From:
`To:
`Cc:
`Subject:
`
`Date:
`
`Trials
`Hector, Bill; Trials
`Minghui Yang; Floyd Walker; Gasparo, Frank M.
`RE: IPR2019-00420, IPR2019-00421, IPR2019-00422 and IPR2019-00423 - Request for Reply to Patent Owner
`Preliminary Responses
`Monday, May 13, 2019 3:06:06 PM
`
`Dear Counsel,
`
`No conference call is necessary. Petitioner is authorized to file a three-page reply, due in each proceeding
`no later than May 21, 2019. Patent Owner is authorized to file a three-page sur-reply, due in each
`proceeding no later than May 29, 2019.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Hector, Bill <WAHector@Venable.com>
`Sent: Friday, May 10, 2019 7:31 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Minghui Yang <myang@hpylegal.com>; Floyd Walker <fwalker@hpylegal.com>; Gasparo, Frank
`M. <FMGasparo@Venable.com>
`Subject: IPR2019-00420, IPR2019-00421, IPR2019-00422 and IPR2019-00423 - Request for Reply to
`Patent Owner Preliminary Responses
`
`Honorable Members of the Board,
`
`We represent Petitioners, MindGeek USA, LLC, et al., (“Petitioners”) in the above-referenced
`IPRs and respectfully request permission to file a three-page reply to patent owner’s
`preliminary responses, based on the Board’s recent decision in Sling TV, LLC v. Realtime
`Adaptive Streaming, LLC, IPR2018-01331, Paper No. 9 (January 31, 2019) (attached). The
`Sling TV decision issued after Petitioners filed their IPRs. Patent Owner USC opposes.
`
`In its preliminary responses, Patent Owner only, University of Southern California (“USC”),
`contends that Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) bars
`Petitioners based on a prior litigation filed—not by the Patent Owner USC—but by its alleged
`exclusive licensee Preservation Technologies LLC. See Preservation Technologies, LLC v.
`MindGeek USA Inc., et al., 17-cv-08906 and 18-cv-03058; Preliminary Response, IPR2019-
`00420, Paper No. 6, 1-2 (Apr. 11, 2019) (USC asserting that Preservation Technologies LLC
`is the exclusive licensee); Preliminary Response, IPR2019-00421, Paper No. 6, 1-2 (May 6,
`2019) (same); Preliminary Response, IPR2019-00422, Paper No. 6, 1-2 (May 6, 2019) (same);
`Preliminary Response, IPR2019-00423, Paper No. 6, 1-2 (Apr. 15, 2019) (same).
`
`But after Petitioners filed petitions for IPR on December 11, 2018, the Board issued Sling TV
`on January 31, 2019, holding that Ҥ 315(b) . . . require[es] the Petitioner to be served with a
`
`

`

`patent owner’s complaint to trigger the one-year time bar.” Sling TV, 7 (emphasis in original).
`Patent Owner does not reference Sling TV in its preliminary responses, despite its
`persuasiveness, or explain why Petitioners are time barred when Patent Owner never filed a
`litigation against Petitioners.
`
`Because Patent Owner, USC, never served Petitioners in a district court action, Petitioners are
`not time barred under the Board’s new authority in Sling TV. Indeed, Patent Owner filed the
`preliminary responses on behalf of itself, not for Preservation Technologies, which further
`reinforces that Petitioners are not time barred. Out of fairness and given Petitioners and Patent
`Owner did not address Sling TV, Petitioners respectfully request a three-page reply. Replies
`are routinely granted in such situations. See NRT Technology Corp. v. Everi Payments Inc.,
`CBM2016-00080, Paper 9 (Sept. 29, 2016) (granting petitioner a three-page reply and patent
`owner a three-page sur-reply to address issues raised by a Fed. Cir. decision that issued after
`the Petition was filed).
`
`Petitioners and Patent Owner are available for a conference call Wednesday thru Friday of
`next week or at the Board’s convenience thereafter. We appreciate the Board’s courtesy and
`consideration.
`
`Respectfully submitted,
`Bill Hector
`
`Bill A. Hector, Esq. | Venable LLP
`t 415.653.3738 | f 415.653.3755 | m 303.594.5406
`101 California Street, Suite 3800, San Francisco, CA 94111
`
`WAHector@Venable.com | www.Venable.com
`
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