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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`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
`CEDE JURISDICTION FOR CORRECTION OF PRIORITY CLAIM
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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
`
`________________
`
`
`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
`CEDE JURISDICTION FOR CORRECTION OF PRIORITY CLAIM
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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. opposes Patent Owner’s
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`(“PO”) Motion to Cede Jurisdiction for Correction of Priority Claim (Paper 9). The
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`Board should refrain from ceding its jurisdiction in this case because, after filing of
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`an IPR proceeding, the Board is vested with the exclusive jurisdiction to manage its
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`resources, including the manner in which matters involving the same patent are to
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`proceed. Because PO did not seek correction until after the commencement of this
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`proceeding, any granted correction will not apply retroactively, meaning it will not
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`apply to this proceeding. As such, the Board should deny PO’s Motion to Cede
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`Jurisdiction.
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`II. DISCUSSION
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`A. Following Commencement of an IPR, the Board Has the Exclusive
`Authority to Manage Its Resources and Proceedings
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`During pendency of an inter partes review, the Director has authority to
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`determine the manner in which the inter partes review, and any other proceedings,
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`including review of a request for certificate of correction is to proceed. 35 U.S.C. §
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`315(d). This authority has been delegated to the Board. See 37 C.F.R. § 42.3 (the
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`Board may exercise exclusive jurisdiction within the Office over every involved
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`patent during the proceeding); id. at § 42.122 (stating that where another matter
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`involving the patent is before the Office, “the Board may during the pendency of the
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`1
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`Case No. IPR2020-00031
`Patent 10,043,188
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`inter partes review enter any appropriate order regarding the additional matter
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`Attorney Docket No. 2993.003
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`including providing for the stay, transfer, consolidation, or termination of any such
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`matter”). The Board has jurisdiction beginning with the filing of an IPR petition. See
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`37 C.F.R. § 42.3 (Board has jurisdiction during “proceeding”); and id. at § 42.2
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`(defining “proceeding” as “begin[ning] with the filing of a petition for instituting a
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`trial”). Therefore, once an IPR petition has been filed, the Board may exercise
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`jurisdiction over a request for a certificate of correction, and may stay the request,1
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`“thereby avoiding potentially conflicting outcomes between proceedings before
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`different authorities with the Office, such as a decision by the Certificates of
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`Correction Branch on a request for a certificate of correction and a decision by the
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`Board in an inter partes review.” Emerson Electric Co. v. SIPCO, LLC, IPR2016-
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`00984 (PTAB Jan. 24, 2020) (Paper 52 at 22).
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`1 In particular, the Board determines “whether there is sufficient basis supporting
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`Patent Owner’s position that the mistake may be correctable.” Honeywell
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`International, Inc. v. Arkema, Inc., 939 F.3d 1345, 1349 (Fed. Cir. 2019) (internal
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`citations omitted). Thus, Honeywell did not hold that the patent owner should be
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`summarily given a Certificate of Correction, just that the patent owner could ask for
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`leave to request correction. Id.
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`2
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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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`B. The Board Should Refrain from Ceding Its Exclusive Jurisdiction
`Because the Requested Correction Will Not Apply to this Proceeding
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`Petitioner has a very compelling reason for asking the Board not to cede
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`jurisdiction: any correction obtained by PO has no retroactive effect on this
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`proceeding. In Emerson Electric Co. v. SIPCO, LLC, IPR2016-00984 (PTAB Jan.
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`24, 2020) (Paper 52 at 17-21), the Board determined that a certificate of correction
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`(35 U.S.C. § 255) does not have retroactive effect upon already commenced
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`proceedings. The operative portion of § 255 states: “Such patent, together with the
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`certificate, shall have the same effect and operation in law on the trial of the actions
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`for causes thereafter arising as if the same had been originally issued in such
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`corrected form” (emphasis added).
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`The Board further found that affording a certificate of correction only
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`prospective application is consistent with the interpretation of §§ 254 and 256, “the
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`sister provisions of § 255,” pointing to Southwest Software, Inc. v. Harlequin Inc.,
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`226 F.3d 1280 (Fed. Cir. 2000). Accordingly, as PO did not even begin the process
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`of seeking correction until after Petitioner commenced this IPR, any correction will
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`not apply to this proceeding. For this reason alone, the Board should deny PO’s
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`motion to cede jurisdiction.
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`C. PO’s Delay In Seeking Correction Significantly Prejudices Petitioner
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`Notwithstanding that any correction obtained by PO will not apply to this
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`3
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`Case No. IPR2020-00031
`Patent 10,043,188
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`proceeding, PO’s two-plus month delay in seeking to correct the priority claim of
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`Attorney Docket No. 2993.003
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`the ’188 Patent prejudices Petitioner. PO was made aware of the priority issue no
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`later than August 8, 2019 when OKC served its invalidity and non-infringement
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`contentions (Ex. 1032, at p. 2). It is somewhat surprising that PO now argues that
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`“neither GAT nor OKC identified any specific regulation involving the ADS, and
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`the issue was not understood until October 11, 2019” by PO until “reviewing the
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`IPR Petition.” (Paper 9, at p. 4). It’s unclear exactly what information in the Petition
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`made PO realize the existence of the priority defect only upon reading the Petition
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`as the invalidity contentions OKC served on PO describe the defect in detail:
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`(Compare Ex. 1032, at p. 2 with Paper 1, the Petition, at p. 6, which includes less
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`detail relating to the priority defect issue.)
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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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`Despite the notice provided by the invalidity contentions on August 8, 2019,
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`PO delayed seeking correction of priority until after the commencement of this
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`proceeding on October 10, 2019 (Ex. 1033), a delay of at least two months. PO’s
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`reasons for delay are unknown. However, had PO sought correction in the two
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`months between service of the invalidity contentions and the filing of the IPR
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`Petition, Petitioner would have thought twice before drafting and submitting Ground
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`2 of the Petition, which relies on Ex. 1004 as the primary reference. As PO notes in
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`its Motion, it will attempt to eliminate Ex. 1004 as prior art if it is able to obtain the
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`requested priority correction. Paper 9, pp. 2–3. As evidenced by the invalidity
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`contentions, Petitioner could have raised alternative grounds in its Petition if PO had
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`timely sought correction. Accordingly, the Board should deny PO’s Motion to Cede
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`Jurisdiction for Correction of Priority Claim.
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`Date: February 20, 2020
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`Respectfully submitted,
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`
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`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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`5
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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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`6
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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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`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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`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: IPR Petition and Exhibit
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`Ex. 1032
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`The City of Oklahoma City’s Non-Infringement and Invalidity
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`Contentions
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`Ex. 1033
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`Correspondence from PO’s Counsel re: request for authorization
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`to seek permission to request correction
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`8
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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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`
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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 Patent Owners’ Motion to Cede Jurisdiction for Correction of
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`Priority Claim
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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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`9
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`Date: February 20, 2020
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