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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`LG ELECTRONICS, INC. et al.
`Petitioner,
`
`v.
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`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE COMMUNCATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`
`________________
`
`Case IPR2015-00209
`Patent 6,108,704
`
`________________
`
`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. 6,108,704 UNDER 35
`U.S.C. §§ 311-319
`
`
`
`Case IPR2015-00209
`Patent No. 6,108,704
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`I.
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`Petitioners Do Not Address Or Dispute The Language In Hulu’s
`Complaint Challenging The Validity Of The ’704 Patent And Creating
`A Section 315(a) Bar
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`In both Straight Path’s Preliminary Response and the March 4, 2015
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`telephonic hearing, Straight Path explicitly identified the language from Hulu’s
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`Complaint by which Hulu challenged the validity of the ’704 patent: Hulu’s
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`Complaint asserts that “Hulu does not infringe…a valid claim, if any, of the ’704
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`Patent” (Ex. 2003 at 4, ¶24).1 Hulu has thus explicitly challenged “if any” claims
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`of the ’704 patent are “valid,” and the district court cannot resolve Hulu’s
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`allegation without first determining whether any ’704 patent claims are invalid.
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`(Id.). Hulu challenging the validity of ’704 patent claims in the context of its non-
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`infringement assertion is consistent with the case law, which establishes that one
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`avenue to a judgment of non-infringement is to prove that the claim is invalid. See
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`Cimline, Inc. v. Crafco, Inc., 413 Fed. Appx. 240, 247 (Fed. Cir. 2011) (entering
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`judgment of non-infringement “because we hold that the ’375 patent is invalid”);
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`Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 412 F.3d 1284, 1291 (Fed. Cir. 2005)
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`(“It is axiomatic that one cannot infringe an invalid patent”).
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`Tellingly, Petitioners’ Reply completely ignores this key language and fails
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`to offer any reason why it is not a challenge to the validity of the ’704 patent.
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`1 All emphases in this Response are added.
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`1
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`Case IPR2015-00209
`Patent No. 6,108,704
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`Instead, Petitioners avoid the issue and argue merely that Hulu called its action one
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`for a declaratory judgment of non-infringement. (Reply at 1). But what Hulu called
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`its action is irrelevant, what matters is that Hulu’s Complaint challenged the
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`validity of the ’704 patent.
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`And this explicit challenge – which Petitioners wholly fail to address or
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`refute – is consistent with Hulu’s representation and admission to the district court
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`that Hulu’s Complaint would seek “adjudication as to whether … Straight Path’s
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`patents are invalid.” (Ex. 2002 at 1). This challenge to the validity of the ’704
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`patent creates a Section 315(a) bar to the institution of this Petition, and, as
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`Petitioners do not dispute, this bar applies to all Petitioners, not just Hulu. See 505
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`Games, Inc v. Babbage Holdings, Inc., IPR2014-00954, Paper 17 at 2 (PTAB Aug.
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`22, 2014).
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`II.
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`There Is No ITC Exception To Section 315(b) Bars
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`Unlike Section 315(a), the plain language of Section 315(b) is not limited to
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`civil actions and carves out no exception for ITC complaints: “[a]n inter partes
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`review may not be instituted if the petition requesting the proceeding is filed more
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`than 1 year after the date on which the petitioner . . . is served with a complaint
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`alleging infringement of the patent.” 35 U.S.C. § 315(b).
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`Petitioners rely heavily on Amkor Tech., Inc. v. Tessera, Inc., CBM2013-
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`00242, Paper 98 (PTAB Jan. 31, 2014), to support their argument that the Board
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`2
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`Case IPR2015-00209
`Patent No. 6,108,704
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`should nonetheless create an ITC complaint exception to 315(b) bars. But, as
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`raised during the March 4, 2015 telephonic hearing, the only issue faced in Amkor
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`was “whether an allegation of infringement in an arbitration proceeding triggers
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`the one-year time period under section 315(b).” Amkor at 2. Amkor did not face the
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`question of whether the service of an ITC complaint was outside the scope of
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`315(b). Petitioners’ Reply simply ignores that the Amkor decision is thus not
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`controlling on the issue now facing this Board.
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`And to the extent that Amkor dicta suggests that service of an ITC complaint
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`cannot be a 315(b) triggering event, that dicta is wrong as directly contrary to the
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`plain language of the statute and legislative history (Paper No. 15 at 11-14),
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`directly contrary to Federal Circuit precedent, and unsupported by the basis for
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`Amkor’s conclusion that arbitration allegations are outside the scope of 315(b).
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`Amkor reasoned that where a Section 315(b) triggering event was “service of
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`a complaint alleging infringement of the patent,” the arbitration had no such
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`complaint2 and no such service. Amkor also based its decision on the fact that
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`mediation was not litigation or an action, but was instead “an alternative dispute
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`resolution.” Amkor at 6, 13-15.
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`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).”)
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`3
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`Case IPR2015-00209
`Patent No. 6,108,704
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`But none of these reasons applies to the ITC complaints served on
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`Petitioners. Those were indisputably “complaint[s] alleging infringement of the
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`patent,” they were indisputably served on LG, Toshiba, and Vizio, and the
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`resulting ITC actions were indisputably “litigation.” See 19 CFR § 210.12
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`(defining a “complaint” in ITC litigation); 19 CFR § 210.11 (defining “service of
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`complaint” in ITC litigation); 19 CFR § 210.27 (describing ITC actions as
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`“litigation”). Indeed, the Federal Circuit already has rejected the notion that
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`Section 337 ITC “actions” initiated by a “complaint” are not “litigation”:
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`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.
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`Texas Instruments, Inc. v. Tessera, Inc., 231 F.3d 1325, 1330 (Fed. Cir. 2000).
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`And excluding ITC complaints and litigation from the scope of Section
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`315(b) would defeat Congress’s intent that the bar help ensure that inter partes
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`reviews “provid[e] quick and cost effective alternatives to litigation.” H.R.Rep.
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`No. 112-98, at 48 (2011). The ITC has become a key destination for both domestic
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`and foreign patent litigants, and many of the highest profile patent disputes now
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`4
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`Case IPR2015-00209
`Patent No. 6,108,704
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`include litigation before the ITC. See GE v. ITC, 670 F.3d 1206, 1220 (Fed. Cir.
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`2012) (noting that the ITC is one of the key forums for protecting U.S. intellectual
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`property.) Moreover, the ITC is the only viable forum for patent infringement
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`actions against infringing foreign importers that are not subject to personal
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`jurisdiction in district courts. Excluding ITC complaints from Section 315(b)
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`would allow these foreign parties to circumvent Section 315(b) altogether.
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`Petitioners’ alternative argument – that the Section 315(b) time bar does not
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`apply because Straight Path withdrew its ITC complaint – is likewise baseless. As
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`established in Straight Path’s Preliminary Response – but ignored in Petitioners’
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`Reply – a complaint that is served and then dismissed without prejudice remains a
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`315(b) triggering event if the parties continue to litigate their patent dispute in co-
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`pending litigation. See, e.g., Histologics, LLC v. CDX Diagnostics, Inc., IPR2014-
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`00779, Paper 6 at 4-5 (PTAB Sept. 12, 2014); Apple Inc. v. Rensselaer Polytechnic
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`Institute, IPR2014-00320, Paper 12 at 5-7 (PTAB June 12, 2014). Petitioners do
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`not dispute this law, nor do they dispute that the parties continue to litigate the
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`claims raised in the ITC action in the co-pending district court cases. (See Paper
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`No. 15 at 10-11, 14-15).3 Petitioners’ “exception” is therefore inapplicable.
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`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. 15 at 10, 13).
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`5
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`
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`Dated: March 18, 2015
`
`Case IPR2015-00209
`Patent No. 6,108,704
`
`/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
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`Case IPR2015-00209
`Patent No. 6,108,704
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`CERTIFICATE OF SERVICE
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`I certify that a copy of Patent Owner’s Sur-Reply To Petitioner’s Reply To
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`Patent Owner’s Preliminary Response To Petition For Inter Partes Review Of U.S.
`
`Patent No. 6,108,704 Under 35 U.S.C. §§ 311-319 is being served by electronic
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`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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