`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`LG ELECTRONICS, INC., TOSHIBA
`CORPORATION, AND VIZIO, INC.
`Petitioners,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`________________
`
`Case IPR2015-01017
`Patent 6,108,704
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit
`
`2001
`
`PATENT OWNER’S EXHIBIT LIST
`CASE IPR2015-01017
`
`
`Description
`
`Straight Path Complaints filed against LG, Toshiba, and Vizio in the
`Eastern District of Virginia
`
`2002
`
`November 7, 2013 Affidavits of Service regarding Complaints
`
`
`
`2
`
`
`
`
`
`The Board must deny the Petition because it is statutorily time-barred. 35
`
`U.S.C. § 315(b) makes clear 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
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`which the petitioner… is served with a complaint alleging infringement of the
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`patent.” Because Petitioner here was served with a complaint alleging infringement
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`of U.S. Patent No. 6,108,704 (“’704 patent”) more than one year before filing the
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`present Petition, the Petition is statutorily time-barred.
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`Petitioner admits that the Petition is statutorily time-barred. Petitioner filed
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`the Petition on April 6, 2015, and concurrently filed a motion to join another
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`pending inter partes review. Petitioner’s motion to join sought joinder with
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`Samsung Elec. Co. v. Straight Path IP Group, Inc., IPR2014-01366. See Paper No.
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`3. On June 3, 2015, Petitioner withdrew its motion for joinder. In its motion to
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`withdraw the joinder motion, Petitioner acknowledged that without joinder, the
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`present Petition would be statutorily time-barred and result in a decision not to
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`institute an inter partes review pursuant to the present Petition. See Paper No. 8 at
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`2 (“Petitioners acknowledge that withdrawal of the Joinder Motion will result in a
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`decision not to institute the Petition as time barred.”).
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`Petitioner is correct that the Petition is statutorily time-barred. On August 1,
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`2013, Straight Path filed Complaints against LG, Toshiba, and Vizio in the Eastern
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`District of Virginia (“EDVA”). Each complaint alleged infringement of Straight
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`
`
`3
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`
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`
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`Path’s patents, including the ’704 patent. See Ex. 2001. Petitioner was served with
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`the EDVA Complaints on November 7, 2013. See Ex. 2002. Petitioner filed the
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`present Petition on April 6, 2015, one year and five months after being served with
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`the EDVA Complaints. As such, the Petition is statutorily time-barred because it
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`was filed more than one year after Petitioner was served with a complaint alleging
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`infringement of the ’704 patent. See 35 U.S.C. § 315(b). Therefore, the Board must
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`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
`
`
`
`4
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`deny the Petition.
`
`
`
`Dated: July 13, 2015
`
`
`
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`
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`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Preliminary Response is being served
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`by electronic mail on the following counsel for the Petitioners:
`
`
`For LG Electronics, Inc.
`
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`Rajeev Gupta
`raj.gupta@finnegan.com
`Darren M. Jiron
`darren.jiron@finnegan.com
`LGE_Finnegan_StraightPathIPR@finnegan.com
`
`For VIZIO, Inc.
`
`Baker & McKenzie LLP
`Kevin O’Brien
`Kevin.O’Brien@bakermckenzie.com
`Richard V. Wells
`richard.wells@bakermckenzie.com
`vizio-spipg@bakermckenzie.com
`
`For Toshiba Corp.
`
`Dorsey & Whitney LLP
`Paul Meiklejohn
`meiklejohn.paul@dorsey.com
`Clint Conner
`conner.clint@dorsey.com
`Jennifer Spaith
`spaith.jennifer@dorsey.com
`
`5
`
`
`
`
`
`
`
`
`
`Dated: July 13, 2015
`
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`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
`
`
`
`42336584v.1
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`
`
`6
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