`Filed on behalf of: MG Freesites Ltd
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`Filed: February 8, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MG FREESITES LTD,
`Petitioner
`
`v.
`
`SCORPCAST, LLC,
`Patent Owner
`________________
`
`IPR2021-00514
`U.S. Patent No. 10,205,987
`________________
`
`
`
`PETITIONER’S NOTICE FOR FILING TWO PETITIONS
`
`
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`
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`
`
`In filing two IPR petitions of U.S. Patent No. 10,205,987 (“’987 patent”),
`
`Petitioner MG Freesites Ltd hereby explains, pursuant to the Consolidated Trial
`
`Practice Guide (“CTPG”), why both petitions should be instituted.
`
`1) Ranking of the Petitions
`
`Petitioner ranks the petitions in the following order, as required:
`
`Rank
`1
`
`2
`
`Petition
`IPR2021-00514
`(“First Petition”)
`IPR2021-00515
`(“Second Petition”)
`
`Challenged Claims
`1-5, 7, 11, 12, 15-20,
`23-27, and 30
`1-5, 7, 11, 12, 15-20,
`23-27, and 30
`
`Primary Reference
`U.S. Patent No. 7,735,101
`(“Lanza”)
`U.S. Patent Publication No.
`2009/0300475 (“Fink”)
`
`2) Explanation of the Differences between the Petitions
`
`While each petition, on its own, establishes unpatentability of the challenged
`
`claims, the petitions rely on different primary references: Lanza and Fink.
`
`As encouraged by the CTPG, the following table indicates the bases for
`
`unpatentability within each petition, by claim (independent claims in boldface)1:
`
`Claim(s)
`1, 2, 11, 12, 15-18,
`20, 23, 25, 26, 30
`
`First Petition
`§ 102 – Lanza
`
`Second Petition
`§ 102 – Fink;
`§ 103 – Fink + Geer
`
`
`1 The table references U.S. Patent No. 7,809,802 (“Lerman”), U.S. Patent
`
`Publication Nos. 2011/0112915 (“Geer”), 2012/0166532 (“Juan”), 2007/0263984
`
`(“Sterner”), and 2013/0004138 (“Kilar”), and a book authored by Michael Miller
`
`(“Miller”).
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`- 1 -
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`
`
`
`3
`
`4
`
`5
`
`7
`
`19
`
`24
`
`27
`
`§ 103 – Lanza + Juan
`
`§ 103 – Lanza + Sterner
`
`§ 103 – Lanza + Lerman
`
`§ 103 – Lanza + Miller
`
`§ 103 – Lanza + Sterner
`
`§ 103 – Lanza + Kilar
`
`§ 103 – Lanza + Lerman
` + Sterner
`
`§ 102 – Fink;
`§ 103 – Fink + Geer
`§ 102 – Fink;
`§ 103 – Fink + Geer
`§ 103 – Fink (or Fink + Geer)
` + Lerman
`§ 103 – Fink (or Fink + Geer)
` + Miller
`§ 103 – Fink (or Fink + Geer)
` + Sterner
`§ 103 – Fink (or Fink + Geer)
` + Kilar
`§ 103 – Fink (or Fink + Geer)
` + Lerman + Sterner
`
`
`Lanza and Fink describe different systems and are not duplicative. As
`
`indicated on their faces, Lanza is assigned to Cisco Technology, Inc., while Fink is
`
`assigned to Google Inc.
`
`Additionally, while the same secondary references are applied across
`
`petitions to establish obviousness of the dependent claims, the analyses underlying
`
`such obviousness combinations differ, given that Lanza and Fink are different in
`
`themselves. For example, while both petitions present compelling obviousness
`
`rationales for claim 24 (which recites a user specifying a communication channel
`
`from a set of communications channels comprising a social network service and a
`
`microblogging service), Lanza includes a different emphasis, relative to Fink,
`
`regarding different video-sharing communication channels (e.g., blogging, email,
`
`- 2 -
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`
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`web pages). Conversely, while both petitions present compelling obviousness
`
`rationales for claim 19 (which recites requiring users to complete a log-in process
`
`in order to view a video), Fink includes a different emphasis, relative to Lanza,
`
`regarding user authentication. Therefore, material differences exist between the
`
`Lanza and Fink grounds.
`
`3) Justification for Instituting Both Petitions
`
`a) Large Number of Claims in Litigation; Diverging Claim Scope
`
`Patent Owner has asserted the ’987 patent (and seven others) against
`
`Petitioner in a parallel litigation, Scorpcast, LLC dba HaulStars v. MG Freesites
`
`Ltd, Case No. 6-20-cv-00877 (W.D. Tex).
`
`The Board recognizes that multiple petitions challenging the same patent
`
`may be necessary “when the patent owner has asserted a large number of claims in
`
`litigation.” CTPG at 59. That is the case here, where Patent Owner asserted 20
`
`’987 claims in the litigation (the same as those being challenged in IPR).
`
`Claim length is also relevant. The challenged ’987 claims alone total over
`
`2,400 words. The independent claims are lengthy—e.g., claim 1 contains 20
`
`limitations (preamble excluded), occupying an entire ’987 patent column. Despite
`
`the petitions adopting efficiency measures, e.g., cross-referencing, the petitions’
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`comprehensive analyses are necessarily likewise lengthy. See Intel Corp. v. Tela
`
`Innovations, Inc., IPR2019-01520, Paper 14 at 15-16 (Mar. 11, 2020) (“one
`
`- 3 -
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`
`
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`petition was not sufficient to challenge the claims of the” patent, in part because
`
`the challenged claims were “detailed and lengthy” and totaled over 3,000 words).
`
`The nature of the dependent claims is also relevant. Rather than aligning
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`with each other from respective independent claims, the dependent claims
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`currently asserted by Patent Owner in the litigation encompass a multitude of
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`different limitations—of the 17 dependent claims, the only claims having
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`effectively identical limitations are claims 25 and 30. Even though these
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`dependent claims are anticipated by or obvious over the cited references as set
`
`forth in the petitions, Petitioner’s complete analyses of these dependent claims are
`
`still necessarily lengthy, given the dedicated discussions required to fully address
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`individual dependent claims.
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`Furthermore, Petitioner’s Fintiv section alone occupies over 1,800 words.
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`As a result of these circumstances and the 14,000 word limit per petition,
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`two petitions were necessary to present these unpatentability grounds.
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`b) Substantial Overlap with Other Asserted and IPR-Challenged Patents
`
`Although the CTPG cautions against parallel petitions that “place a
`
`substantial and unnecessary burden on the Board and the patent owner,” CTPG at
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`59, any additional burden is minimal.
`
`First, the two petitions rely on the same five secondary references, thereby
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`diminishing the burden. Weber, Inc. v. Provisur Techs., Inc., IPR2019-01465,
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`- 4 -
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`
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`Paper 10 at 10 (Feb. 20, 2020) (noting that “presence of six common references in
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`the two petitions cuts against exercising discretion to deny the … Petition because
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`the overlap in the two petitions diminishes the burden on the Board and the parties
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`when addressing grounds 2–7 in the two petitions,” and instituting both petitions).
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`Second, despite many of the ’987 patent claims lacking substantial overlap
`
`internally, the claims do overlap heavily with the claims of other IPR-challenged
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`patents, namely U.S. Patent Nos. 10,506,278 (’278) and 10,560,738 (’738). Each
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`of Petitioner’s ’278 (IPR2021-00516) and ’738 (IPR2021-00517) petitions presents
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`one set of Lanza grounds and one set of Fink grounds. Any additional burden
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`would be substantially diminished upon institution of even one of the ’278 or ’738
`
`IPRs, which would result in instituting both Lanza and Fink grounds presented
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`therein, under SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`
`Such overlap weighs heavily towards instituting both ’987 petitions.
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`4) Conclusion
`
`Ultimately, an overwhelming reason the First and Second Petitions could not
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`have been presented as a single petition is Patent Owner’s deliberate decision to
`
`assert a large number of distinct limitations in the litigation. Petitioner should not
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`be foreclosed from presenting both of its lines of unpatentability grounds simply
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`because of Patent Owner’s litigation tactics.
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`
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`- 5 -
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`
`
`
`DATED: February 8, 2021
`
`
`
`
`
`Respectfully submitted,
`
`
`By: /Frank M. Gasparo/
`Frank M. Gasparo (Reg. No. 44,700)
`Attorney for Petitioner
`VENABLE LLP
`1270 Avenue of the Americas, 24th Floor
`New York, NY 10020
`T 212-370-6273
`F 212-307-5598
`fmgasparo@Venable.com
`
`
`- 6 -
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this date, a true and correct copy of the foregoing
`
`Petitioner’s Notice For Filing Two Petitions was served via Federal Express
`
`Overnight to the following address:
`
`
`Correspondence Address of Record for U.S. Patent No. 10,205,987
`
`
`Knobbe Martens Olson & Bear LLP
`2040 Main Street
`Fourteenth Floor
`Irvine, CA 92614
`
`DATED: February 8, 2021
`
`Respectfully submitted,
`
`
`By: /Frank M. Gasparo/
`Frank M. Gasparo (Reg. No. 44,700)
`Attorney for Petitioner
`VENABLE LLP
`1270 Avenue of the Americas, 24th Floor
`New York, NY 10020
`T 212-370-6273
`F 212-307-5598
`fmgasparo@Venable.com
`
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`- 7 -
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