IPR2020-00031
`Patent 10,043,188 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner,
`
`v.
`
`TYLER MILLER
`Patent Owner.
`____________
`
`
`Case IPR2020-00031
`Patent 10,043,188 B2
`_____________________________
`
`
`
`PATENT OWNER’S OPPOSITION TO
`MOTION TO CORRECT CLERICAL ERROR
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`
`
`
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`
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`Patent 10,043,188 B2
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner,
`
`v.
`
`TYLER MILLER
`Patent Owner.
`____________
`
`
`Case IPR2020-00031
`Patent 10,043,188 B2
`_____________________________
`
`
`
`PATENT OWNER’S OPPOSITION TO
`MOTION TO CORRECT CLERICAL ERROR
`
`
`
`
`
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`
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`IPR2020-00031
`Patent 10,043,188
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`TABLE OF AUTHORITIES
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`Cases
`Ivantis Inc., v Glaukos Corp, IPR2018-01180 (PTAB Dec. 6, 2018
`(Paper 14) ................................................................................................ 1, 2, 3, 4
`Netflix, Inc. . Copy Protection, LLC, IPR2015-00921 (PTAB July 30,
`2015) (Paper 19) .................................................................................................. 5
`Nuna Baby Essentials, Inc. v. Britax Child Safety, Inc., IPR2018-
`01683 (PTAB Dec. 18, 2018) ( Paper 11). .......................................................... 1
`Plaid Tech. Inc. v Yodlee, Inc., IPR2016-00275 (PTAB June 9, 2016)
`(Paper 15)......................................................................................................... 4, 5
`SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) ...................................................... 5
`Wi-fi One LLC v. Broadcom Corp, 878 F.3d 1364 (Fed. Cir. 2018) (en
`banc). ................................................................................................................... 5
`
`Statutes
`35 U.S.C. § 315(b). ............................................................................................. 1, 5
`
`Rules
`37 C.F.R. § 42.104(c) .............................................................................................. 1
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`Patent Owner’s Opposition to Motion to Correct Clerical Error
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`Page i
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`IPR2020-00031
`Patent 10,043,188
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`GAT’s motion should be denied because GAT failed to prove a clerical error
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`occurred, and its late action is time barred by 35 U.S.C. § 315(b).
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` GAT’S ERROR IS NOT CLERICAL OR INADVERTENT
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`Ivantis Inc., v Glaukos Corp.1 list four non-exclusive factors for evaluating a
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`Motion under 42.104(c), not three. Nearly every factor favors denial here.
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`A.
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`Factor 1: Discovered Reviewing Miller’s Response
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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).
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`Despite listing five counsel of record, not one discovered the alleged error: 1)
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`on the day of filing, 2) after receiving a notice that at least one exhibit was
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`defective (see Paper No. 5 at 2), or 3) prior to Patent Owner’s Preliminary
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`Response (“POPR”) more than three months later, in dereliction of their
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`obligations to review filings. GAT’s failure favors denial. Ivantis at 10-11.
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`B.
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`Factor 1: Nature of the Error
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`The proposed replacement of a non-prior art exhibit with an alleged prior art
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`exhibit is an error of law, not a clerical error. Ivantis at 10-11. Ivantis’ petition
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`expressly referred to AU 199876197 as “the application” (Ivantis at 7), but Ivantis
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`also referred to, uploaded, and served the (non-prior art) B2 patent. Despite cite
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`1 IPR2018-01180, Paper # 14 (denying substitution of non-prior art exhibit).
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`Patent Owner’s Opposition to Motion to Correct Clerical Error
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`Page 1
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`IPR2020-00031
`Patent 10,043,188
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`checking before filing by the attorney, the error was not caught. Ivantis at 9.
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`GAT alleges it erroneously uploaded and did not rely upon Ex. 1002. The
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`Sigale Declaration in support of its motion includes a screen shot (Ex. 1028, ¶ 9)
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`displaying multiple video files (actually six, five of which are FLV files), as well
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`as a screen shot (Ex. 1028 ¶ 6) showing a 2015 video titled “Video Prepared to
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`Demonstrate Correspondence Generation,” which corresponds precisely to the only
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`feature described in Ward’s testimony. Ex. 2025, ¶ 20. Ward does not state a
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`publication date for any IPR exhibit. Ex. 1009. From Miller’s view, GAT used Ex.
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`1002 as a futile attempt to characterize the a software system as prior art. POPR at
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`12; cf. Ex. 1029, p. 1, title, line 1. Miller and the Board are not archaeologists
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`scouring the (litigation) record to divine GAT’s intent. Ivantis at 13.
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`C.
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`Factor 1: Adequacy of the Explanation
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`GAT’s explanation is conclusory, inadequate, and warrants denial.
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`During the meet and confer on this motion, Evan Talley stated that he would
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`be the primary declarant of 2-3 people involved in the process because he was the
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`person that made the alleged error. Ex. 2024, ¶ 24. When deposing declarants was
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`raised, he became defensive. Id. GAT presented no testimony from him.
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`Mr. Sigale asserts a legal conclusion (inadvertent error) without providing
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`the actual facts. Cf. Ivantis at 6 (testimony of Fishman/Smith). Sigale “supervised”
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`the IPR from Chicago, without identifying who performed specific tasks or critical
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`Patent Owner’s Opposition to Motion to Correct Clerical Error
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`Page 2
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`IPR2020-00031
`Patent 10,043,188
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`dates. Cf. Ex. 1024, ¶ 25. Rather, he hints that GAT, OKC, and his firm acted as a
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`coordinated entity, but GAT is not a defendant, nor is OKC a petitioner. At the
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`very least, Mr. Sigale does not explain: 1) when the IPR drafting began, 2) when
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`folder was created, 3) who put documents in the folder and 4) when, 5) who had a
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`duty to review the content prior to uploading, and 6) why the review failed.
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`“When it came time to” is not a date. See Ex. 1028, ¶ 17.
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`Moreover, the “IPR Directory” does not appear to reflect exhibits actually
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`uploaded. Many of the files listed as exhibits have “last modified” dates in June or
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`August 2019, but the metadata of the files in E2E is October 10, 2019, likely when
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`exhibit footers were added. See e.g., Ex. 2024, ¶¶ 21-23. Thus, it appears there is
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`yet at least one more undisclosed step in Dunlap’s process.
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`D.
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`Factor 4: Impact on the Proceeding Strongly Favors Denial
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`GAT ignored this factor entirely. Ex. 1002 is conclusively not prior art, and
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`this indisputably affects whether trial might be instituted. Ivantis at 14-15. Again,
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`it now appears that Ex. 1002 was modified in 2015. Cf. Ex. 2023 (2012 creation).
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`Sigale’s Dec. suggests that Ex. 1024 (“Background Assistant Brochure”) was last
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`modified in May 2011 undermining its prior art claim. See Ex. 1028, ¶ 6, fig.
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`Further, GAT concedes its motion necessitates a Supplemental Preliminary
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`Response, which places time pressure on the Board and Miller (as well as costs).
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`E.
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`Factor 3: Prejudice to Miller Strongly Favors Denial
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`Patent Owner’s Opposition to Motion to Correct Clerical Error
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`Page 3
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`IPR2020-00031
`Patent 10,043,188
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`Miller is prejudiced by GAT’s motion in many ways, including denial of its
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`statutory repose. Plaid Tech. Inc. v Yodlee, Inc., IPR2016-00275, Paper No. 15, p.
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`9. Any prejudice to GAT is irrelevant, because GAT waited until the last few
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`hours to file the IPR. Miller is also prejudiced by the failure of GAT’s five
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`attorneys to raise the issue prior to the POPR. “Patent Owner, in formulating its
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`Preliminary Response, should be able to rely on the Petition and accompanying
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`exhibits as being correct.” Ivantis at 13. Miller relied upon the IPR as filed and
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`served and expended substantial time and money debunking the authenticity of
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`GAT’s primary references: Ex. 1002, 1004. See POPR at 14-19, 29-33.
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`Miller is prejudiced by GAT’s litigation “conduct,” particularly if GAT benefits
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`from litigation activity by a non-party, OKC. Ex. 2024, ¶¶ 3-11.
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`F. GAT’s Overall Conduct Reflects Bad Faith/Negligence
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`While GAT acted shortly after Miller’s POPR was filed, it’s overall conduct
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`reflects a disturbing pattern. As above, GAT wants all the benefits of the OKC
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`Litigation, but none of the liabilities. It uses OKC as a straw man to avoid being
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`named as a defendant and to resist discovery. Id. Further, GAT requested
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`permission to file a PHV motion for Mr. Talley during the conference call with the
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`Board, even though permission was provided in October 2019. See Paper #5 at 2.
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`In sum, GAT’s conduct does not reflect good faith, and this constitutes an
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`additional consideration warranting denial of it motion.
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`Patent Owner’s Opposition to Motion to Correct Clerical Error
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`Page 4
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`IPR2020-00031
`Patent 10,043,188
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` BINDING CASE LAW OVERRIDES PRIOR PANELS
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`GAT’s request is premised on non-binding decisions that now conflict with
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`binding precedent re § 315(b). Despite GAT’s plea to third party invalidity
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`contentions, GAT waited until the final hours to act; deliberately incurring
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`attendant risks. Plaid at 9. “The time-bar is not about preliminary procedural
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`requirements that may be corrected if they fail to reflect real world facts, but about
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`real world facts that limit the agency’s authority to act under the IPR scheme.” Wi-
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`fi One LLC v. Broadcom Corp, 878 F.3d 1364, 1374 (Fed. Cir. 2018) (en banc).
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`Netflix (cited by GAT) involved two substantially identical (and publicly
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`available) prior art references, but it also glossed over petitioner’s failure to
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`comply with 35 U.S.C. § 312(a). Ex. 1027 is not publicly available, but Wi-fi One
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`now forecloses that kind of correction. Indeed, § 312(a)(5) unambiguously
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`requires that the petitioner provide copies of all patents and publications relied
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`upon to the patentee. The “petitioner” is not an indemnitee or RPI. “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). Finally, Plaid
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`distinguished many cases, including ABB (cited by GAT), where petitioner had
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`timely and correctly served the Patentee with all documents and exhibits. Plaid at
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`12-13. For the above reasons, GAT’s Motion should be denied.
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`Patent Owner’s Opposition to Motion to Correct Clerical Error
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`Page 5
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`Dated: February 20, 2020
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`IPR2020-00031
`Patent 10,043,188
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`Respectfully submitted,
`
`
`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 Opposition to Motion to Correct Clerical Error
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`Page 6
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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 20, 2020, a complete copy of
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`Patent Owner’s Opposition to GAT’s Motion to Correct Clerical Error and support
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`exhibits were served 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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