actions against infringing foreign importers that are not subject to personal
`
`jurisdiction in district courts. Excluding ITC complaints from Section 315(b)
`
`would allow these foreign parties to circumvent Section 315(b) altogether.
`
`Petitioners’ alternative argument – that the Section 315(b) time bar does not
`
`apply because Straight Path withdrew its ITC complaint – is likewise baseless. As
`
`established in Straight Path’s Preliminary Response – but ignored in Petitioners’
`
`Reply – a complaint that is served and then dismissed without prejudice remains a
`
`315(b) triggering event if the parties continue to litigate their patent dispute in co-
`
`pending litigation. See, e.g., Histologics, LLC v. CDX Diagnostics, Inc., IPR2014-
`
`00779, Paper 6 at 4-5 (PTAB Sept. 12, 2014); Apple Inc. v. Rensselaer Polytechnic
`
`Institute, IPR2014-00320, Paper 12 at 5-7 (PTAB June 12, 2014). Petitioners do
`
`not dispute this law, nor do they dispute that the parties continue to litigate the
`
`claims raised in the ITC action in the co-pending district court cases. (See Paper
`
`No. 19 at 10-11, 15-16).3 Petitioners’ “exception” is therefore inapplicable.
`
`
`3 In addition, Section 315(b) includes no such exception for complaints dismissed
`without prejudice, and in any event the ITC complaints were not dismissed without
`prejudice. (See Paper No. 19 at 10, 14).
`
`5
`
`
`
`Dated: March 18, 2015
`
`Case IPR2015-00198
`Patent No. 6,009,469
`
`/William Meunier/
`
`William A. Meunier (Reg. No. 41,193)
`Matthew Durell (Reg. No. 55,136)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`6
`
`
`
`Case IPR2015-00198
`Patent No. 6,009,469
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Sur-Reply To Petitioner’s Reply To
`
`Patent Owner’s Preliminary Response To Petition For Inter Partes Review Of U.S.
`
`Patent No. 6,009,469 Under 35 U.S.C. §§ 311-319 is being served by electronic
`
`mail on the following counsel for the Petitioner:
`
`For LG Electronics, Inc.
`FINNEGAN, LLP
`Darren M. Jiron
`darren.jiron@finnegan.com
`Rajeev Gupta
`raj.gupta@finnegan.com
`
`For Toshiba Corp.
`Dorsey & Whitney LLP
`Clint Conner
`conner.clint@dorsey.com
`Paul Meiklejohn
`meiklejohn.paul@dorsey.com
`Jennifer Spaith
`spaith.jennifer@dorsey.com
`
`For VIZIO, Inc.
`Baker & McKenzie LLP
`Kevin O’Brien
`brien@bakermckenzie.com
`Richard V. Wells
`richard.wells@bakermckenzie.com
`
`For Hulu, LLC
`Keker & Van Nest LLP
`Leo Lam
`llam@kvn.com
`Matthias Kamber
`mkamber@kvn.com
`
`Dated: March 18, 2014
`
`/Matthew D. Durell/
`Matthew D. Durell (Reg. No. 55,136)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1615
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`7
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