UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner.
`_____________________
`
`IPR2016-00275
`U.S. Patent No. 6,199,077 B1
`_____________________
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION TO CORRECT
`ELECTRONIC FILING DATE
`
`
`
`Mail Stop Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner.
`_____________________
`
`IPR2016-00275
`U.S. Patent No. 6,199,077 B1
`_____________________
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION TO CORRECT
`ELECTRONIC FILING DATE
`
`
`
`Mail Stop Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PETITIONER COMPLIED WITH THE ONE-YEAR TIME
`LIMITATION OF 35 U.S.C. § 315(B). .......................................................... 1
`
`(a)
`
`(b)
`
`Petitioner “filed” the ’077 Petition under § 315(b) on December
`2nd. ........................................................................................................ 1
`
`Section 312(a) specifies when a petition may be “considered”
`after filing, not when it is “filed” under § 315(b). ................................ 2
`
`III. THE BOARD SHOULD UTILIZE ITS AUTHORITY TO WAIVE
`THE “SUBMIT” AND SERVICE REQUIREMENTS. ................................. 4
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`2Wire, Inc. v. TQ Delta LLC,
`IPR2015-00239, Paper 10 (Jan. 15, 2015) ............................................................ 1
`
`ABB Inc. v Roy-G-Biv,
`IPR2013-00063, Paper 21 (Jan. 16, 2013) ............................................................ 3
`
`Conmed Corp. v. Bonutti Skeletal Innov., LLC,
`IPR2013-00624, Paper 18 (Feb. 21, 2014) ........................................................... 1
`
`Nestle USA, Inc. v. Steuben Foods Inc.,
`IPR2015-00195, Paper 51 (June 29, 2015) ........................................................... 3
`
`Nestle USA, Inc. v. Steuben Foods Inc.,
`IPR2015-00195, Paper 9 (Jan. 21, 2015) .............................................................. 3
`
`Schott Gemtron Corp. v. SSW Holding Co.,
`IPR2014-00367, Paper 30 (Sept. 22, 2014) .......................................................... 3
`
`Terremark N. Am. LLC v. Jao Control & Monitoring Sys.,
`LLC, IPR2015-01482, Paper 10 (Dec. 28, 2015) ................................................. 4
`
`Statutes
`
`35 U.S.C. § 312(a) ......................................................................................... 2, 3, 4, 5
`
`35 U.S.C. § 312(a)(3)(B) ........................................................................................... 3
`
`35 U.S.C. § 315(b) ..................................................................................... 1, 2, 3, 4, 5
`
`
`
`
`
`ii
`
`
`
`
`
`
`
`PETITIONER’S EXHIBIT LIST
`Description
`
`1010
`
`Exhibit
`Number
`1001 U.S. Patent No. 6,199,077 (’077 Patent)
`Summons Returned as Executed , Yodlee, Inc. v. Plaid
`1002
`Technologies, Inc., Case No. 1:14-cv-01445-LPS-CJB (D. Del.
`filed December 1, 2014)
`1003 U.S. Patent No. 6,317,783 to Freishtat (the “’783 Patent” or
`“Freishtat”
`1004 Declaration of Dr. Todd Mowry
`1005
`Redline Comparison of U.S. Patent Appl. No. 09/323,598 and
`Application No. 09/208,740
`File History of U.S. Patent No. 6,199,077
`1006
`1007 U.S. Patent No. 6,278,449 (“Sugiarto”)
`1008 U.S. Patent No. 5,892,905 (“Brandt”)
`1009
`Zhao, “Technical Note, WebEntree: A Web Service Aggregator,”
`(1998) (“Zhao”)
`Claim Construction Briefing, Yodlee, Inc. v. Plaid Technologies,
`Inc., Case No. 1:14-cv-01445-LPS-CJB (D. Del. filed December
`1, 2014)
`Claim Construction Order, Yodlee, Inc. v. CashEdge, Inc., No. C
`05-01550 SI, slip op. (N.D. Cal., July 7, 2006)
`Provisional Appl. No. 60/105,917 (“the ’917 Application”)
`Redline Comparison of Provisional Appl. No. 60/105,917 and
`Freishtat.
`Screenshot of ACM Digital Library Page
`1014
`1015 U.S. Patent No. 6,029,175 (“Chow”)
`1016 U.S. Patent No. 6,401,118 (“Thomas”)
`1017 U.S. Patent No. 6,006,333 (“Nielsen”)
`1018
`Screenshots of ESPN Pages
`1019 U.S. Patent No. 6,041,362 (“Mears”)
`1020 U.S. Patent 6,243,816 (“Fang”)
`1021 Declaration of Omar Amin
`1022 Declaration of Jill McCormack
`1023
`’077 Petition Filing Receipt
`1024
`Screenshot of Federal Express Tracking Data
`1025
`’077 Petition Payment Receipt
`1026 United States Postal Service, Service Commitments
`
`1011
`
`1012
`1013
`
`iii
`
`
`
`GLOSSARY OF ABBREVIATIONS
`
`Shorthand
`Petition
`PO
`Mot.
`Opp.
`
`Filing Receipt
`PRPS
`
`Description
`Petition for Inter Partes Review, Paper 1.
`Patent Owner
`Motion to Correct Filing Date, Paper 9 (Feb. 8, 2016).
`Opposition to Motion to Correct Filing Date, Paper
`10 (Feb. 16, 2016).
`Petition Filing Receipt, Ex. 1023
`Patent Review Processing System.
`
`
`
`
`
`
`
`iv
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Consistent with the Board’s prior decisions, the Board should find that the
`
`Petition was “filed”—the only requirement of § 315(b)—when it was uploaded to
`
`PRPS on December 2nd. PO, by contrast, misreads the statute, mistaking when a
`
`petition may be “considered” after filing has occurred for when it is simply
`
`“filed.” PO also would impose an overly harsh penalty given Petitioner’s technical
`
`challenges in “submitting” the filing when it cannot show that it suffered any
`
`prejudice.
`
`II.
`
`
`
`PETITIONER COMPLIED WITH THE ONE-YEAR TIME
`LIMITATION OF 35 U.S.C. § 315(b).
`(a) Petitioner “filed” the ’077 Petition under § 315(b) on December 2nd.
`The only criteria that matters for § 315(b) is filing the petition: “An inter
`
`partes review may not be instituted if the petition . . . is filed more than 1 year
`
`after the date on which the petitioner . . . is served with a complaint . . .” (emphases
`
`added). The Board has consistently found that it has the authority to institute an
`
`IPR if the petition was uploaded to PRPS during that one-year time limitation.
`
`Conmed Corp. v. Bonutti Skeletal Innov., LLC, IPR2013-00624, Paper 18 at 8
`
`(Feb. 21, 2014); 2Wire, Inc. v. TQ Delta LLC, IPR2015-00239, Paper 10 at 4, 8
`
`(Jan. 15, 2015). That is all that § 315(b) requires, which was clearly met here.
`
`
`
`PO attempts to rewrite § 315(b). It argues that the statute also requires “all
`
`supporting evidence and exhibits” to be submitted and service to be effected within
`
`1
`
`
`
`
`
`the one-year time period. Opp. at 2–3. But § 315(b) explicitly omits any reference
`
`to “all supporting evidence and exhibits” or service of the petition—it just says
`
`“filed.” Indeed, Congress knew the difference between “filed” and “served”—
`
`being “served” with a complaint starts the one-year clock, while only “filing” must
`
`occur within that one year window. Mot. at 9–10. Here, the Petition was
`
`indisputably filed within one year of the district court complaint being served.
`
`(b)
`
`Section 312(a) specifies when a petition may be “considered” after
`filing, not when it is “filed” under § 315(b).
`When a petition “may be considered” after filing under § 312(a) is a
`
`different question from whether the filing occurred in time for § 315(b). Section
`
`312(a) provides: “A petition filed under section 311 may be considered only if”
`
`certain other requirements are met. Section 312(a) presupposes that the petition
`
`has been “filed,” which is the term used in both §§ 311 and 315(b), and adds
`
`requirements before the Office will consider it on the merits. So, § 312(a) cannot
`
`specify what it takes for the petition to be “filed” in the first place.
`
`PO argues that a petition can only be “accorded a filing date” once the
`
`requirements of § 312(a) are met. Opp. at 2, 4. “According a filing date” refers to
`
`the Office’s administrative process for reviewing submitted papers for
`
`completeness, which always happens weeks after a petition is submitted. That
`
`process is separate from, and subsequent to, the sole requirement of § 315(b)—
`
`petition filing within one year of service of a complaint.
`
`
`
`2
`
`
`
`
`
`Moreover, PO’s broader argument that all the requirements of § 312(a) must
`
`be met before the Office can consider a petition “filed” under § 315(b) would mean
`
`that the Board has been acting ultra vires in allowing correction of filings that did
`
`not meet § 312(a) before the statutory bar of § 315(b). In ABB Inc. v Roy-G-Biv,
`
`the petitioner was served with a complaint alleging infringement on Nov. 21, 2011.
`
`IPR2013-00063, Paper 8 at 2 (¶ 1) (Nov. 26, 2012). Even though the correct
`
`petition was not uploaded until Nov. 26, 2012—thus not satisfying at least
`
`§ 312(a)(1)–(3) until after the one-year bar expired—the Board deemed the petition
`
`to have been filed on Nov. 21, 2012 and ultimately instituted review. IPR2013-
`
`00063, Paper 21 at 4 (¶ 11), 11 (Jan. 16, 2013) (Decision on Motion to Correct
`
`Petition); Paper 24 at 17 (May 28, 2013) (Institution Decision). The Board has
`
`instituted trial in other cases where § 312(a) was not satisfied until after § 315(b)’s
`
`one-year bar had expired. Nestle USA, Inc. v. Steuben Foods Inc., IPR2015-00195,
`
`Paper 9 at 4–5 (Jan. 21, 2015) (Decision on Motion to Correct Petition), Paper 51
`
`at 27 (June 29, 2015) (Institution Decision) (submission of copies of prior art,
`
`§ 312(a)(3)(A)); Schott Gemtron Corp. v. SSW Holding Co., IPR2014-00367,
`
`Paper 30 at 3 (Sept. 22, 2014) (Decision on Motion to Correct Filing Date), Paper
`
`9 at 15–16 (June 11, 2014) (Institution Decision) (submission of declaration,
`
`§ 312(a)(3)(B)). PO attempts to distinguish these decisions on facts relevant to the
`
`requirements of § 312(a) or other irrelevant points, but PO does not and cannot
`
`
`
`3
`
`
`
`
`
`dispute that they all institute trial under § 315(b) even though some of what
`
`§ 312(a) requires was not met before the one-year deadline.
`
`Nor did Terremark hold, as PO contends, that § 312(a) controls when a
`
`petition is filed under § 315(b). See Opp. at 2, 4, 7 (citing Terremark N. Am. LLC
`
`v. Jao Control & Monitoring Sys., LLC, IPR2015-01482, Paper 10 (Dec. 28,
`
`2015)). Rather, the Terremark Panel explicitly recognized that the Board corrected
`
`filing dates in ABB, Schott, and Syntroleum despite the petitioners failing to meet
`
`§ 312(a), as described above. Terremark at 12–13. Further, in Terremark, unlike
`
`here, the petitioner did not assert that it uploaded the petition to PRPS. See
`
`Terremark at 8 (“In addition, there are other possible reasons . . . why Petitioner
`
`was unable to upload their documents at the required time . . . .”). The petitioner
`
`also did not pay the petition fee, and did not submit the correct expert declaration
`
`until five weeks after the petition was submitted. Id. at 8–9. Rather, the facts here
`
`are closer to Conmed and 2Wire in that Petitioner uploaded the Petition and paid
`
`the fee on Dec. 2nd, and “submitted” the petition and supporting documents by 29
`
`minutes after midnight on Dec. 3rd. Mot. at 6–8.
`
`III. THE BOARD SHOULD UTILIZE ITS AUTHORITY TO WAIVE
`THE “SUBMIT” AND SERVICE REQUIREMENTS.
`
`
`
`Consistent with its prior decisions and § 42.5(b), the Board should waive the
`
`regulatory “Submit” requirement of § 42.6(b)(1) because the delay in clicking
`
`“Submit” was inadvertent, and Petitioner successfully uploaded the Petition and
`
`
`
`4
`
`
`
`
`
`paid the fee on Dec. 2nd. Mot. at 6–10. Similarly, if the Board finds that its rules
`
`required service to occur on Dec. 2—even though § 312(a) has no date requirement
`
`for service and § 315(b) does not mention service at all—then the Board should
`
`exercise its authority under § 42.5(b) to waive and/or suspend such a service
`
`requirement because Petitioner diligently served the Petition and all exhibits to PO
`
`in a FedEx package that was received by PO on December 4, 2015, the same day
`
`(or sooner) than it would have if service had been effected on Dec. 2nd via Priority
`
`Mail Express. Mot. at 10. There has simply been no prejudice here.
`
`
`
`PO asserts prejudice because waiving or suspending the rules would
`
`“circumvent” § 315(b). Opp. at 9. Again, Petitioner is not asking the Board to
`
`circumvent § 315(b) at all, and the 29-minute delay in clicking “Submit” and the
`
`resultant delay in service was not intentional. Petitioner’s counsel involved in the
`
`filing believed there was sufficient time, based on prior filing experiences, to
`
`submit before midnight. Granting Petitioner’s Motion will not encourage others to
`
`game the one-year bar and would be consistent with prior Board practice.
`
`Petitioner requests that the Board correct the Petition’s filing date to Dec. 2,
`
`2015.
`
`Dated: March 25, 2016
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`By: /Brian M. Buroker/
`
`
`
`Brian M. Buroker (Reg. No. 39,125) (lead)
`
`5
`
`
`
`
`
`CERFITICATE OF SERVICE
`
`
`
`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy
`
`of Petitioner’s Reply in Support of Motion To Correct Electronic Filing Date by
`
`electronic mail on March 25, 2016 on the counsel of record of the Patent Owner:
`
`David M. Hoffman, IPR12233-0046IP1@fr.com
`
`Dated: March 25, 2016
`
`
`
`
`
`
`
`
`
`
`
`By: /Brian M. Buroker/
`
`
`
`Brian M. Buroker (Reg. No. 39,125)
`Attorney for Plaid Technologies, Inc.
`
`6
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