Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner
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`v.
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`__________________
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`TYLER MILLER,
`Patent Owner
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`__________________
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`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
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`__________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`TERMINATE
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`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`
`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
`
`__________________
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`TERMINATE
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`Case No. IPR2020-00031
`Patent 10,043,188
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`I.
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`INTRODUCTION
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`Attorney Docket No. 2993.003
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`Petitioner Guardian Alliance Technologies, Inc. files this opposition to PO’s
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`Motion to Terminate (Paper 10).1 First, PO’s argument ignores the plain language
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`of 37 C.F.R. § 42.104(c) and the litany of proceedings relying thereon to grant
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`petitioners leave to correct clerical mistakes—even those pertaining to the basis of
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`the petition itself. Second, even if the Board denies Petitioner’s co-pending motion
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`(Paper 11) to substitute the 2009 video (relied upon and extensively cited in the
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`Petition) for the 2012 video inadvertently uploaded as Ex-1002, Ground 2 of the
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`Petition—which does not rely on the 2009 video—remains. Thus, precluding the
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`Board from terminating this proceeding on procedural grounds.
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`II. DISCUSSION
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`A. 37 CFR § 42.104(c) Explicitly Allows for Correction of a Petition After
`Statutory Deadline While Maintaining the Original Filing Date
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`PO incorrectly argues that the Petition was incomplete prior to the bar date
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`due to Petitioner’s clerical error in uploading the 2012 Video as Ex-1002 in place of
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`1 PO’s eleven purportedly material facts (Paper 10, pp. 1-2) are: (1) irrelevant to the
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`issues presented; and/or (2) inaccurate and, thus, disputed. As one example, Fact No.
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`5 states: “Mr. Talley sought permission to serve IPR documents on October 10,
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`2019, but did not identify GAT as petitioner.” (Id.). As the full email thread shows,
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`PO’s counsel of record consented to e-service of the IPR Petition. (Ex. 1031).
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`1
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`Case No. IPR2020-00031
`Patent 10,043,188
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`“the 2009 Video.” Clerical errors do not render petitions incomplete, nor do they
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`Attorney Docket No. 2993.003
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`require a change in the filing date. Syntroleum Corp. v. Neste Oil Oyj, IPR2013-
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`00178 (PTAB July 22, 2013) (Paper 21 at p. 4). 37 C.F.R. § 42.104(c).
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`PO’s Lead Counsel knows this because he has moved to correct an error in a
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`petition after the statutory bar date, while maintaining the original, pre-statutory-
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`deadline filing date. See, ABB Inc. v. ROY-G-BIV Corp., IPR2013-00063 (PTAB
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`Jan. 16, 2013) (Paper 21, at p. 10) (petitioner given leave to later file the petition—
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`inadvertently omitted from the original filing—without changing the filing date
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`because holding otherwise “would make the language [of 37 C.F.R. § 42.104(c) that]
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`‘[t]he grant of such a motion does not change the filing date of the petition’
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`superfluous.”) The Board has subsequently cited ABB in providing similar relief
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`from clerical errors. See, e.g., Cordelia Lighting, Inc. v. Cooper Lighting, LLC,
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`IPR2017-01860 (PTAB October 24, 2017) (Paper 13). The Board has also allowed
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`correction of a petition to include items that were neither served nor filed prior to
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`the statutory bar date, even after the filing of a POPR. See Netflix, Inc. v. Copy
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`Protection LLC, IPR2015-00921 (PTAB July 30, 2015) (Paper 19); Actifio, Inc. v.
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`Delphix Corp., IPR2015-00014, slip op. (PTAB Jan. 9, 2015) (Paper 9); and FedEx
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`Corp. v. IpVenture, Inc., IPR2014-00833, slip op. (PTAB Nov. 3, 2014) (Paper 12).
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`PO cites Nuna Nuna Baby Essentials, Inc. v. Britax Child Safety, Inc.,
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`IPR2018-01683 (PTAB Dec. 18, 2018) (Paper 11). However, its reliance on Nuna
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`Case No. IPR2020-00031
`Patent 10,043,188
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`is misplaced. In Nuna, the petitioner was alerted in a “Notice of Filing Date” that it
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`Attorney Docket No. 2993.003
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`had failed to submit any exhibits with its petition and given five business days to
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`correct the error. Id. at 1-2. It was not until after the five days had passed that the
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`petitioner finally sought to file the missing exhibits. Id. So, the petitioner also filed
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`a Motion to Excuse Late Filing, which the Board specifically denied because the
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`time had expired. Id. at 4. As such, the error in Nuna is not analogous to the clerical
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`error addressed in Petitioner’s co-pending Motion to Correct. Here, the Notice of
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`Filing Date (Paper 3) only alerted Petitioner that Ex. 1010, as filed with the Petition,
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`had been incorrectly labeled as Ex. 1003 and afforded Petitioner five business days
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`to correct the specifically noted defect. (Id. at p. 2). Petitioner timely corrected the
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`exhibit as acknowledged by the Board. (Paper 6).
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`The other significant difference between the instant case and Nuna is that in
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`Nuna it was the petitioner (not the patent owner) that filed the motion to dismiss its
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`own petition, unopposed by the patent owner. Nuna Baby Essentials, IPR2018-
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`01683 (Paper 13). Here, Petitioner opposes Patent Owner’s request for dismissal.
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`B. The Petition’s Reliance on the Correct Version of the Background
`Solutions Reference and the Additional Ground for Invalidity Raised
`in this Petition Preclude Termination of this Proceeding
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`As PO’s Motion points out, the purpose of requiring service within the one-
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`year statutory period is to provide a patent owner with timely notice that its patent is
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`subject to an IPR proceeding. Paper 10 at 3 (citing Tech. Inc. v. Yodlee, Inc.,
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`3
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`Case No. IPR2020-00031
`Patent 10,043,188
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`IPR2016-00275 (PTAB June 9, 2016) (Paper 15 at p. 9)). Petitioner asserts its
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`Attorney Docket No. 2993.003
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`October 10th filing and service on PO provided adequate notice that the ’188 Patent
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`was subject to an IPR proceeding, the bases for the Petition, and—through the
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`Petition’s specific citations to verbatim excerpts of all of the references upon which
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`it relies, specifically the printed publication Petitioner intended to upload as Ex.
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`1002—the multiple grounds for invalidity. (Paper 11 at p. 1).
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`Notwithstanding its notice of the specific grounds and citations and excerpts
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`relied upon, PO attempts to conflate Petitioner’s clerical error into a substantive,
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`complete substitution of a prior art reference for a non-prior art reference as occurred
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`in Ivantis, Inc. v. Glaukos Corp., IPR2018-01180 (PTAB Dec. 6, 2018) (Paper 14)
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`and Wavetamer Gyros, LLC v. Seakeeper, Inc., IPR2017-01931 (PTAB Jan. 9,
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`2018). In Ivantis, the Board reasoned that, “Not only was the incorrect reference
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`filed as an exhibit, but because this error permeate[d] the [p]etition . . . we do not
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`consider the magnitude and scope of the errors clerical or typographical.” (Ivantis,
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`Paper 14 at p. 15, emphasis added). Similarly in Wavetamer, “[w]e agree with Patent
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`Owner that citing the incorrect reference in a [p]etition is not an error that is
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`correctable under 37 C.F.R. § 42.104(c).” (Wavetamer, Paper 8 at 2, emphasis
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`added). Here, Petitioner cited the substance of the 2009 video throughout Ground 1
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`of the Petition. Petitioner never referred in the Petition to the 2012 video,
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`erroneously uploaded as Ex.1002.
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`4
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`The facts here are most closely aligned with Apple, Inc. v. Memory Integrity,
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`LLC, IPR2015-00161 (PTAB April 9, 2015) (Paper 14). In Apple, the petitioner
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`heavily relied upon a specific chapter of a book that was not uploaded with the
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`remainder of the reference due to a clerical error. Id. at 2, 5. The Board stated that
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`the petition and supporting declaration “include a reference to the chapter and
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`quotations from the relevant discussion on [the omitted pages]—thereby giving
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`Patent Owner notice, from the initial filing of each case, of [p]etitioner’s intent to
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`rely on [the omitted chapter] and [p]etitioner’s assertions regarding the relevant
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`teachings of the chapter.” Id. at 6, emphasis added. Here, Petitioner explicitly set
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`forth (and relied on) specific content from the 2009 Video in Ground 1—going so
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`far as to include timestamped screenshots with transcription of accompanying
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`narration and even attaching a compilation of the fifteen screenshots as a separate
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`Exhibit (Ex 1022). The Petition also attaches a powerpoint presentation (Ex. 1021)
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`that comprises the still frames of the 2009 Video and that, with narration added, was
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`played for background investigation seminar attendees. (Ex. 1009, at ¶¶ 6–7). So,
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`just through the screenshots (both those included in the claim charts in the Petition
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`and attached as Ex. 1022), transcription of the narration in the claim charts in the
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`Petition, and the powerpoint presentation slides (Ex. 1021), it can also be found that,
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`on October 10, 2019, Petitioner filed and served on PO “copies'' of the Background
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`Solutions printed publication relied upon in the Petition, as required by 35 U.S.C. §
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`5
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`Case No. IPR2020-00031
`Patent 10,043,188
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`312(a)(5). At the least, the substance of Ground 1 makes plain that Petitioner relies
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`Attorney Docket No. 2993.003
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`on the 2009 Video, not the 2012 Video initially erroneously uploaded as Ex. 1002.
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`Finally, PO’s arguments for termination are also insufficient as they only
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`target Ground 1 of Petitioner’s two-ground Petition.2 In Ivantis and Wavetamer all
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`grounds for invalidity relied specifically on the alleged incorrectly uploaded
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`reference. (Ivantis, Paper 1 at 3-4); (Wavetamer, Paper 1 at 7-8). Here, Ground 2 of
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`the Petition does not rely on the 2009 Video. (Paper 1, pp. 4–5). Even after SAS Inst.,
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`Inc. v. Iancu, 138 S. Ct. 1348 (2018), 35 U.S.C. Sec. 314(a) still “does not prohibit
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`institution if a petition fails to establish a reasonable likelihood of prevailing on all
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`challenged claims and all grounds ...” Nichia Corp. v. Document Sec. Sys., Inc.,
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`IPR2018-01165 (PTAB Dec. 11, 2018) (Paper 11 at 11-12). Therefore, even if
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`Ground 1 is denied institution (for any reason, including the clerical error relating to
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`Ex. 1002), the Board can still institute based solely on Ground 2.
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`2 Despite not even asking for authorization from the Board, PO’s Motion includes an
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`attack on the prior art status of the primary reference for Ground 2 (Ex. 1004). The
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`attack—which ignores the other submitted evidence (e.g., 2010 copyright date on
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`each page of Ex. 1004 and the declaration of the third-party author of Ex. 1004 (Ex.
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`1014))—at most, goes to the weight of the evidence that Ex. 1004 is prior art.
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`Respectfully submitted,
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`Date: February 20, 2020 By:/Jordan A. Sigale/
`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
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`7
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`PETITIONER’S UPDATED EXHIBIT LIST
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`Exhibit No.
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`Description
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`Ex. 1001
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`U.S. Patent No. 10,043,188 (Miller)
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`Ex. 1002
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`A printed publication, which is a video demonstration entitled
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`“Background Assistant”
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`Ex. 1003
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`U.S. Patent Pub. No. 2005/0033633 (LaPasta et al.)
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`Ex. 1004
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`A printed publication, which is the POBITS online User Manual
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`and Technical Guide, dated 02-01-2011 and bearing a 2010
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`copyright date
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`Ex. 1005
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`U.S. Patent No. 9,070,098 (Miller)
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`Ex. 1006
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`Prosecution History for U.S. Patent No. 10,043,188
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`Ex. 1007
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`Prosecution History for U.S. Patent No. 9,070,098
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`Ex. 1008
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`Patent Owner Proposed Claim Constructions from Related
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`Litigation
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`Ex. 1009
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`Declaration of Tom Ward
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`Ex. 1010
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`Background Solutions Website Products Page
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`Ex. 1011
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`Public Safety Information Bureau Website - Safetysource.com
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`Ex. 1012
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`Background Solutions Website Services Page
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`Ex. 1013
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`Expected Practices in Background Checking: Review of the
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`Human Resource Management Literature
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`Ex. 1014
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`Declaration of Kingsley Klosson
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`Ex. 1015
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`U.S. Patent Pub. No. 2008/0306750 (Wunder et al.)
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`Ex. 1016
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`CrimLink File History
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`Ex. 1017
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`U.S. Patent No. 6,904,407 (Ritzel)
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`Ex. 1018
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`CandidateLink File History
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`Ex. 1019
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`Patent Owner’s Infringement Contentions from Related
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`Litigation
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`Ex. 1020
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`ADP Website - Identity Validations
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`Ex. 1021
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`Background Solutions PowerPoint Presentation
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`Ex. 1022
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`Compilation of Background Solutions printed publication
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`timestamped screenshots
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`Ex. 1023
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`Internet Archive Captures of
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`http://www.backgroundsolutions.com/index.html
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`Ex. 1024
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`Background Assistant™ Product Brochure
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`Ex. 1025
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`Listing of Challenged Claims
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`Ex. 1026
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`Transcript of 2.6.20 Telephonic Hearing
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`Ex. 1027
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`2009 Background Solutions Video Demonstration (“2009
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`Video”)
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`Ex. 1028
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`Declaration of Jordan A. Sigale In Support of Petitioner’s
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`Motion to Correct a Clerical Mistake in the Petition Under 37
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`C.F.R. Motion for Pro Hac Vice Admission § 42.104(c)
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`Ex. 1029
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`Background Solutions Invalidity Chart 1
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`Ex. 1030
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`Background Solutions Invalidity Chart 2
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`Ex. 1031
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`Correspondence between Counsel re: service of IPR Petition
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`and Exhibits
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`10
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`CERTIFICATE OF SERVICE
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`I hereby certify pursuant to 37 C.F.R. §§ 42.6(e) that on this 20th day of
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`February, a true and correct copy of the foregoing materials:
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`● Opposition to PO's Motion to Terminate
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`were served via electronic mail on the Lead and Back-Up Counsel for PO:
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`Richard D. Mc Leod (Reg. No. 46,921) Kurt Rylander (Reg. No. 43,897)
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`Mc Leod Law LLC
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`RYLANDER & ASSOCIATES PC
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`PO Box 99
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`406 W. 12th St.
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`Woodland, WA 98674
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`Vancouver, WA 98660
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`law@rickmcleod.com
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`rylander@rylanderlaw.com
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`Respectfully submitted,
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`/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
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`Lead Counsel for Petitioner
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`Date: February 20, 2020
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