`Patent No. 6,212,527
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`MINDGEEK USA INC., MINDGEEK S.À.R.L.,
`MG FREESITES LTD., MG FREESITES II LTD.,
`MG CONTENT RK LTD., MG CONTENT DP LTD.,
`MG CONTENT RT LTD., MG PREMIUM LTD.,
`MG CONTENT SC LTD., MG CYPRUS LTD.,
`LICENSING IP INTERNATIONAL S.À.R.L.,
`9219-1568 QUÉBEC INC. d/b/a ENTREPRISE MINDGEEK CANADA, and
`COLBETTE II LTD.,
`
`Petitioners
`
`v.
`
`UNIVERSITY OF SOUTHERN CALIFORNIA
`Patent Owner
`
`Case IPR2019-00422
`Patent No. 6,212,527
`____________________________________________________________
`
`PETITIONERS’ NOTICE OF APPEAL
`
`via PTAB E2E
`Patent Trial and Appeal Board
`
`via Priority Mail Express
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`
`
`
`Case IPR2019-00422
`Patent No. 6,212,527
`
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Petitioners
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`MindGeek USA Inc., MindGeek S.À.R.L., MG Freesites Ltd., MG Freesites II Ltd.,
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`MG Content RK Ltd., MG Content DP Ltd., MG Content RT Ltd., MG Premium
`
`Ltd., MG Content SC Ltd., MG Cyprus Ltd., Licensing IP International S.À.R.L.,
`
`9219-1568 Québec Inc. d/b/a Entreprise MindGeek Canada, and Colbette II Ltd.
`
`(collectively, “Petitioners”) hereby appeal to the United States Court of Appeals for
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`the Federal Circuit from the Decision Denying Institution of Inter Partes Review of
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`the Patent Trial and Appeal Board (“Board”) entered June 18, 2019 (Paper No. 9) as
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`it relates to U.S. Patent No. 6,212,527 (“the ’527 patent”), and from all underlying
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`findings, determinations, orders, decisions, rulings and opinions relating to that
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`decision or the ’527 patent. A copy of the Board’s Decision Denying Institution of
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`Inter Partes Review is attached hereto as Exhibit A.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioners further indicate that
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`the expected issues on appeal include, but are not limited to, the following:
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`•
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`The Board’s determination that this inter partes review or
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`Petition (Paper No. 1) is time-barred by 35 U.S.C. § 315(b), and
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`2
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`
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`•
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`•
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`•
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`Case IPR2019-00422
`Patent No. 6,212,527
`any other finding or determination (legal or factual) supporting
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`or related to this determination;
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`The application of the statutory bar under 35 U.S.C. § 315(b)
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`when the underlying complaint is filed by a non-patent owner,
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`such as a licensee;
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`The Board’s decision to not institute the Petition (Paper No. 1);
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`The Board’s decision to not address Sling TV, LLC v. Realtime
`
`Adaptive Streaming, LLC, IPR 2018-01331, Paper No. 9 (Jan. 31,
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`2019) and related arguments in Petitioners’ Reply (Paper No. 7),
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`pp. 2-3; and
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`•
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`The Board’s decision to not address the factual and legal
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`arguments in Petitioners’ Reply (Paper No. 7).
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`along with any finding or determination supporting or related to those issues,
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`as well as all other issues decided adversely to Petitioners in any orders,
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`decisions, opinions, and rulings.
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`A copy of this Notice of Appeal is being concurrently filed with the Board
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`and Director of the United States Patent and Trademark Office. In addition, three
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`copies of this Notice of Appeal, along with the required docketing fees, are being
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`filed with the Clerk’s Office for the United States Court of Appeals for the Federal
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`Circuit.
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`3
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`
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`Dated: July 1, 2019
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`Case IPR2019-00422
`Patent No. 6,212,527
`Respectfully submitted,
`
`By: /Frank M. Gasparo/
`Frank M. Gasparo
`Registration No. 44,700
`Venable LLP
`Rockefeller Center
`1270 Avenue of the Americas
`Twenty-Fourth Floor
`New York, NY 10020
`
`Attorneys for Petitioners
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`4
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`
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`CERTIFICATE OF FILING
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`Case IPR2019-00422
`Patent No. 6,212,527
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`The undersigned hereby certifies that, in addition to being electronically filed
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`with the Patent Trial and Appeal Board, the above-captioned Petitioners’ Notice of
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`Appeal is being filed by Priority Mail Express or equivalent on July 1, 2019, with
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`the Director of the United States Patent and Trademark Office, at the following
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`address (pursuant to 37 C.F.R. §§ 90.2(a), 104.2):
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`CERTIFICATE OF FILING
`
`The undersigned certifies that a true and correct copy of the foregoing
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`Petitioners’ Notice of Appeal was filed electronically with the Clerk’s Office of the
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`United States Court of Appeals for the Federal Circuit on July 1, 2019.
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that a true and
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`correct copy of Petitioners’ Notice of Appeal was served in entirety on July 1, 2019,
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`by electronic mail to Patent Owner’s counsel of record as follows:
`
`HARDY PARRISH YANG, LLP
`Minghui Yang (myang@hpylegal.com)
`R. Floyd Walker (fwalker@hpylegal.com)
`SPICEWOOD BUSINESS CENTER
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`5
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`
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`Case IPR2019-00422
`Patent No. 6,212,527
`4412 SPICEWOOD SPRINGS RD, SUITE 202
`AUSTIN, TEXAS 78759
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`Date: July 1, 2019
`
`By: /Frank M. Gasparo/
`Frank M. Gasparo
`Registration No. 44,700
`Venable LLP
`Rockefeller Center
`1270 Avenue of the Americas
`Twenty-Fourth Floor
`New York, NY 10020
`
`6
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`
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`EXHIBIT A
`
`EXHIBIT A
`
`
`
` Paper 9
`Trials@uspto.gov
`571-272-7822 Entered: June 18, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MINDGEEK USA INC., MINDGEEK S.À.R.L.,
`MG FREESITES LTD., MG FREESITES II LTD.,
`MG CONTENT RK LTD., MG CONTENT DP LTD.,
`MG CONTENT RT LTD., MG PREMIUM LTD.,
`MG CONTENT SC LTD., MG CYPRUS LTD.,
`LICENSING IP INTERNATIONAL S.À.R.L.,
`9219-1568 QUÉBEC INC. d/b/a ENTREPRISE MINDGEEK CANADA,
`and COLBETTE II LTD.,
`Petitioner,
`
`v.
`
`UNIVERSITY OF SOUTHERN CALIFORNIA,
`Patent Owner.
`____________
`
`Case IPR2019-00422
`Patent 6,212,527 B1
`____________
`
`Before SALLY C. MEDLEY, KEVIN C. TROCK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 315(b)
`
`
`
`
`IPR2019-00422
`Patent 6,212,527 B1
`
`I. INTRODUCTION
`MindGeek USA Inc., along with several other entities (collectively,
`“Petitioner”),1 filed a Petition for inter partes review of claims 1–16 of U.S.
`Patent No. 6,212,527 B1 (Ex. 1001, “the ’527 patent”). Paper 1 (“Pet.”).
`University of Southern California (“Patent Owner”)2 filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner
`filed a Reply. Paper 7 (“Reply”). Also with our authorization, Patent
`Owner filed a Sur-Reply. Paper 8 (“Sur-Reply”). For the reasons provided
`below, we determine the Petition is time-barred pursuant to 35 U.S.C.
`§ 315(b). Accordingly, we do not institute inter partes review of the ’527
`patent in this proceeding.
`The parties indicate that the ’527 patent is the subject of Preservation
`Technologies LLC v. MindGeek USA Inc. et al., Case No. 2:17-cv-08906-
`DOC-JPR (C.D. Cal.) and Preservation Technologies LLC v. MG Content
`RK Ltd. et al., Case No. 2:18-cv-03058-DOC-JPR (C.D. Cal.), both
`currently pending. Pet. 3; Paper 3, 2. The parties also list at least one
`relevant dismissed proceeding, which we discuss in more detail below. Pet.
`3; Paper 3, 2.
`
`II. DISCUSSION
`The issue before us is whether Petitioner timely filed its Petition under
`
`§ 315(b). We determine that Petitioner did not.
`
`
`1 The header on page 1 of this Decision lists all parties representing
`Petitioner. Petitioner lists the same as real parties-in-interest. Pet. 2.
`2 Patent Owner lists exclusive licensee, Preservation Technologies LLC, as a
`real party-in-interest. Paper 3, 2; Prelim. Resp. 2.
`2
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`IPR2019-00422
`Patent 6,212,527 B1
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`Section 315(b) states, “[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). In Click-To-Call Technologies, LP v.
`Ingenio, Inc., 899 F.3d 1321, 1328–36 (Fed. Cir. 2018) (en banc in relevant
`part), the court held the time bar of § 315(b) “applies to bar institution when
`an IPR petitioner was served with a complaint for patent infringement more
`than one year before filing its petition, but the district court action in which
`the petitioner was so served was voluntarily dismissed without prejudice.”
`Id. at 1328 n.3. That holding applies to both voluntary, and involuntary,
`dismissals without prejudice. Bennett Regulator Guards, Inc. v. Atlanta Gas
`Light Co., 905 F.3d 1311, 1314–15 (Fed. Cir. 2018).
`According to the Petition, Preservation Technologies LLC, filed a
`complaint against MindGeek USA Inc. for infringement of the ’527 patent.
`Pet. 6. The complaint was served on October 14, 2014. Id. On February 2,
`2015, Preservation Technologies LLC filed a notice of voluntary dismissal
`of the complaint. Id. at 5–6. Petitioner filed the Petition on December 11,
`2018, several years after the 2014 complaint against MindGeek USA Inc.
`was served.
`Petitioner acknowledges the holding in Click-To-Call, but argues that
`“Click-To-Call was incorrectly decided.” Id. at 6–7. Petitioner argues that
`we should instead follow Sling TV, LLC v. Realtime Adaptive Streaming,
`LLC, IPR2018-01331 (Jan. 31, 2019) (Paper 9), a non-precedential Board
`decision where a Board panel determined that § 315(b) requires petitioner be
`served with a patent owner’s complaint to trigger the one-year time bar.
`Reply 2–3. Patent Owner argues that “Click-To-Call is clearly relevant to
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`3
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`IPR2019-00422
`Patent 6,212,527 B1
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`the present IPR and its holding that a complaint’s later voluntary dismissal
`has no bearing on the one year time bar of 35 U.S.C. § 315(b) is
`controlling.” Prelim. Resp. 6. Patent Owner further argues that “[t]he
`Federal Circuit in Click-To-Call already considered the exact fact pattern at
`issue in this proceeding and determined service by an exclusive licensee
`triggers the time bar of 35 U.S.C. § 315(b).” Sur-Reply 1. As such, Patent
`Owner argues that Petitioner is time barred under 35 U.S.C. § 315(b) and the
`Petition should be denied. Prelim. Resp. 6; Sur-Reply 1–3. We agree with
`Patent Owner.
`Here, Petitioner filed the Petition more than one year after the October
`14, 2014 service of the complaint alleging infringement of the ’527 patent.
`As in Click-To-Call, the defendant (Petitioner) was served a complaint by an
`exclusive licensee, Preservation Technologies LLC. The court in Click-To-
`Call held that service from an exclusive licensee barred the defendant from
`filing a petition for inter partes review more than a year later, despite the
`fact that the complaint was subsequently voluntarily dismissed. 899 F.3d at
`1328 n.3. Sling TV is a non-precedential Board decision, which we are not
`bound to follow. In addition, we note Sling TV did not address the issue of
`whether service by an exclusive licensee of a complaint triggers the one-year
`bar in § 315(b).3 Based on current case law regarding 35 U.S.C. § 315(b),
`the Petition was not timely filed, and therefore, we do not institute inter
`partes review of the ’527 patent.
`
`
`3 We also observe that an exclusive licensee can have standing to sue in its
`own name, without joining the patent holder. See, e.g., Int’l Gamco, Inc. v.
`Multimedia Games, Inc., 504 F.3d 1273, 1276 (Fed. Cir. 2007).
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`IPR2019-00422
`Patent 6,212,527 B1
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`III. CONCLUSION
`For the foregoing reasons, we determine the Petition is time-barred
`pursuant to 35 U.S.C. § 315(b), and do not institute inter partes review in
`this proceeding.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied.
`
`
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`IPR2019-00422
`Patent 6,212,527 B1
`
`
`For PETITIONER:
`Frank M. Gasparo
`William Hector
`VENABLE LLP
`fmgasparo@venable.com
`wahector@venable.com
`
`For PATENT OWNER:
`Minghui Yang
`Floyd Walker
`HARDY PARRISH YANG LLP
`myang@hpylegal.com
`fwalker@hpylegal.com
`
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