UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RPX CORPORATION
`
`Petitioner
`
`V.
`
`MACROSOLVE, INC.
`Patent Owner
`
`Case IPR2014-00140
`
`Patent 7,822,816
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
`
`REVIEW OF US. PATENT NO. 7,822,816
`
`CORRECTED
`
`

`

`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
`
`REVIEW OF US. PATENT NO. 7,822,816
`
`I.
`
`Introduction
`
`Macrosolve, Inc. ("Patent Owner", hereinafter), the owner of the entire interest in US.
`
`Patent No. 7,822,816 (the "'816 Patent" hereinafter, MACROLSOLVE—2001) hereby tenders its
`
`Preliminary Response to a “Petition for Inter Partes Review of US. Patent NO. 7,822,816”
`
`(Case PR20 14-00 140,
`
`the “Petition”, hereinafter) which was filed by RPX Corporation
`
`(hereinafter, “Requestor” or “Petitioner”) and mailed on or about November 11, 2013. As is
`
`explained in detail below, the ‘816 patent is currently being enforced in the Eastern District of
`
`Texas.
`
`It is believed that one or more parties that would be prohibited by statute from instituting
`
`the instant Inter Partes Review (“IPR”) if it were brought in their own names are operating
`
`through RPX to circumvent the statute. As such, the instant Petition should be dismissed or
`
`stayed until discovery can be obtained from RPX with respect to the real party or parties in
`
`interest in this case. Further, in the alternative, Patent Owner demonstrates below that there is no
`
`reasonable likelihood that Petitioner would prevail in establishing anticipation or obviousness of
`
`any of the challenged claims.
`
`II.
`
`Background of the Case
`
`Litigation Involving the Subject Patent
`
`The Patent Owner is currently enforcing its patent in the US. District Court for the
`
`Eastern District of Texas. The lead case is Macrosolve, Inc., vs. Antenna Sofiware, Inc., 6! a1,
`
`NO. 6:11-cv-287 MHS—KNM. Additionally, the following cases are currently pending:
`
`A/IacroSolve, Inc. v. Carlson Hotels, Inc. (6—13—cv-00666, 9/12/2013); A/IacroSolvc, Inc. v. Five
`
`

`

`Guys Enterprises, LLC (6-13-cv-00671, 9/12/2013);MacroSolve, Inc. v. Meetup, Inc. (6-13—cv-
`
`00674,9/12/2013); MacroSolve, Inc. v. Chipotle Mexican Grill, Inc. (6-13-CV-00667,9/12/2013);
`
`MacroSolve, Inc. v. Discover Financial Services, Inc. (6-13-cv-00669, 9/12/2013); MacroSolve,
`
`Inc. v, Home Box ()flice, Inc. (6-13-cv-00672, 9/12/2013); MacroSolve, Inc. v. Box, Inc. (6-13—
`
`cv-00665, 9/12/2013); MacroSolve, Inc. v. Dropbox, Inc. (6—13-CV- 00670,9/12/2013);
`
`MacroSolve, Inc. v. Mea’iaFire, LLC (6-13-cv-00673, 9/12/2013); MacroSolve, Inc. v. GEICO
`
`Insurance Agency, Inc. (6—12-cv-00074,2/ 17/2012); MacroSolve, Inc. v. newegg (6—12-cv—
`
`00046,1/30/2012); MacroSolve, Inc. v. American Airlines, Inc. (6—11- cv-00685,12/21/2011);
`
`MacroSolve, Inc. v. Antenna Software, Inc. (6-1 1~cv~00287,6/6/201 1).
`
`The following cases have been litigated and have all been dismissed for one reason or
`
`another: MacroSolve, Inc. v. Comcast Corp. (6-13-cv-00668, 9/12/2013); MacroSolve, Inc. v.
`
`Wyndham Hotel Group, LLC (6-13-cv-00675, 9/12/2013); MacroSolve, Inc. v. RueLaLa, Inc. (6-
`
`l3—cv-00206,2/26/2013); MacroSolve, Inc. v. Nordstrom, Inc. (6—13-cv-00204,2/26/2013);
`
`MacroSolve, Inc. v. Pandora Media, Inc. (6—13-cv-00205,2/26/2013); MacroSolve, Inc. v.
`
`Staples, Inc. (6-13—cv-00207, 2/26/2013); MacroSolve, Inc. v. The Kroger Co.(6-13-cv—00203,
`
`2/25/2013); MacroSolve, Inc. v. Gilt Groupe Holdings, Inc. (6-13-cv-00201,2/25/2013);
`
`MacroSolve, Inc. v. GameStop Corp. (6-13—cv-00200, 2/25/2013); MacroSolve, Inc. v. Kohl ’s
`
`Department Stores, Inc. (6—13-cv-00202, 2/25/2013); MacroSolve, Inc. v. Fandango, Inc. (6—13—
`
`cv-00199,2/25/2013); MacroSolve, Inc. v. Costco Wholesale Corp. (6-13-cv—00198,2/25/2013);
`
`MacroSolve, Inc. v. Super Shuttle International Corp. (6-12—cv-00978, 12/21/2012); MacroSolve,
`
`Inc. v. Walgreen Co. (6-12-cv-00975,12/2l/2012); MacroSolve, Inc. v. Home Depot USA, Inc.
`
`(6-12-cv-00976, l2/2l/2012); MacroSolve, Inc. v. C VS Pharmacy, Inc. (6-12—cv-
`
`00980,l2/2l/2012); MacroSolve, Inc. v. Skymall, Inc. (6—12—cv-00977, l2/2l/20l2); MacroSolve,
`
`

`

`Inc. v. Dollar Thrifty Automotive Group, Inc. (6—12-cv-00979,12/21/2012); MacroSolve, Inc. v
`
`.Sears Holdings Management Corp. (6-12-cv~00916, 12/4/2012); MacroSolve, Inc. v. Bed Bat/1 &
`
`Beyond, Inc. (6-12-cv-00915, 12/4/2012); MacroSolve, Inc. v. Starwood Hotels& Resorts
`
`Worldwide, Inc. (6-12— cv-00917,12/4/20]2); MacroSolve, Inc. v. Redbox Automated Retail, LLC
`
`(6—12-cv-00744,10/5/2012); MacroSolve, Inc. v. American Express Co. (6-12-cv-00743,
`
`10/5/2012); MacroSolve, Inc. v. Fareportal, Inc. (6—12-cv-00416,6/26/2012); MacroSolve, Inc. v.
`
`Target Corp. (6—12—cv-00418, 6/26/2012); MacroSolve, Inc. v. LQ Management LLC (6~12-cv-
`
`00417,6/26/2012); MacroSolve, Inc. v. Kayak Software Corp. (6-12—cv-00388, 6/19/2012);
`
`MacroSolve, Inc. v. Cumulus Media, Inc. (6—12—cv-00389,6/ 19/2012); MacroSolve, Inc. v. Jet
`
`Blue Airways Corp. (6-12- cv—00387, 6/19/2012); MacroSolve, Inc. v. JP Morgan Chase & Co.
`
`(6—12-cv-00384,6/18/2012); MacroSolve, Inc. v. LinkedIn Corp. (6-12-cv—00385, 6/18/2012);
`
`M’acroSolve, Inc. v. MovieTickets.com, Inc. (6-12-cv-00194, 3/23/2012); MacroSolve, Inc. v.
`
`Bank ofAmerica Corp. (6-12-cv-00193, 3/23/2012); MacroSolve, Inc. v. AOL Inc. (6-12-cv-
`
`00091,2/27/2012); MacroSolve, Inc. v. Inter-Continental Hotels Corp. (6—12-cv-00092,
`
`2/27/2012); MacroSolve, Inc. v .Marriott International, Inc. (6-12-cv-00076,2/ 17/2012);
`
`MacroSolve, Inc. v. Wal—Mart Stores, Inc. (6-12-cv-00047, 1/30/2012); MacroSolve, Inc. v.
`
`Facebook, Inc. (6—12—cv—00044,1/30/2012);MacroSolve, Inc. v. Hyatt Corp. (6-12—cv—00045,
`
`1/30/2012); MacroSolve, Inc. v. YELP/ INC. (6—12-cv—00048, 1/30/2012); MacroSolve, Inc. v.
`
`Hotels. com, LP. (6-11-cv-00690, 12/21/2011); MacroSolve, Inc. v. Priceline. com Inc. (6-11-cv-
`
`00691, 12/21/2011);MacroSolve, Inc. v. Hipmunk, Inc. (6-11-cv-00689, 12/21/2011);
`
`MacroSolve, Inc. v. UnitedAirLines, Inc. (6-11-cv—00694, 12/21/2011); MacroSolve, Inc. v.
`
`Continent‘alAirll'nes, Inc. (6-11-cv-00687,12/21/2011);MacroSolve, Inc. v. Avis RentA Car
`
`System, LLC(6-ll—cv-00686,12/21/2011);MacroSolve, Inc. v.Travelocity.com LP (6—1 l-cv-
`
`

`

`00693, 12/21/2011); MacroSo/ve, Inc. v. Southwest Airlines Co. (6-11—cv-00692, 12/21/2011);
`
`MacroSo/ve, Inc. v. The Hertz Corp. (6—11-cv—00688, 12/21/2011); MacroSo/ve, Inc. v. Whoop,
`
`Inc. (6-11—cv—00523, 10/3/2011); MacroSo/ve, Inc. v. AT&TInc. (6—11-cv—00490, 9/15/2011);
`
`MacroSo/ve, Inc. v. Canvas Solutions, Inc. (6-11—cv-00194,4/18/2011);andMacroSo/ve, Inc. v.
`
`Brazos Technology Corp. (6-1 1—cv—00101,3/4/201 1).
`
`Ex Parle Reexamination
`
`The ’816 Patent is also the subject of Ex Parle Reexamination No. 90/012,829 filed April
`
`3, 2013 by GEICO (“Reexamination”). A non—final Office action rejecting all claims was mailed
`
`in the reexamination on September 13, 2013. A response was filed by Patent Owner on or about
`
`November 13, 2013.
`
`Pending Patent Application
`
`A continuation application of the instant patent is currently pending in the US. Patent
`
`Office, to wit, App. No. 12/910,706. Currently, all claims in this application stand as rejected.
`
`A final rejection was mailed to Patent Owner/Applicant on or about April 9, 2013. A notice of
`
`appeal was filed on October 9, 2013.
`
`III.
`
`Summary of Arguments and Action Requested
`
`The instant IPR should be dismissed pending receipt of discovery in the Eastern District
`
`of Texas, which discovery is intended to determine the real parties of interest associated with the
`
`filing of the instant Petition. The ‘816 patent has been in litigation with numerous parties for
`
`over one year and there is concern that one or more of the parties in that litigation are using the
`
`Requestor as a surrogate to bring an IPR that they would be prohibited by statute (35 U.S.C. §
`
`

`

`315(b)) from bringing on their own behalf. Discovery aimed at uncovering the membership of
`
`the Requestor has been served (and resisted, MACROSOLVE-2002 ) in the Texas litigation.
`
`This IPR should be dismissed for failure to identify the real party or parties in interest.
`
`In the alternative, the instant IPR should be stayed until discovery is obtained from the
`
`Requestor with regards to the real party or parties in interest.
`
`In the further alternative,
`if a stay is not granted,
`it
`is believed that flaws in the
`Requestor’s expert’s declaration and conclusions in the Petition that rely on those arguments are
`
`sufficient to call into question the validity of the request and, thus, the Requestor has failed to
`
`demonstrate a reasonable likelihood that at least one claim is unpatentable.
`
`In the further alternative that the flaws in the Requestor’s analysis are ignored,
`
`it
`
`is
`
`believed that none of the art of record, alone or in combination, reasonably renders any claim of
`
`the ‘816 patent as unpatentable.
`
`IV.
`
`Patent Owner challenges Petitioner’s identification of the real parties-in-interest
`and submits that this IPR should be dismissed for failure to identify the real parties-
`in-interest, or, in the alternative, stayed until the real parties-in—interest can be
`determined via discovery.
`
`As required by 37 C.F.R. § 42.8(b)(l), Petitioner must file with the Board an
`
`identification of “each real palty-in—interest” for the petition. Patent Owner submits that this
`
`requirement is significant because final written decisions in IPRs act to estop the real parties-in—
`
`interest, as well as the privies of the Petitioner, from asserting claims the petitioner raised or
`
`reasonably could have raised during that inter partes review. With regard to proceedings before
`
`the Office, 35 U.S.C. § 315 (e)(1) provides: “The petitioner in an inlerparl‘es review ofa claim
`
`in a patent under this chapter that results in a final written decision under section 318(a), or the
`
`real party in interest or privy of the petitioner, may not request or maintain a proceeding before
`
`

`

`the Office with respect to that claim on any ground that the petitioner raised or reasonably could
`
`have raised during that inter partes review”; see also 37 C.F.R. § 42.73(d).
`
`With regard to civil actions and other proceedings, 35 U.S.C. § 315(e)(2) provides: “The
`
`petitioner in an inter partes review of a claim in a patent under this chapter that results in a final
`
`written decision under section 318(a), or the real party in interest or privy of the petitioner, may
`
`not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a
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`proceeding before the International Trade Commission under section 337 of the Tariff Act of
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`1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have
`
`raised during that inter partes review.” Thus, the real parties—in-interest in the present IPR
`
`would be estopped from asserting that the claims of the ‘816 Patent are invalid, with respect to
`
`the claims raised, or which reasonably could have been raised in the present IPR, both in
`
`proceedings before the USPTO and in civil actions.
`
`Moreover, and particularly significant to the present IPR, a trial cannot be initiated if the
`
`Petitioner cannot comply with the statutory time limits imposed by 35 U.S.C. § 315(b) and 37
`
`CPR. § 42.101(b). Title 35 U.S.C. § 315(b) requires that “[a]n interpartes review may not be
`
`instituted if the petition requesting the proceeding is filed more than 1 year after the date on
`
`which the petitioner. real party-in—interest, or privy of the petitioner is served with a complaint
`
`alleging infringement of the patent.” (Emphasis added)
`
`“The core functions of the “‘real party-in-interest”’ and “‘privies’”
`requirement [are] to assist members of the Board in identifying
`potential conflicts, and to assure proper application of the statutory
`estoppel provisions. The statutory estoppels provisions seek to
`protect patent owners from harassment via successive petitions by
`the same or related parties,
`to prevent parties from having a
`“‘second bite at the apple,’” and to protect the integrity of both the
`USPTO and Federal Courts by assuring that all issues are promptly
`raised and vetted.” Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48759.
`
`

`

`Petitioner RPX, headquartered in San Francisco, CA, identifies itself on its web site, as
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`“the leading provider of patent risk solutions, offering defensive buying, acquisition syndication,
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`patent intelligence, insurance services, and advisory services.” (MACROSOLVE-2003)
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`Petitioner’s business model relies on a network of companies who apparently pay a fee to
`
`become a “member.” RPX boasts a current membership network of 168 client companies
`
`ranging from early-stage firms to Fortune 100 industry leaders. (MACROSOLVE—2004)
`
`Although Petitioner RPX apparently does not publish its complete membership list,
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`approximately 49 “select clients” are identified on its web site.
`
`(MACROSOLVE—ZOOS)
`
`Additional membership information is available on the Internet (MACROSOLVE-2006).
`
`Based on the limited information available, Patent OWner has sought to obtain the actual
`
`membership list of RPX through judicial means. However, such has not been successful to date.
`
`Indeed, in resisting discovery from Patent Owner, RPX has indicated that (his is the proper
`
`forum for Patent Owner to seek this information. See, Non-Party RPX Corporation’s Objection
`
`and Responses to Subpoena Duces Tecum”, Response 1, page 2, in MACROSOLVE-ZOOZ:
`
`l. RPX objects to the Document Subpoena and the Request on the grounds that they
`
`have been brought in an improper forum. The interparles review ("IPR") process
`
`before the US Patent and Trademark Office (”USPTO") provides a means for
`
`Requesting Party to seek discovery, and it is to that forum that Requesting Party
`
`should seek relief.
`
`In 2011, Patent Ovmer, Macrosolve, Inc., began filing patent
`
`infringement
`
`lawsuits
`
`asserting the ‘816 Patent. A listing of the cases filed since that time can be found in the
`
`Background Section above. A listing of all of the defendants and respective dates of service can
`
`be found in MACROSOLVE-2014.
`
`

`

`Patent Owner served a third party subpoena seeking discovery from Petitioner relating to
`
`Petitioner’s Membership in an effort to determine whether one or more defendant(s) to the ED.
`
`Texas litigation is a Member of Petitioner, and if so, whether, and to what extent, in an ultimate
`
`effort to determine whether one or more of the defendant(s) to the ED. Texas litigation is a real
`
`party-in-interest in the present IPR. If so, Petitioner may lack standing to request the present IPR
`
`pursuant to 35 U.S.C. § 315(b). Additionally, if the present IPR proceeds to trial and a final
`
`written decision results, the estoppels which apply under 35 U.S.C. § 315 set forth above may
`
`apply to one of more of these defendants. As such, determination of the real party in interest is
`
`critical.
`
`Petitioner could have addressed and possibly removed these issues but instead chose to
`
`refuse to comply with the subpoena MACROSOLVE, INC-2002. As a result, unless discovery
`
`is granted in this lPR, Patent Owner will be forced to file a Special action in California for the
`
`sole purpose of obtaining discovery regarding objective evidence that Petitioner failed to identify
`
`each real party-in-interest. Patent Owner points outthat the Board has granted discovery in a
`
`copending IPR in which RPX is a party under very similar circumstances, See, RPX Corp. v.
`
`VirnelX Holding Corp, IPR2014-00176.
`
`Patent Owner has been able to identify at least seven entities which are both defendants
`
`in ED. Texas litigation involving the ‘816 Patent and members of Petitioner RPX. At least four
`
`ofthese seven would be precluded under 35 U.S.C. § 315(b) and 37 CPR. § 42.101(b) from
`
`initiating the instant IPR.
`
`Based on Patent Owner’s best information and belief, AOL, INC., Dell, Inc. Pandora
`
`Media, Inc., Linkedin Corp., Target Stores, Inc., Walgreen Company, and Comcast Corp. are all
`
`members of Petitioner RPX. Of these seven, Dell, Inc. was served on September 4, 2011, AOL,
`
`

`

`Inc., was served on or before February 28, 2012; Linkedin Corp. was served on or before June 2,
`
`2012; and Target Stores, Inc. was served on or before June 28, 2012. All these entities were
`
`served more than one year prior to the filing of the present IPR. If any one or all of the entities
`
`were to be determined to be a real party-in-interest to Petitioner RPX, Petitioner would lack
`
`standing to bring the present IPR.
`
`A substantial number of the above parties involved in the ED. Texas litigation would be
`
`barred by statute from participating in the present IPR since a party who is sued has one year in
`
`which to institute an IPR. Patent Owner has been able to identify the above seven (7) parties to
`
`the ED. Texas litigation that are also members of RPX. Patent Owner submits that it is beyond
`
`mere speculation that one or more of these parties are a real party-in-interest to Petitioner. If that
`
`is the case, Petitioner lacks standing to institute the present IPR as being in contravention of
`
`statute. Moreover, many additional defendants to the ED. Texas litigation may be undisclosed
`
`members of RPX. There remain many “secret” members of Petitioner RPX.
`
`A real party-in-interest is “the party that desires review of the patent. Thus, the ‘real
`
`party-in-interest’ may be the petitioner itself, and/or, it may be the party or parties at whose
`
`behest the Petition has been filed.” Oflice Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48759 (Aug. 14, 2012). Whether a party is a real party-in-interest is a “highly fact-dependent
`
`question.” Id. at 48759. To determine whether a party is a real party—in—interest, the USPTO
`
`applies traditional common law principles with the goals of “identifying potential conflicts” and
`
`assuring “proper application of the statutory estoppel provisions.” 1d. at 48759.
`
`10
`
`

`

`Based on available information, RPX makes no products or provides services
`V.
`beyond those identified above. Therefore, RPX has no interest in challenging the ‘816
`Patent except for the benefit of its members who may be infringers.
`
`The Office Patent Trial Practice Guide cites In re Guan Inter Partes Reexamination
`
`Proceeding, Control No. 95/001,045, Decision Vacating Filing Date at 6—9 (Aug. 25, 2008)] in
`
`which the Board of Patent Appeals and lnterferences (BPAI) (the predecessor to the PTAB)
`
`found that an entity known as “Troll Busters,” whose primary function was “filing requests in
`
`their name to maintain the anonymous nature of a party or parties,” failed to identify the party
`
`that funded and controlled the petition as a real party-in-interest. Id. The BPAI determined that
`
`“Troll Busters cannot act as a ‘shill’ in an inter partes reexamination request to shield the
`
`identity of the real party or parties in interest.” Id. Patent Owner submits that this analysis
`
`equally applies to Petitioner RPX. RPX has refused, to date, to identify all of its 168 members.
`
`Since RPX does not appear to be directly infringing the ‘816 patent, it must be bringing the
`
`present lPR on behalf of its members, thereby attempting to avoid the time ban and estoppels
`
`enumerated in 35 U.S.C. § 315.
`
`Where a party funds and directly controls an lPR, it is likely that the party would be found to
`
`be a real party-in-interest. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48760. The
`
`practice guide states that “a party that funds and directs and controls an lPR or PGR petition or
`
`proceeding constitutes a ‘1‘eal palty-in—interest,’ even if that party is not a ‘privy’ of the
`
`petitioner.” Id.
`
`The Director has the discretion to dismiss or stay the present lPR proceeding. Petitioner
`
`will not be prejudiced by any -delay resulting from a dismissal or stay of this lPR due to the fact
`
`that Petitioner’s refusal to comply with Patent Owner’s discovery requests necessitated the delay.
`
`1 The Guan case relates to an inter partes reexamination and not an lPR, however, it is cited in the Office Patent
`Trial Practice Guide.
`
`11
`
`

`

`If the real parties-in-interest have not been accurately identified in the Petition, the
`
`Petition fails to meet the statutory requirements for instituting an inter partes review. Here, at
`
`least four RPX members are time barred (and perhaps other that are currently unknown). As a
`
`result, the Board has the authority to dismiss or stay the present IPR under 35 U.S.C. § 315. The
`
`Board should not institute a trial based on the untimely Petition and this Petition should be
`
`dismissed, which Patent Owner respectfully requests.
`
`In enacting the America Invents Act (“AIA”), Congress made perfectly clear that it
`
`wanted to do away with the problems and expense of allowing defendants to have “multiple bites
`
`at the apple” when it comes to challenging the validity of a patent.
`
`()flz‘ce Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48759. Patent Owner respectfully submits that this is exactly what
`
`Petitioner will accomplish if the Board finds that there are no other real parties—in-interest or
`
`privies who will be bound by any inter partes Review initiated in response to the Petition.
`
`Allowing Petitioner to manipulate the system to create an almost celtain duplication of
`
`challenges to validity is the wrong result that is neither in the interests ofjustice, nor what should
`
`be permitted under equity.
`
`In conclusion, for at least the above reasons, the Petition should be dismissed and no inter
`
`partes review should be instituted because the Petition fails to meet the requirements of 35
`
`U.S.C. § 3 l 2(a)(2) which requires the Petition to “name all real parties in interest”. In addition,
`
`the Petition should be dismissed and no inter partes review should be instituted because the
`
`Petition fails to meet the requirements of 35 U.S.C. § 315(b) which bars an inter partes review
`
`from being instituted if it “is filed more than 1 year after the date on which the petitioner, real
`
`party-in-interest, or privy of the petitioner is served with a complaint alleging infringement of the
`
`patent.” In the event that a trial is instituted, Patent Owner respectfully moves for an order
`
`12
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`

`

`permitting discovery on this issue and reserves its rights to raise the issue of Petitioner’s standing
`
`during the trial, and to seek authority from the Board to take pertinent discovery or to file a
`
`motion to challenge Petitioner’s standing to initiate the present IPR.
`
`This IPR should be dismissed because Petitioner is in Privity with Entities which are
`VI.
`barred by statute from instituting the present IPR
`
`As discussed above, Title 35 U.S.C. § 315(b) requires that “[a]n inter partes review may
`
`not be instituted if the petition requesting the proceeding is filed more than 1 year after the date
`
`on which the petitioner, real party—in-interest, or privy of the petitioner is served with a
`
`complaint alleging infringement of the patent” (emphasis added). Petitioner, RPX is in privity
`
`with certain entities which were served with a complaint alleging infringement of the ‘8 16 Patent
`
`more than one year prior to the filing of the Petition in the present IPR.
`
`The US. Supreme Court provided a list of circumstances in which a nonparty to a lawsuit
`
`can be bound by ajudgment in Taylor v. Siurgell , 553 US. 880, 893—895 (2008) . This list is
`
`illustrative but not exhaustive. Although the Taylor case is not set in the context of a patent
`
`reexamination, this list and the Taylor case are cited in the Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48756, 48759 (Aug. 14, 2012). As a result, it is apparent that the Taylor case has
`
`bearing on the issue of privity. The six non-exhaustive Taylor examples are:
`
`1.)
`
`2.)
`
`Agreement to be bound by a judgment;
`
`“Substantive legal relationships” such as “preceding and succeeding owners of
`
`pr0perty, bailee and bailor, and assignee and assignor”;
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`3.)
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`A non—palty was adequately represented in a “representative suits” such as
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`“properly conducted class actions
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`and suits brought by trustees, guardians, and
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`other fiduciaries”;
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`l3
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`

`

`4.)
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`A nonparty that “assumed control over the litigation in which that judgment was
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`rendered” even though it was not formally represented in the litigation;
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`5.)
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`“A person who did not participate in a litigation later brings suit as the designated
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`representative of a person who was a party to the prior adjudication”; and
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`6.)
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`Statutory preclusion, such as in bankruptcy or probate proceedings, as long as the
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`statute is “consistent with due process.”
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`The practice guide also notes that “the legislative history of the AIA indicates that
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`Congress included ‘privies’ within the parties subject to the statutory estoppel provisions in an
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`effort to capture ‘the doctrine’s practical and equitable nature,’ in a manner akin to collateral
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`estoppel.” Office Parent Trial Practice Guide, 77 Fed. Reg. 48756, 48759 (Aug. 14, 2012).
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`Whether a party who is not a named participant in a given proceeding nonetheless
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`constitutes a “real party-in-interest" or "privy" to that proceeding is a highly fact—
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`dependent question. Office Parent Trial Practice Guide, 77 Fed. Reg. 48756, 48759 (Aug. 14,
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`2012). In addition to the RPX members who are also litigants in the Eastern District of
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`Texas, a number of litigants are privies to RPX through documented common ownership
`
`with RPX: ownership with managerial authority within RPX.
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`Specifically, the Form 10-K (Annual Report) for RPX Corp filed March 11, 2013 for
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`the Period Ending December 31, 2012 states:
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`Our Three largest stockholders and our directors and executive
`officers, in the aggregate, own approximately 44% of our outstanding
`common stock and will be able to exercise control over all matters
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`requiring stockholder approval. This concentration of ownership limits
`your ability to influence corporate matters.
`As of December 31, 2012, affiliates of Index Ventures, affiliates of
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`Charles River Ventures and KPCB Holdings, Inc. each beneficially owned
`approximately 10%, 12%, and 12%, respectively, of our outstanding common
`stock, and our directors and executive officers and their affiliates,
`in the
`
`aggregate, beneficially owned approximately 10% of our outstanding
`
`14
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`

`

`common stock. As a result, these stockholders will be able to exercise
`substantial control over all matters requiring stockholder approval, including
`the election of directors and approval of significant transactions, such as a
`merger or other sale of our company or its assets. This concentration of
`ownership will limit your ability to influence corporate matters and may
`have the effect of delaying or preventing a third party from acquiring control
`over us.
`In addition, each of Index Ventures, Charles River Ventures, and
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`KPCB Holdings, Inc. currently has a representative on our Board of Directors.
`[Emphasis in original]
`
`FORM 10—K at 18, 19. (MACROSOLVE-2007] Clearly Index Ventures, Charles River
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`Ventures, and KPCB Holdings, Inc. individually and collectively exercise significant control
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`over RPX.
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`Each of these three owners/directors also owns a stake in at least one litigant. For
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`example: Index Ventures has a current stake in Facebook (6-12—cv-00044, 1/30/2012]
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`MACROSOLVE-20082 and previously owned an interest in Salesforce.com (6-11-cv-490,
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`9/15/2011] MACROSOLVE-20093; KPCB Holdings, Inc. has a stake in Facebook (6-12-cv-
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`00044,
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`1/30/2012] MACROSOLVE-20104, Groupon
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`(6-12-cv-00490,
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`9/15/2011]
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`MACROSOLVE-20115, and AOL (6-12-cv-0091, 2/27/2012] MACROSOLVE-20126; and
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`Charles River Ventures has a stake in Dropbox, Inc. (6-13—cv-00670] MACROSOLVE 20137.
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`RPX is also listed in the portfolios of each ofthese companies.
`
`Clearly these relationships extend beyond mere membership in RPX. Essentially,
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`Facebook, Groupon, AOL, and Dropbox control members ofthe board of RPX. As such, RPX
`
`is clearly a privy to each ofthese companies and, as such, cannot initiate an IPR where its
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`privy is barred.
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`7' http://www.indexventures.com/portfolio#company_id_184
`3 http://www.indexventures.com/portfolio#companyid_ 152
`“ http://www.kpcb.com/companies/facebook
`5 http://www. kpcb.com/companies/groupon
`6 http://www.kpcb.com/ companies/aol
`7 http://www.crv.com
`
`15
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`

`

`In addition, Patent Owner submits that RPX has violated its duty of candor pursuant
`
`to Rule 42.11:
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`Parties and individuals involved in the proceedings have a duty of
`candor and good faith to the Office during the course ofa proceeding.
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`Clearly, the fact that at least six litigants in related actions have common ownership
`
`with RPX is material to Petitioner's real party in interest statement. Particularly in light of
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`the fact that the entities having common ownership effectively have the controlling interest
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`in RPX, and further, have positions on the board ofdirectors ofRPX. These material
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`omissions alone warrant dismissal of the Petition. See 37 C.F.R. § 42.12 (a) [1), (b) (8).
`
`However, if the Board determines dismissal of the Petition is not warranted, Patent Owner
`
`moves for limited discovery to determine if Index Ventures, Charles River Ventures, and/or
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`KPCB Holdings exerted undue influence in the decision to initiate the instant action.
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`VII. Requestor’s expert declaration is fatally flawed and should be struck
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`As an initial matter it should be noted that throughout this document various statements
`
`that are found in the Petition that will be challenged. However, failure to challenge a specific
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`statement, teaching, finding, or interpretation in this document should not be construed as a
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`concession that such is accepted by the Patent Owner. The Patent Owner specifically reserves
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`the right to contest additional statements, conclusions etc., that may be found in the Petition, in
`
`its expert declaration, etc., in the future as necessary.
`
`By way of summary, Patent Owner believes that there are foundational flaws, errors, and
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`omissions in Requestor’s expert declaration (Requestor’s RPX-1004) that make it unreliable as a
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`reference. Requestor cites to this document over 100 times in support of its petition and, in view
`
`of its numerous problems, this report should be rejected and/or the instant request dismissed.
`
`l6
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`

`

`A.
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`Foundational Errors in the Declaration of AL. Narasimha Reddy (Requestor’s RPX-
`
`1004).
`
`Requestor relies repeatedly on the Declaration under 37 CFR §l.68 of a Dr. Reddy.
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`However, this declaration contains foundational errors and misrepresentations that call into
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`immediate question the reliability of the conclusions set out therein and, as such, should not be
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`considered.
`
`For example, in ll 19, Dr. Reddy proclaims that the ‘81 6 patent teaches a “computerized
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`questionnaire”. That misrepresents that clear language of the patent. The ‘816 patent teaches a
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`“tokenized questionnaire” (see, e.g., Claim 5). The phrase “computerized questionnaire” cannot
`
`be found in the ‘816 patent.
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`In this same paragraph, Dr. Reddy further mischaracterizes the teachings of the ‘8 l 6
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`patent by describing it as method of transmitting answers “back to the server wirelessly.” Id.
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`Emphasis added. That unduly limits the scope of the instant patent. Consider, for example, Col.
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`7, lines 12-34, for example, where options such as a direct RS—232 connection and docking
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`station are mentioned as specific possibilities.
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`Requestor’s expert fulther Opines in 1] 27 that “An interpreted language (such as Java) can
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`normally run on any hardware and operating system platform.” (Emphasis added). First, Patent
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`Owner disputes that Java is an interpreted language. Java compiles to byte code and is,
`
`therefore, a compiled language.8 (MACROSOLVE-2015) Second, no support for this statement
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`has been provided and, more importantly, the statement appears to refer to the present day. What
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`is not of evidence here is any support for this statement as applied to the time the invention was
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`made, the earliest priority date of the invention being August 19, 2002.
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`8 http://enwiklpedia.org/wiki/java—bytecode
`
`l 7
`
`

`

`Dr. Reddy opines at some length as to what the proper definition is for the term “token”
`
`as it appears in the ‘816 patent. However, this opinion begins with a clear error. In 1156 and 1157
`
`Dr. Reddy criticizes Patent Owner’s definition of “token” which was originated in the Microsoft
`
`Computer Dictionary (5th ed) and which was proposed to, and accepted by, the court after a
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`Markman hearing to discuss definition of claim terms (Macrosolve v Antenna Software, Inc., et.
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`Al, No. 6:11—cv-287 MHS—KNM, Eastern District of Texas, Markman Brief, attached hereto as
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`MACROSOLVE-2016). The proposed definition for this term is “any nonreducible textual
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`element in data that is being parsed.” 1156, and Requestor’s RPX-1006 at 10. Dr. Reddy
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`concludes from this that the proposed definition means the tokens must be text (printable