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Case No. IPR2020-00031
`Patent 10,043,188
`
`
`Attorney Docket No. 2993.003
`
`
`
`
`
`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
`
`__________________
`
`
`MOTION TO CORRECT A CLERICAL MISTAKE IN THE PETITION
`UNDER 37 C.F.R. § 42.104(C)
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case No. IPR2020-00031
`Patent 10,043,188
`
`
`
`Attorney Docket No. 2993.003
`
`
`
`
`Petitioner Guardian Alliance Technologies, Inc. (“Petitioner”) files this
`
`Motion Under 37 C.F.R. § 42.104(c) pursuant to the Board’s authorization issued
`
`February 6, 2020 (Ex. 1026, at pp. 31-32). Petitioner seeks to substitute a 2009 video
`
`from third-party Background Solutions (i.e., “the 2009 Video,” filed herewith as Ex.
`
`1027) upon which its Petition actually relies, in place of an incorrectly marked and
`
`uploaded 2012 video also from Background Solutions.
`
`On October 10, 2019, Petitioner filed an IPR petition for U.S. Patent
`
`10,043,188 on two grounds. Only Ground 1 relies on “Background Solutions” (in
`
`combination with the LaPasta patent publication). The Petition defined “Background
`
`Solutions” as “[a] printed publication, which is a video demonstration entitled
`
`“Background Assistant” (Ex. 1002), which discloses Background Solutions, LLC’s
`
`background investigation system, i.e. Background Assistant™, demonstrated and
`
`displayed at trade seminars as early as mid-2009 and made publicly accessible on
`
`www.backgroundsolutions.com, no later than November 23, 2009.” (Id. at pp. 1, 4-
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`5). Pages 25–52 of the Petition provide a detailed analysis of Ground 1, including a
`
`limitation-by-limitation chart comparing the challenged claims of the ’188 Patent to
`
`Background Solutions and LaPasta. The charts purposefully include time-stamped
`
`screenshots and narration from the 2009 Video. (Id.) Due to a clerical error,
`
`Petitioner inadvertently marked and uploaded the 2012 video from Background
`
`Solutions (“the 2012 Video”) as Ex. 1002.
`
`
`
`1
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`

`

`Case No. IPR2020-00031
`Patent 10,043,188
`
`
`Attorney Docket No. 2993.003
`
`
`
`
`37 C.F.R. § 42.104(c) allows filing a motion “that seeks to correct a clerical
`
`or typographical mistake in the petition.” Motions to correct are granted upon
`
`showing that an error in filing an incorrect exhibit was clerical in nature. Netflix, Inc.
`
`v. Copy Protection LLC, IPR2015-00921 (PTAB July 30, 2015) (Paper 19). The rule
`
`is remedial in nature and entitled to a liberal interpretation. ABB Inc. v. ROY-G-BIV
`
`Corp., IPR2013-00063 (PTAB Jan. 16, 2013) (Paper 21). Ivantis, Inc. v. Glaukos
`
`Corp., IPR2018-01180 (PTAB Dec. 6, 2018) (Paper 14 at p. 9) provides a list of
`
`non-exhaustive factors for consideration.
`
`Factor 1: The nature of the error, and whether the party requesting relief
`provides adequate explanation for how the error occurred,
`including how the error was discovered.
`
`
`
`
`The error Petitioner seeks to correct is clerical in nature. During the related
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`district court litigation, Miller Mendel, Inc. et al. v. The City of Oklahoma City, Case
`
`No. 5:18-cv-00990-JWD (W.D. Okla.) (“Related Litigation”), the City of Oklahoma
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`City (“OKC”)—Petitioner’s indemnitee and a named real party-in-interest—
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`obtained from third party Background Solutions, LLC production of documents and
`
`files (the “Background Solutions Files”), which included both the 2009 and 2012
`
`Videos. (Sigale Decl., Ex. 1028, at ¶ 4). The Background Solutions Files were, and
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`continue to be, stored on Dunlap Codding’s (“DC”) document server in the
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`“Background Solutions” subfolder in the “Third Party Production” subfolder for the
`
`Related Litigation (“RL Directory”). (Id. at ¶ 5).
`
`
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`2
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`

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`Case No. IPR2020-00031
`Patent 10,043,188
`
`
`Attorney Docket No. 2993.003
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`
`
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`On August 8, 2019, Patent Owner’s (“PO”) counsel was served with the
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`Background Solutions Files, including the 2009 and 2012 Videos. (Id. at ¶ 6). OKC’s
`
`invalidity contentions and charts, also served on PO’s counsel that day, relied upon
`
`and made reference to the 2009 Video. (Id. at ¶ 9). The cover pages for each of the
`
`Background Solutions invalidity charts refer to the 2009 Video as “Background
`
`Solutions Demo” and identify it by Bates number BGS-000627. (Id. at ¶ 10). These
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`invalidity charts contain virtually identical screenshots, timestamps, and narration
`
`transcript as detailed in the Petition at pp. 32–50. (Id. at ¶ 11). The invalidity
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`contentions were not marked confidential under the protective order in the Related
`
`Litigation. (Id. at ¶ 12). PO’s counsel in the Related Litigation, Rylander &
`
`Associates PC, is the counsel-of-record for the ’188 Patent, as well as Backup
`
`Counsel in this proceeding. (Id. at ¶ 7).
`
`While preparing the IPR Petition, DC relied upon the 2009 Video saved in the
`
`RL Directory. (Id. at ¶ 13). A separate directory was created on DC’s document
`
`server for this IPR proceeding (“IPR Directory”). (Id. at ¶ 14). While finalizing the
`
`exhibits for the Petition, DC staff transferred files from the RL Directory to the IPR
`
`Directory. (Id. at ¶ 15). When it came time to transfer a copy of the 2009 Video to
`
`the IPR Directory, the 2012 Video was accidentally transferred and erroneously
`
`labeled as “Ex. 1002.” (Id. at ¶ 16). (The 2009 Video and the 2012 Video were and
`
`remain the only video files in the RL Directory. (Id. at ¶ 17).) The Petition does not
`
`
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`3
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`

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`Case No. IPR2020-00031
`Patent 10,043,188
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`recite, mention, or rely in any manner on the 2012 Video. On January 23, 2020,
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`Attorney Docket No. 2993.003
`
`
`
`
`reading the PO’s Preliminary Response, filed January 22nd, Petitioner’s Counsel
`
`realized that it had erroneously marked and uploaded the 2012 Video as Ex. 1002.
`
`(Id. at ¶ 18).
`
`Factor 2: The length of time elapsed between learning of the error and bringing
`the motion to the Board's attention.
`
`
`
`Immediately upon discovering the error, Petitioner’s counsel contacted PO’s
`
`counsel to inform them of the error. (Id. at ¶ 19). Counsel met and conferred over
`
`the issue on January 29, 2020--PO’s counsel’s earliest availability. On February 4,
`
`2020, following additional discussions between counsel, Petitioner submitted a joint
`
`email to the Board. (Id. at ¶¶ 20-22).
`
`Factor 3: Prejudice to the other party, if any, by allowing the proposed
`correction.
`
`
`
`The prejudice to PO if Petitioner is allowed to correct its clerical mistake is
`
`minor. PO and its counsel have been on notice since at least August 9, 2019 that
`
`Petitioner’s invalidity case against the ‘188 Patent relies on the 2009 Video. (Id. at
`
`¶¶ 9-11). PO’s counsel in the Related Litigation is counsel-of-record for the ‘188
`
`Patent and backup counsel in this IPR. (Id. at ¶ 7). In the context of service, the
`
`Board has found that failure to effect timely service on a patent owner can be cured
`
`by serving litigation counsel. See, e.g. Micron Tech, Inc. v. eDigital Corp., IPR2015-
`
`00519 (PTAB Mar. 25, 2015) (Paper 14, at pp. 4-6). Further, the Petition itself makes
`
`
`
`4
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`

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`Case No. IPR2020-00031
`Patent 10,043,188
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`plain that Ground 1 is based on the 2009 Video. (Petition, Paper 1, at pp. 4-5).
`
`Attorney Docket No. 2993.003
`
`
`
`
`Ground 1 expressly relies on Background Solutions, the video demonstration “made
`
`publicly accessible on www.backgroundsolutions.com, no later than November 23,
`
`2009.” Id. (emphasis added). As such, the Petition itself is unambiguous: Ground 1
`
`relies upon the 2009 Video. Apple, Inc. v. Memory Integrity, LLC, IPR2015-00161
`
`(PTAB April 9, 2015) (Paper 14, at p. 6). Ex. 1009 was filed with the Petition to
`
`corroborate the authenticity and timing of the 2009 Video by including: (1)
`
`PowerPoint slides that became the 2009 Video once narration was added (Ex. 1021);
`
`and (2) a compilation of the screenshots of the 2009 Video used in the charts for
`
`Ground 1 (Ex. 1022). As such, the Petitioner informed PO that the relied-upon
`
`Background Solutions reference was the 2009 video. Given all of the references to
`
`the 2009 Video in the Petition, it should have been readily apparent to PO that the
`
`wrong video file had been marked and uploaded as Exhibit 1002. Petitioner did not
`
`become aware of its error until reading PO’s Preliminary Response. As the Board
`
`has ordered under similar circumstances in Netflix, Inc. v. Copy Protection LLC,
`
`IPR2015-00921 (PTAB July 30, 2015) (Paper 19), Petitioner concedes that PO
`
`should be given a supplemental preliminary response to substantively address the
`
`teachings of the 2009 Video.Accordingly, Guardian requests permission to correct
`
`its clerical mistake in the Petition pursuant to 37 C.F.R. § 42.104(c) by substituting
`
`Ex. 1002 with the 2009 Video, submitted herewith as Ex. 1027.
`
`
`
`5
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`

`

`Case No. IPR2020-00031
`Patent 10,043,188
`
`
`
`Attorney Docket No. 2993.003
`
`
`
`
`Date: February 13, 2020
`
`
`
`
`
`Respectfully submitted,
`
`/Jordan A. Sigale/
`
`By:
`Jordan A. Sigale, Reg. No. 39,028
`Lead Counsel for Petitioner
`Dunlap Codding, P.C.
`P.O. Box 16370
`Oklahoma City, OK 73113
`Telephone: (405) 607-8600
`Facsimile:
`(405) 607-8686
`
`
`
`
`
`
`
`6
`
`

`

`Case No. IPR2020-00031
`Patent 10,043,188
`
`
`Attorney Docket No. 2993.003
`
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`
`
`Exhibit No.
`
`Description
`
`Ex. 1001
`
`U.S. Patent No. 10,043,188 (Miller)
`
`Ex. 1002
`
`A printed publication, which is a video demonstration entitled
`“Background Assistant”
`
`Ex. 1003
`
`U.S. Patent Pub. No. 2005/0033633 (LaPasta et al.)
`
`Ex. 1004
`
`A printed publication, which is the POBITS online User Manual
`and Technical Guide, dated 02-01-2011 and bearing a 2010
`copyright date
`
`Ex. 1005
`
`U.S. Patent No. 9,070,098 (Miller)
`
`Ex. 1006
`
`Prosecution History for U.S. Patent No. 10,043,188
`
`Ex. 1007
`
`Prosecution History for U.S. Patent No. 9,070,098
`
`Ex. 1008
`
`Patent Owner Proposed Claim Constructions from Related
`Litigation
`
`Ex. 1009
`
`Declaration of Tom Ward
`
`Ex. 1010
`
`Background Solutions Website Products Page
`
`Ex. 1011
`
`Public Safety Information Bureau Website - Safetysource.com
`
`Ex. 1012
`
`Background Solutions Website Services Page
`
`Ex. 1013
`
`Expected Practices in Background Checking: Review of the
`Human Resource Management Literature
`
`Ex. 1014
`
`Declaration of Kingsley Klosson
`
`Ex. 1015
`
`U.S. Patent Pub. No. 2008/0306750 (Wunder et al.)
`
`Ex. 1016
`
`CrimLink File History
`
`
`
`7
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`

`

`Case No. IPR2020-00031
`Patent 10,043,188
`
`
`Attorney Docket No. 2993.003
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`
`Ex. 1017
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`U.S. Patent No. 6,904,407 (Ritzel)
`
`Ex. 1018
`
`CandidateLink File History
`
`
`
`Ex. 1019
`
`Patent Owner’s Infringement Contentions from Related
`Litigation
`
`Ex. 1020
`
`ADP Website - Identity Validations
`
`Ex. 1021
`
`Background Solutions PowerPoint Presentation
`
`Ex. 1022
`
`Ex. 1023
`
`Compilation of Background Solutions printed publication time-
`stamped screenshots
`
`Internet Archive Captures of
`http://www.backgroundsolutions.com/index.html
`
`Ex. 1024
`
`Background Assistant™ Product Brochure
`
`Ex. 1025
`
`Listing of Challenged Claims
`
`Ex. 1026
`
`Transcript of 2.6.20 Telephonic Hearing
`
`Ex. 1027
`
`Ex. 1028
`
`2009 Background Solutions Video Demonstration (“2009
`Video”)
`
`Declaration of Jordan A. Sigale In Support of Petitioner’s
`Motion to Correct a Clerical Mistake in the Petition Under 37
`C.F.R. Motion for Pro Hac Vice Admission § 42.104(c)
`
`Ex. 1029
`
`Background Solutions Invalidity Chart 1
`
`Ex. 1030
`
`Background Solutions Invalidity Chart 2
`
`
`
`
`
`
`
`8
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`

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`Case No. IPR2020-00031
`Patent 10,043,188
`
`
`Attorney Docket No. 2993.003
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify pursuant to 37 C.F.R. §§ 42.6(e) that on this 11th day of
`
`February, a true and correct copy of the foregoing materials:
`
`● Motion to Correct a Clerical Mistake in the Petition Under 37 C.F.R. §
`
`42.104(C)
`
`were served via electronic mail on the Lead and Back-Up Counsel for Patent
`
`Owner:
`
`Richard D. Mc Leod (Reg. No. 46,921) Kurt Rylander (Reg. No. 43,897)
`
`Mc Leod Law LLC
`
`RYLANDER & ASSOCIATES PC
`
`PO Box 99
`
`406 W. 12th St.
`
`Woodland, WA 98674
`
`Vancouver, WA 98660
`
`law@rickmcleod.com
`
`rylander@rylanderlaw.com
`
`
`
`Respectfully submitted,
`
`
`
`/Jordan A. Sigale/
`Jordan A. Sigale, Reg. No. 39,028
`Dunlap Codding, P.C.
`P.O. Box 16370
`Oklahoma City, OK 73113
`Telephone: (405) 607-8600
`Facsimile:
`(405) 607-8686
`
`Lead Counsel for Petitioner
`
`9
`
`Date: February 13, 2020
`
`
`
`
`
`
`
`
`
`

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