`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`__________________
`
`TYLER MILLER,
`Patent Owner
`
`__________________
`
`Case No. IPR2020-00031
`Patent No. 10,043,188
`Issued: August 7, 2018
`Application No.: 14/721,707
`Filed: May 26, 2015
`Title: BACKGROUND INVESTIGATION MANAGEMENT SERVICE
`
`__________________
`
`
`DECLARATION OF JORDAN A. SIGALE IN SUPPORT OF
`PETITIONER’S MOTION TO CORRECT A CLERICAL MISTAKE IN
`THE PETITION UNDER 37 C.F.R. § 42.104(C)
`
`
`
`GUARDIAN EXHIBIT 1028
`Guardian Alliance Technologies, Inc. v. Miller
`
`
`
`I, Jordan A. Sigale, declare as follows:
`
`1.
`
`I am a Director and head of the Litigation Practice Group at the law firm of
`
`Dunlap Codding, P.C. I am registered to practice before the U.S. Patent and
`
`Trademark Office. And I am lead counsel for Petitioner Guardian Alliance
`
`Technologies, Inc. in connection with the above-captioned inter partes review
`
`proceeding involving U.S. Patent No. 10,043,188.
`
`2.
`
`I have personal knowledge of the matters set forth in this declaration. If called
`
`as a witness, I am competent to testify to these matters.
`
`3.
`
`I supervised the preparation, uploading, and filing of the Petition and all
`
`exhibits submitted to the USPTO’s PTAB E2E system on behalf of Petitioner on
`
`October 10, 2019.
`
`4.
`
`Submitted with Guardian’s Motion to Correct a Clerical Mistake as Ex. 1027
`
`is a true and correct copy of the 2009 Background Solutions video demonstration
`
`(“the 2009 Video”) that Petitioner intended to be uploaded as Ex. 1002 instead of
`
`the 2012 video that was actually uploaded as Ex. 1002 (“the 2012 Video”).
`
`5. During the related district court litigation, Miller Mendel, Inc. et al. v. The
`
`City of Oklahoma City, Case No. 5:18-cv-00990-JWD (W.D. Okla.), for which
`
`Dunlap Codding, P.C. is counsel of record for Guardian’s indemnitee, the City of
`
`Oklahoma City (“OKC”), OKC obtained from third party Background Solutions,
`
`1
`
`
`GUARDIAN EXHIBIT 1028
`Guardian Alliance Technologies, Inc. v. Miller
`
`
`
`LLC on or about August 5, 2019, a production of documents and files (the
`
`“Background Solutions Files”), which included the 2009 Video and the 2012 Video.
`
`6. As shown below, the Background Solutions Files were, and continue to be,
`
`stored on Dunlap Codding’s document server in the “Background Solutions”
`
`subfolder in the “Third Party Production” subfolder for the Related Litigation (“RL
`
`Directory”):
`
`
`
`7. On August 8, 2019 in the related litigation, Patent Owner’s counsel was served
`
`with the Background Solutions Files by providing them with a link to Dunlap
`
`Codding’s Exavault file sharing system.
`
`8.
`
`Patent Owner’s counsel in the related litigation, Rylander & Associates P.C.,
`
`is the counsel-of-record for the ’188 Patent at the USPTO, as well as Backup
`
`Counsel in this IPR proceeding.
`
`2
`
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`GUARDIAN EXHIBIT 1028
`Guardian Alliance Technologies, Inc. v. Miller
`
`
`
`9. As seen below, the Background Solutions Files served on Miller’s counsel
`
`included the 2009 Video. To create the screenshots shown below, earlier today I
`
`clicked on the link provided to Patent Owner’s counsel via email in August 2019,
`
`entered the password into the resulting Exavault login screen, and downloaded the
`
`zipped production file folder to my computer. I then opened the zipped folder to the
`
`“NATIVES” subdirectory, shown below to include BGS-0006247:
`
`10. OKC’s invalidity contentions and charts, served on Patent Owner’s counsel
`
`
`
`3
`
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`GUARDIAN EXHIBIT 1028
`Guardian Alliance Technologies, Inc. v. Miller
`
`
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`the same day, relied upon and made reference to the Background Solutions
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`Reference--i.e., the 2009 Video.
`
`11. The cover pages for each of the Background Solutions invalidity charts
`
`disclose that the “Background Solutions Demo (“BGS-0006247”)” is included in
`
`the Background Solutions System:
`
`
`
`
`
`12. These invalidity charts contain virtually the same screenshots, time-stamps,
`
`and narration transcript accompanying the 2009 Video as was included in the
`
`Petition. For the convenience of the Board, true and correct copies of the invalidity
`
`charts for which the Background Solutions 2009 Video served as the primary
`
`reference and were served on Patent Owner’s Backup Counsel on August 8, 2019
`
`are submitted as Exhibits 1029 and 1030.
`
`13. As shown in Exhibits 1029 and 1030, these invalidity contentions were not
`
`marked with any confidentiality designation.
`
`14. While preparing the IPR Petition, we relied upon the 2009 Video saved in the
`
`RL Directory.
`
`4
`
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`GUARDIAN EXHIBIT 1028
`Guardian Alliance Technologies, Inc. v. Miller
`
`
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`15. A separate, dedicated directory was later created on Dunlap Codding’s
`
`document server for this IPR proceeding (“IPR Directory”).
`
`16. While finalizing the exhibits to be filed with the IPR Petition, Dunlap Codding
`
`staff transferred files from the RL Directory to the IPR Directory.
`
`17. When it came time to transfer the 2009 Video to the IPR Directory, a Dunlap
`
`Codding staff member accidentally transferred the 2012 Video and erroneously
`
`labeled it “Ex. 1002.”
`
`18. The 2009 Video and the 2012 Video were and remain the only video files in
`
`
`
`the RL Directory.
`
`19. Petitioner’s Counsel discovered that we had erroneously marked and uploaded
`
`the 2012 Video as Ex. 1002 on January 23, 2020, after reading the Patent Owner
`
`5
`
`
`GUARDIAN EXHIBIT 1028
`Guardian Alliance Technologies, Inc. v. Miller
`
`
`
`Preliminary Response filed on January 22, 2020.
`
`20. Counsel immediately contacted Patent Owner’s Lead and Backup Counsel
`
`that same day explaining the error and asking for a time to meet and confer over the
`
`issue.
`
`21. Patent Owner’s Lead and Backup Counsel were not able to meet and confer
`
`until January 29, 2020.
`
`22. During the meet and confer, Patent Owner’s counsel raised other issues not
`
`germane to the present Motion to Correct, which led to correspondence between
`
`counsel until January 31, 2020, when counsel for Petitioner requested Patent
`
`Owner’s Counsel’s availability for a conference call with the Board.
`
`23. On February 3, 2020, Patent Owner’s Counsel provided its availability for a
`
`conference call with the Board, and counsel for Petitioner submitted a joint email
`
`to the Board the next day, February 4, 2020.
`
`24.
`
`I hereby declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true.
`
`I further declare that these statements were made with the knowledge that willful
`
`false statements and the like so made are punishable by fine or imprisonment, or
`
`both, under section 1001 of Title 18 of the United States Code and that such willful
`
`statements may jeopardize the validity of the application or any patents issued
`
`6
`
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`GUARDIAN EXHIBIT 1028
`Guardian Alliance Technologies, Inc. v. Miller
`
`
`
`thereon.
`
`Date: February 13, 2020
`
`
`
`Respectfully submitted,
`
`
`/Jordan A. Sigale/
`Jordan A. Sigale
`USPTO Reg. No. 39,028
`Dunlap Codding, P.C.
`
`
`
`
`
`7
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`GUARDIAN EXHIBIT 1028
`Guardian Alliance Technologies, Inc. v. Miller
`
`
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