IPR2020-00031
`Patent 10,043,188 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner,
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`v.
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`TYLER MILLER
`Patent Owner.
`____________
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`Case IPR2020-00031
`Patent 10,043,188 B2
`_____________________________
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`PATENT OWNER’S MOTION TO TERMINATE IPR PROCEEDING
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`Patent 10,043,188 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner,
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`v.
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`TYLER MILLER
`Patent Owner.
`____________
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`Case IPR2020-00031
`Patent 10,043,188 B2
`_____________________________
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`PATENT OWNER’S MOTION TO TERMINATE IPR PROCEEDING
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`IPR2020-00031
`Patent 10,043,188
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`Miller requests termination of the IPR as time barred under 35 U.S.C. §
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`315(b) and because GAT’s primary references are not prior art. In a related motion,
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`GAT attempts to replace a non-prior art reference (Ex. 1002) with an alleged
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`earlier reference. Despite this being styled as a Motion to Terminate, Petitioner’s
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`must prove entitlement to its filing date and that it is not time-barred.
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`STATEMENT OF MATERIAL FACTS
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`1. GAT’s bar date was October 10, 2019, one year after service on the real-
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`party-in-interest City of Oklahoma City (“OKC”). (Pet. at 1.)
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`2. In April 2019, OKC stated an IPR was coming. (Ex. 2018 at 3, ¶ 6.)
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`3. GAT apparently tried to evade service of a subpoena. (Ex 2019, 2020.)
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`4. OKC opposed having GAT named as a defendant. (Ex. 2021 at 5.)
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`5. Mr. Talley sought permission to serve IPR documents on October 10, 2019,
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`but did not identify GAT as petitioner. (Ex. 2022.)
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`6. Metadata for Ex. 1002 indicates creation on Dec. 20, 2012. (Ex. 2023.)
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`7. On Jan. 23, 2020, Mr. Talley first alleged that the wrong exhibit had been
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`uploaded to PTAB E2E. He referred to Ex. 1002 as the “2012 video.” He
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`identified the “new exhibit” as BGS-006247.
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`8. BGS-006247 is one of more than 13,600 files produced by a third party on
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`or about August 8, 2019. BGS-006247 is an “FLV” file, an antiquated
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`Patent Owner’s Motion to Terminate Proceeding
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`Page 1
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`IPR2020-00031
`Patent 10,043,188
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`format that cannot be uploaded to E2E or played on Mr. Rylander’s
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`computer without additional software.
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`9. In a conference call, Mr. Talley stated he did not contest the fact that “BGS-
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`006247” had never been served on Miller by Guardian.
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`10. OKC’s Invalidity Contentions were not filed in Court prior to the Bar Date.
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`11. GAT has not provided or identified any public source for BGS-006247
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`between August 2019 and today.
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` GAT FAILED TO SERVE ITS EVIDENCE PRIOR TO THE BAR DATE
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` “A petitioner who files a petition shortly before the time bar should be well
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`aware of the risks...” Nuna Baby Essentials, Inc. v. Britax Child Safety, Inc.,
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`IPR2018-01683, Paper No. 11, p. 8 (P.T.A.B. Dec. 18, 2018). Despite listing five
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`counsel of record, not one discovered the alleged error: 1) on the day of filing, 2)
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`after receiving a notice that at least one exhibit was defective (see Paper No. 5 at
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`2), or 3) prior to Patent Owner’s Preliminary Response (“POPR”) more than three
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`months later, in dereliction of their obligations to review filings. See Nuna at 6-7.
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`A “petition is only accorded a filing date once (1) a petition has been filed;
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`(2) payment has been made; and (3) the complete petition is served on the patent
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`owner.” Terremark NA LLC v. Joao Control & Monitoring Sys., LLC, IPR2015-
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`01482, Paper #10, p. 7 (P.T.A.B. 2015); also Luv’n Care, Ltd. v. McGinley,
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`IPR2017-01216, Paper #13, pp. 2-3 (P.T.A.B. Jan. 10, 2018) (Informative).
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`Patent Owner’s Motion to Terminate Proceeding
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`Page 2
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`IPR2020-00031
`Patent 10,043,188
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`Although initially afforded a filing date of October 10, 2019, GAT’s
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`assertion that it inadvertently filed the wrong exhibit also results in an admission
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`that did not serve the all materials on Patent Owner (see MF 9) as required by 35
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`U.S.C. § 312(a) prior to the bar date and is dispositive of this proceeding:
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`The obvious purpose of requiring service within the one-year statutory
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`period set forth in 35 U.S.C. § 315(b) is either to provide a patent owner
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`with timely notice that its patent is subject to an inter partes review
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`proceeding, or else to give the patent owner repose at the end of the
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`statutory period.
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`Plaid Tech. Inc. v Yodlee, Inc., IPR2016-00275, Paper No. 15, p. 9.
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`A. GAT Cannot Assert Service by a Third Party (OKC)
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`35 U.S.C. § 312(a)(5) unambiguously requires that the petitioner provide
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`copies of all patents and publications relied upon to the patentee. “Where a
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`statute's language carries a plain meaning, the duty of an administrative agency is
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`to follow its commands as written, not to supplant those commands with others it
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`may prefer.” SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). See also
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`Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131, 2141 (2016) (noting that
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`courts may invalidate “shenanigans” by the Director that are “outside [his]
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`statutory limits”); also Click-To-Call Tech. v. Ingenio, Inc., 899 F.3d 1321 (Fed.
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`Cir. 2018) (en banc in relevant part) (holding that the Board could not subvert the
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`plain meaning of “served with a complaint” in 315(b)). “The time-bar is not about
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`Patent Owner’s Motion to Terminate Proceeding
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`Page 3
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`IPR2020-00031
`Patent 10,043,188
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`preliminary procedural requirements that may be corrected if they fail to reflect
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`real world facts, but about real world facts that limit the agency’s authority to act
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`under the IPR scheme.” Wi-fi One LLC v. Broadcom Corp, 878 F.3d 1364, 1374
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`(Fed. Cir. 2018) (en banc) (holding that time-bar determinations are reviewable).
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`Research has not located any case permitting service by a third-party, and
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`the above decisions would necessarily overrule any such case. Indeed, the only
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`case identified by GAT in its correspondence involved substitution of a reference
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`that had been identified by the petitioner in the actual petition.
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`OKC is not a petitioner in the IPR. GAT is not a party to the litigation. But,
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`GAT and OKC are playing a shell game. GAT wants the benefit of litigation
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`activity, but none of the liabilities. Indeed, OKC has opposed adding GAT as a
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`defendant. (MF 4.) Further, GAT apparently tried to evade service of a valid
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`litigation subpoena. (MF 3.) It would be a tragic miscarriage of justice to permit
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`GAT to use the Litigation proceedings as sword and shield.
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`B. GAT Did Not Timely Comply with the Regulation
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`Beyond § 312(a), 37 C.F.R. § 42.105(a) states that “the petitioner must serve
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`the petition and exhibits relied upon as follows… at the correspondence address of
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`record for the subject patent.” Section (b) allows electronic service only on the
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`agreement of the parties. Otherwise, service was required by Priority Mail Express
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`or better. GAT did not serve any documents by mail or other physical method.
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`Patent Owner’s Motion to Terminate Proceeding
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`Page 4
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`IPR2020-00031
`Patent 10,043,188
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`GAT could not have served Miller electronically prior to the bar date, as it
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`had no permission to do so prior to Oct. 10, 2019. (Ex. 2022).
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`C. The Service Error Cannot be Corrected After the Bar Date
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`While the Board has permitted the correction of clerical errors, such
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`corrections are not permissible after the bar date. For many years, it was believed
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`that the Board’s decision on such matters were unreviewable. Now, it is clear that
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`“real world facts limit the agency’s authority” after the time bar is triggered. Had
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`GAT filed its petition earlier and discovered its error prior to the bar date, the
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`Board could have allowed correction or required a new petition. (Cf. MF 1-2.)
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`D.
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`Prejudice to Miller Cannot Be Redressed
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`Miller is prejudiced by denial of its statutory repose. Plaid at 9. Miller is
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`also prejudiced by the failure of GAT’s five attorneys to raise the issue prior to
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`Miller’s Preliminary Response, which would have devoted more than the six pages
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`now allowed on this issue. Cf. Nuna at 6 (lack of prejudice is not good cause).
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`Indeed, GAT’s error and late attempt at correction imposed undue costs on Miller.
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` ALL GROUNDS ARE PREMISED ON NON-PRIOR ART
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`“Patent Owner, in formulating its Preliminary Response, should be able to rely
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`on the Petition and accompanying exhibits as being correct.” Ivantis Inc., v
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`Glaukos Corp., IPR2018-01180, Paper # 14 at 13 (denying substitution of non-
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`prior art exhibit). When all grounds depend on non-prior art, there is no point in
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`Patent Owner’s Motion to Terminate Proceeding
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`Page 5
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`IPR2020-00031
`Patent 10,043,188
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`continuing to an institution decision. Wavetamer Gyros LLC v Seakeeper, Inc.,
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`IPR2017-01931, Paper No. 13 at 2. An IPR petition is not an invitation for an
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`archaeological expedition, yet GAT now asserts that Miller should have been able
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`to discern its “intent” by digging through more than 13,000 production documents
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`provided by a third part in litigation that GAT has evaded. (MF 7-11.)
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`That’s wrong. Miller relied upon the Petition as filed and served.
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`The petition identified Ex. 1002 as a video disclosing the “Background
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`Assistant” (Pet. at 4-5), which appears in the first seconds of Ex. 1002. As Miller
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`indicated, Ground #1 was incomprehensible in that GAT appeared to be relying on
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`a prior art system or software, not a prior printed publication. (POPR at 12).
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`GAT seeks to avoid Wavetamer, Ivantis and similar cases by refusing to
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`admit that Ex. 1002 is not prior art despite referring to it as the “2012 video.” (MF
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`7). However, the metadata for Ex. 1002 makes it clear that it was created in Dec.
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`2012, long after the parent patent’s filing date of April 6, 2012. (MF 6.)
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`GAT’s second ground is premised on Ex. 1004, an exhibit compiled from
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`screenshots constructed in such a way as to obscure the fact that none of the
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`underlying content had been captured by the Internet Archive prior to August 8,
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`2019. (POPR at pp. 29-33; Ex. 2002 at ¶¶ 60-80).
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`This IPR should be terminated. GAT made no clerical error; its petition
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`indicates a belief that it could backdate materials from 2012 and 2019 during trial.
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`Patent Owner’s Motion to Terminate Proceeding
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`Page 6
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`Dated: October 21, 2019
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`IPR2020-00031
`Patent 10,043,188
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`Respectfully submitted,
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`By: /Richard D. Mc Leod/
`R. D. Mc Leod (Reg. No. 46,921)
`law@rickmcleod.com
`Mc Leod Law LLC
`PO Box 99
`Woodland WA 98674
`Telephone: (360) 841-5654
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`Patent Owner’s Motion to Terminate Proceeding
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`Page 7
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`IPR2020-00031
`Patent 10,043,188
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`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
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`The undersigned certifies that on February 13, 2020, a complete copy of
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`Patent Owner’s Motion to Terminate Proceeding and support exhibits were served
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`via electronic mail as follows:
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`ipr-filings@dunlapcodding.com
`Jordan A. Sigale (Reg. No. 39,028)
`Douglas J. Sorocco (Reg. No. 43,145)
`Evan W. Talley
`Ann M. Robl (Reg. No. 71,541)
`Alyssa N. Grooms (Reg. No. 75,902)
`DUNLAP CODDING, P.C.
`P.O. Box 16370
`Oklahoma City, OK 73113
`Tel: (405) 607-8600
`Fax: (405) 607-8686
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`By: /Richard D. Mc Leod/
`R. D. Mc Leod (Reg. No. 46,921)
`law@rickmcleod.com
`Mc Leod Law LLC
`PO Box 99
`Woodland WA 98674
`Telephone: (360) 841-5654
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`CERTIFICATE OF SERVICE
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`Page 1
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