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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RPX CORPORATION,
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`Petitioner,
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`V.
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`APPLICATIONS IN INTERNET TIME, LLC,
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`Patent Owner.
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`Case IPR2015—01750
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`Patent No. 8,484,111 B2
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`Case IPR2015-01751
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`Case IPR2015-017521
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`Patent 7,356,482 B2
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`SECOND DECLARATION OF WILLIAM W. CHUANG
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`1 The word-for—word identical paper is served in each proceeding identified in the
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`RPX Exhibit 1073
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`RPX V. AIT
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`IPR2015—01750
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`1, William W. Chuang, declare:
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`have reviewed the opinion of the United States Court of Appeals for
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`the Federal Circuit in Applications in Internet Time, LLC v. RPX Corporation, 897
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`F.3d 1336 (Fed. Cir. 2018) (hereafter “the Federal Circuit opinion”) concerning
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`w
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`iPB7015-O-l750, lRQGlS—Olfil
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`challenging {T3 ‘93tents Nos 7
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`by Applications in internet Time, LLC’“Ali”).
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`2.,
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`In my current capacity as Executive Vice President of Client Services 9
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`PresidentntCTientRteelainons a.PpX Corpora'
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`been RPX’s primary contact for client Salesforcecom (“Salesforce”).
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`I am
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`familiar with the services RPX provides Salesforce, with the services RPX
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`provides to clients generally, and with what Salesforce and clients generally expect
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`to receive from RPX,
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`I.
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`I!“ E!
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`RIXS Buom so lhuD ILL
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`RPX’s core business model is defensive patent aggregation, which
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`involves acquiring patents and licensing those patents to RPX’s members. This is
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`explained, for example, in RPX’s 2013 Form lO—K Annual Report: “The core of
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`out; salutmn 1
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`tripum(I)
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`I}?Lu,
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`are being or may be asserted against our current and prospective cliennts. We the“
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`£5277RA: I
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`provide our clients with a license to these patent assets to protect them from
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`potential patent infringement assertions.” (Ex. 2008 at 3.) The license rights to the
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`patent assets that RPX has acquired is the primary reason clients become RPX
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`members and pay membership fees to RPX.
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`4.
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`As of— when Salesforce became an RPX client, RPX
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`had a standard form (hereafter the “Form Membership Agreement") on which -
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`—membership and license agreements for RPX’s clients were based,
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`A
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`— version ofthe Form Membership Agreement is provided as Exhibit
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`1074. The Form Membership Agreement sets forth the terms and conditions of the
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`“License and Membership Rights” that a client receives as an RPX member-,
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`as well as the “Fees, Payment Terms and Audit" to which the client agrees in
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`return for the License and Membership Rights-.
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`5.
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`As set forth in—, the typical
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`RPX membership provides the Client a “Patent License"-, and “Defensive
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`Rights” to purchase RPX-owned patents for defensive assertion-. The
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`intent L'cense invcveis—
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`Membership Agreeinentl.” (lix. 1074 at 2.)
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`In a typical year of membership. the
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`Patent License would include various rights (including the right not to be sued for
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`infringement) over thousands of patents. Pursuant to—
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`—. the Defensive Rights provide—
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`— (Ex. 1074 2114.)
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`6.
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`‘A‘S set I‘()Ir-t11“—
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`RPX client pays RPX an “Annual Membership and License Fee“ in rett.rn for the
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`Patent License and Defensive Rights that the client receives as an RPX member.
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`'l'he Annual Membership and License Fee is due on the anniversary of the
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`aerccmem‘s cxccutione—
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`—, Pursuant to-, the amount ofthe Annual
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`e ~ is calculated annually oased open the Rate Card I
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`—. the Rate Card I
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`— bases the amount of the Annual Membership and License Fee on a
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`percentage ofthe client‘s Normalized Operating Income ("NOI").
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`iled the petitions 101 the All 11'1<s.1<1 A
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`continued to base —elients’ membership agreements on a version of
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`f.\l7'71.l.= I
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`the standard Form Membership Agreement. Provided as Exhibit 1075 is a version
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`of the Form Membership Agreement dated_ 2015. Consistently between
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`the - and 2015 versions of the Form Membership Agreement, the typical RPX
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`membership provided the client a Patent License- and Defensive Rights to
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`purchase RPX-owned patents for defensive assertion-, for which the client
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`agreed- to pay RPX an Annual Membership and License Fee calculated based
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`on a percentage ofthe client’s N01 using the Rate Card—
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`8.
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`An aspect of RPX’s core business model of defensive patent
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`aggregation is information gathering. 1n the course of RPX’S core business of
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`acquiring “patent assets that are being or may be asserted against our current and
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`prospective clients" (Ex. 2008 at 3), RPX closely monitors the patent market and
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`patent assertions to identify potential acquisitions and gather pricing data. RPX
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`thus gathers extensive and valuable market intelligence and data as part of its core
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`acquisition business, and shares that intelligence and data with RPX’S members.
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`RPX’s 2013 Form 10-K Annual Report explains this under the “Defensive Patent
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`Aggregation” heading, making clear this information sharing is part of RPX’s core
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`solution of defensive patent aggregation: “As a part of our solution, we provide
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`extensive patent market intelligence and data to our clients. Clients can access this
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`market intelligence and data through our proprietary web portal and through
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`discussions with our client relations team.
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`in a market with limited publicly
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`available data on pricing and terms oflicenses and litigation settlement, we believe
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`our data and market intelligence is a valuable resource for our clients and
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`prospects.” (EX. 2008 at 3.)
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`RPTCS ct re business and the care benefit of i‘I’X membership is defensive patent
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`aggregation. Fer example, RP (’s 20l3 Form lG-K Annual Report states, under
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`“Defensive Patent Aggregation,” “The core of our solution is defensive patent
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`aggregation, in wuic” we acqnire patent assets that are being or may ue 33361 LCU
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`against our cerrent and prospecti Je clients W. e .hen provne our chen.s With a
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`license to these patent assets to protect them from potential patent infringement
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`assertions.” (EX. 2008 at 3.) The same document explains that the Defensive
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`Patent Aggregation “core” solution (not including additional services such as
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`insurance, co-filed validity challenges, etc) constitutes the benefits for which
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`access to the following benefits: . .. Reduced Risk ofPatent Litigation — Clients
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`reduce their exposure to patent litigation because we continuously assess patent
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`assets available for sale or license and acquire many that are being or may be
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`asserted against our clients or potential clients.
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`Cost—Effective Licenses -
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`(£77KKI l
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`non—exclusive license rights to our large and growing portfolio of patent assets at a
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`lower cost than [clients] would have paid if these patent assets were owned by
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`other entities. ... [and] Reduced Patent Risk Management Costs — Clients can
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`reduce their ongoing patent risk management costs by supplementing their internal
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`resources with our database of information and extensive transaction experience
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`relating to the patent market.” (Ex. 2008 at 4.)
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`10.
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`Separate from RPX’s core business of defensive patent aggregation,
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`RPX offers some other services that are not part of RPX’s core solution, are not
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`covered by the Form Membership Agreement, are not received by clients as part of
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`the typical RPX membership, and are only provided to clients who specifically,
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`explicitly and separately contract for them. An example of such an additional
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`service for which interested clients must contract separately is RPX’s insurance
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`service. (See, e.g., Ex. 2008 at 4: “Since August 2012, we have offered insurance
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`to cover certain costs of NPE patent litigation as a complementary service to our
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`core solution”) Another example of an additional service for which a client must
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`contract specifically, explicitly and separately is RPX’s participation as a filer of a
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`patent validity challenge for the benefit of the client, and since 2014 RPX has also
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`required that contracting client to be named as a co-filer of the validity challenge.
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`(See § VI below.) For each of the above—referenced additional services, unless a
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`client contracts specifically, explicitly and separately for that service, RPX does
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`not provide that service to the non—contracting client. A non~contracting client
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`would have no reasonable expectation that RP would provide any of these
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`additional services to the client who has not contracted and paid for the additional
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`service(s). l have served in a leadership role for Client Relations / Client Services
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`at a?“ tor more than ix "ears, and am unaware or an 7 nGl/‘I’CGVhVaCtiagc ent me
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`expressing an expHectationthat the on933+”?an client should or we'ald reeive
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`from RPX any of the above—referenced additional services that the non-contracting
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`client did not specifically, explicitly and separately contract for.
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`p—d
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`of challenges to patent validity” (EX. 2008 a. 4) does not reler to ND” tiling a
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`patent validity challenge on behalf of an unnamed client? and I am unaware of
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`anything that would reasonably indicate to any client or prospect that it does,
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`“[Fjacilitation of challenges to patent validity” refers to RPX providing some
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`assistance that would aid(ie.
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`. “facilitate”) in some way a clientis awn validity
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`tzw
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`11115 COLllG
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`roviding potentially relevant prior art
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`client, which the client could utilize in the client’s own validity challenge. RPX
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`does not file validity challenges in its own name while acting on behalf of an
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`unnamed client.
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`in cases where max participates as a flier ofa patent validity
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`challenge for the benefit of a specific client, the client must contract specifically,
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`(051((: 1
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`explicitly and separately for that service. and since 2014 RPX has required the
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`client to participate as a named co-filer ofthe validity challenge. (See § VI below.)
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`II.
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`AGREEMENTS BETWEEN RPX AND SALESFO'RCE
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`12.
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`RPX previously served on AlT the following agreements between
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`RPX and Salesforce:
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`o —, Membership and License Agreement (Exhibit
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`1020):, which sets forth the terms and conditions of Salesforce’s
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`membership with RPX.
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`o _ First Amendment to Membership and License
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`Agreement (Exhibit 1021), by which Salesforce—
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`, Second Amendment to Membership and License
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`Agreement (Exhibit 1022), concerning— program that
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`ended in the Fall of2014.
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`0 Order Forms documenting RPX’s orders for Salesforce software
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`(Bates Ranges RPXOOOOOl—RPX000008 and RPX000026—
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`RPX000036).
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`2 I use the exhibit numbering from IPR20lS-01750 in this declaration.
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`8
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`]3.
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`The lbllowing documents are all agreements between RPX (including
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`any RPX subsidiary) and Salesl‘oree that were not previously served on AIT:
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`°—
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`«Ex. mm», bywhich—
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`—
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`0 _ Third Amendment to Membership and License
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`HE mm bywhich—
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`- —<u1079>..1w
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`which—
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`July 20, 2017, Order Form by which RPX purchased Salesforce
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`software.
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`(Ex. 1080.)
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`14,
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`Consistent with the Form Membership Agreement discussed in 1111 4-7
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`above, Salesforce’s membership agreement with RPX grants Salest‘orce a license
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`to the patents that RPX has the right to license. and defensive rights to purchase
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`RPX-owned patents for defensive assertion. (Compare Ex. 1020, I with Ex.
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`1074, - (Salesforce‘s Patent License from RPX is unrelated to and does not
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`include the AW Patents, or any other patents owned by AIT.) Also consistent with
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`the Form Membership Agreement. Salesforce’s membership agreement establishes
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`an Annual Membership and License Fee that Salesforce pays RPX in return for the
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`10
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`patent license and defensive rights, payable annually around the anniversary ofthe
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`execution date of the membership agreement. (Compare Ex. 1020, I with Ex.
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`1074, I.)
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`15. —Salesl‘brce’s membership agreement includes the
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`- ReeCure—. <Cumpure Eu. 1020-
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`with Ex. 1074 I) The Rate Card sets the Annual Membership and License Fee
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`based on a percentage of the client‘s Normalized Operating Income (“N01“),
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`which has no dependency on and is entirely unrelated to any services provided to
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`——-t
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`ic client by RPX. For-, Salesforce’s Annual Membership and License Fee
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`1020 at 5—6.) For- and thereafter, Salesforce’s Annual Membership and
`
`Licensepee—, pursup re-
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`—<Ex. 1077).
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`16.
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`As discussed in W 10-11 above, the typical RPX membership does
`17‘
`not include services such as insurance or RPA s participation as a filer oi‘a patent
`
`validity challenge, which are outside ofRPX’s core defensive patent aggregation
`
`solution, and are not provided unless a client specifically, explicitly and separately
`
`contracts for those services Salesforce has never contracted for any insurance, has
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`never contracted for RPA s participation as a flier 01‘ any patent validity challenge:
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`and has never received any of those services from RPX. As discussed in fl 12
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`Ins-n, - .
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`ll
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`

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`above. Salesforce contracted in
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`for a
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`b
`,
`)rouram, but the
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`program ended in the Fall 01'2014. well before RPX identified the AlT Patents as
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`potential candidates for an [PR petition. As discussed in ll 13 above‘ Salesforce
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`—. Just as Salesforce contracted specifically and
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`separately for the— and for—
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`_, Salesforee would have had to contract specifically and separately to
`
`receive RPX’s participation as a filer of any patent validity challenge for
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`Salesforce’s benefit. but Salesforce has never contracted to receive any patent
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`validity challenge service from RPX.
`
`lll.
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`PAYMENT RECORDS BY SALESFORCE TO RPX
`
`l7.
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`RPX previously sewed on AIT a spreadsheet of payment records by
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`Salesforee to RPX l‘rom—. (Ex. 2019.) That spreadsheet shows
`
`that Salesforce paid its first Annual Membership and License Fee on—
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`— after execution ofthe membership agreement), in the amount of
`
`-as specified in the agreement—. -
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`—, that Initial Fee was calculated as -the Rate Card
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`calculation. (Ex. 1020, -.) For its —membership, Salcsforce paid
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`an Annual Membership and License Feeof—,
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`shortly after the_ anniversary ofthe membership agreement.
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`(Ex.
`
`

`

`2019.) Pursuant to— the amount ol'the fee-
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`—the Rate Card calculation (Ex. 1020 at
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`Ma— For in
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`—membership, Salesforce paid Annual Membership and
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`Leense Fees0— end—,
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`both payn‘ients shortly after the_ anniversary of the membership
`
`agreement. (Ex. 2019.) Pursuant to— executed_
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`-_ the amount of the fee for—the Rate
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`Card calculation (13x. 1030 at 1)e~~i.e.,—
`
`— 1
`
`8.
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`Provided as Exhibit 1081 is a spreadsheet of‘paymcnt records by
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`Salesforce to RPX from_ The payment on_ is
`
`the same payment already shown on the previously produced spreadsheet of
`
`Exhibit 2019 and discussed in ‘11 17 above; this is the reason for the strikcthrough
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`font. l‘lOi'_ Salest‘orce paid Al’u’itial l‘vlei‘n't’iersl‘iip and License Fees of
`
`— _
`
`. Each ofthese payments was made shortly alter a—
`
`anniversary of the membership agreement. Pursuant to—
`
`—, the amount ofthe fee for—the Rate Card
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`1.03111: I
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`

`

`calculation (Ex. 1020 at l}—i.e.,—
`
`_ 1
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`9.
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`The fact that Salesforce’s Annual Membership and License Fee
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`- each year— reflects nothing more than_
`
`—ac1yca—.
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`Pursuant to— the Annual Membership and
`
`License Fee is calculated— Salesforce has never
`
`made any payment to RPX in consideration for any patent validity challenge, and
`
`RPX has never performed any patent validity challenge service for Salesforce. The
`
`Federal Circuit opinion mentions that AIT “noted the volume and timing of
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`payments Salesforee had made to RPX" (897 F.3d at 1342) and that "‘[t]he Board
`
`was likewise not persuaded by AlT’s argument that Salesforce ”advanced” RPX the
`
`cost of the petitions, finding this ‘conjecture without evidentiaiy support’” (897
`
`F.3d at 1343). The Board was correct to find AIT’S argument unsupported; indeed,
`
`AlT‘s speculation that the amount ofSalesforee's- Annual Membership and
`
`License Fee paid on_ was somehow determined or affected by the
`
`cost of RPX’s lPR petitions against the AIT Patents is plainly wrong. The amount
`
`of Salesforce’s Annual Membership and License Fee in - and every other year
`
`was based— as specified in Salesl‘oree‘s membership
`
`agreement, and was not determined or affected in any way by the AIT lPRs.
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`l4
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`

`

`Likewise, the timing of Salest‘orce‘s Annual Membership and License Fee payment
`
`each year is triggered by the anniversary ofthe membership agreement-
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`—, and is not determined or affected in
`
`any way by the A11" lPRs.
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`20.
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`The Federal Circuit opinion says “[tlhe Board erred.. by not
`
`considering” AlT’s “theory” that "RPX had apparent authority to file the IPR
`
`petitions to benefit Salesforce, pointing to... the timing ol‘Salesforce’s substantial
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`payments to RPX." (897 F.3d at 1357.) But AIT’s theory is manifestly wrong.
`
`IL
`
`"3
`
`ll
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`Salesforce’s Annual Membership and License Fee is due every year on the
`
`anniversary ofthe agreement’s execution—
`
`Ex. 1081).
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`In 2015 in particular (the AIT IPR petitions were filed on August 17,
`
`2015), Salesforce‘s payment was made on— just over- from
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`RPX‘s invoice of‘_, entirely pursuant to—
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`—, and having nothing to do with the AIT
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`lPRs. Every year ot‘Salesforce’s membership—
`
`Salesl'orce‘s Annual Membership and License Fee has been paid in the- as
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`triggered by the agreement anniversary, pursuant to—
`
`_. Nothing about the timing of any ot‘Salcsl‘orcc‘s payments has been
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`“H77IJ‘: I
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`

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`determined or affected in any way by the AIT lPRs. Nothing about the amount or
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`timing of Salesforce’s payments gave RPX any authority (apparent or otherwise) to
`
`file any [PR petitions to benefit Salesforce, and RPX has never had any such
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`authority.
`
`IV. RELATIONSHIP BETWEEN RPX AND SALESFORCE
`
`21.
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`The nature of the relationship between RPX and Salesforce as an RPX
`
`client is the same as the nature of the relationship between RPX and any -
`
`typical client whose membership agreement is based on the Form Membership
`
`Agreement (Ex. 1074, discussed in W 4-6 above), and who must enter into
`
`specific, explicit and separate agreements before the client can receive certain
`
`additional services. (See llll 10-11, 16 above.) Pursuant to Salesforce’s
`
`membership agreement, Salesforce is an RPX client that holds a license to the
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`patents that RPX has the right to license, and defensive rights to purchase RPX-
`
`owned patents for defensive assertion, just like any - client whose membership
`
`agreement is based on the Form Membership Agreement. (See W 4-5, 14 above.)
`
`Salesforce’s Annual Membership and License Fee is determined_
`
`—,.iust1ike any-
`
`client whose membership agreement is based on the Form Membership
`
`Agreement. (See W 6, 15 above.) The only payments Salesforce has made to RPX
`
`have been Salesforce’s Annual Membership and License Fee which is determined
`
`16
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`

`

`pursuant to the terms of the membership agreement. (See 111] 17-18 above.) Other
`
`than the— program and the—
`
`discussed in 11 16 above, Salesforce has never requested, paid for, nor received
`
`from RPX any other additional service for which clients must contract separately,
`
`such other additional services including insurance and RPX’S participation as a
`
`filer ofa patent validity Challenge.
`
`22.
`
`RPX, like many other companies, purchases and uses Salesforce
`
`software, as well as software applications from other vendors, in the course of
`
`RPX’s business.
`
`In this respect, the relationship between Salesforce and RPX as a
`
`Salesforce software customer is the same as the relationship between Salesforee
`
`and any other typical software customer. RPX’s relationship as a Salesforce
`
`software customer is independent of Salesforce’s relationship as an RPX client, is
`
`unrelated to patents generally and unrelated to any patent proceedings, and had no
`
`impact on RPX’s decision to challenge the AIT Patents.
`
`23.
`
`RPX has never had any authority (express, implied, apparent, or
`
`otherwise) to act on Salesforee’s behalf (as Salesforce’s agent, proxy, attorney-in-
`
`fact, or any other way) in challenging the validity of any patent (via inter partes
`
`review or any other type of validity challenge). As discussed in 1H] 10-] l, 16, 19
`
`above, the typical RPX membership in general, and Saiesforce’s RPX membership
`
`in particular, does not include certain services outside ol'RPX’s core defensive
`
`A’R‘Y'lkfii I
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`l7
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`

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`patent aggregation solution, and does not include RPX filing patent validity
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`challenges on Salesforce’s behalf. It would not have been reasonable for
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`Salesforce to have had any expectation that RPX would file or pursue the AIT
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`IPRs on Salesforce’s behalf, just as it would not be reasonable for any RPX client
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`to expect RPX to file or pursue a validity challenge against a patent that had been
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`asserted against that client, absent the client specifically, explicitly and separately
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`contracting for RPX to do so.
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`V.
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`INSURANCE
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`24.
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`RPX provides insurance policies for certain interested clients. As
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`discussed above (W 10, 16), insurance is an additional service for which interested
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`clients must contract separately, which is not included in the Form Membership
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`Agreement and is not included in the typical RPX membership. Salesforce’s
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`membership agreement does not include any insurance policy, and Salesforce has
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`never purchased any insurance policy from RPX. RPX thus has never been an
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`insurer of Salesforce.
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`VI.
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`INTER PARTES REVIEWS
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`
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`25.
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`As discussed in W 3-9 above, RPX’s core business is defensive patent ,
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`aggregation, which includes acquiring and licensing patents. Patent validity
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`challenges, including inter partes reviews (IPRS), are a separate undertaking
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`18
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`outside ofRPX’s core business model. Patent validity challenges, including iPRs,
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`are not included in the Form Membership Agreement.
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`26.
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`Prior to 20l4, RPX had relatively little experience with lPRs, and had
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`filed only two sets ofIPR petitions. One was a petition challenging a patent owned
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`-
`-
`n . infin n n Inmnzmru-
`nn n an
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`b3-’ iuaCroSolve, iflC. {EPRZQl4—90i49), tilt? Othfi‘f "v’aa a sci Gfpcliiiu 1;) challenging,
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`patents ovned by VirnetX inc. (1PR7OE.A 00171 through M3177). Durirg that time
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`period, RPX did not have an established iPR practice or policies regarding how
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`and under what circumstances to file IPR petitions. RPX created such policies in
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`’mAV
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`tn 4;
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`RPX files IPR petitions in only two scenarios: ( l) to serve RPX’s own interests,
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`where RPX is the sole petitioner and real party in interest; (2) as co—petitioner with
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`one or more other parties who are real parties in interest and are named as co-
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`petitioners and real parties in interestt. if RPX tiles any!PR petition for which
`hh‘r
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`A.
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`elieves arother par y is a realparty in interest MA always names that party
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`1011. if a real party in interest desires review of
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`a patent and is not willing to be named a real party in interest and co-petitioner in
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`the petition, RPX will not file the PR petition. lfa client wishes to have RPX file
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`an iPR petition for the clients benefit, the client must enter into a specific and
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`explicit agreement for that service, separate from the client’s membership
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`Lo‘vmc: I
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`l9
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`agreement, in which the client must agree to be named a real party in interest and
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`co-petitioner; otherwise, RPX will not file the petition. Absent such a specific and
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`explicit agreement with the client being named a real party in interest and co-
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`petitioner, RPX’s IPR petitions, filed on RPX’s own behalf, are entirely based on
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`RPX’s own independent business interests, which, at times, could be in conflict
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`with specific client interests.
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`28.
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`RPX’s history with lPRs is replete with examples where there can be
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`no doubt that RPX pursues its own interests and did not file with the intention of
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`extricating an RPX client from a pending infringement lawsuit. For instance:
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`0
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`IPR2014—00946, IPR2014—00947, IPR2014-00948, and lPR2014-
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`01107 challenged patents owned by ParkerVision that had only been
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`asserted in litigation against a party who was not an RPX member.
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`-
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`IPR2015-00736 challenged a patent owned by Cedatech Holdings
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`when the only two active defendants had reached settlement
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`agreements in principle with the patent owner at the time RPX filed
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`the lPR petition.
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`o
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`IPR2016-01235 challenged a patent owned by MD Security Solutions
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`under which none of the defendants sued for infringement were RPX
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`members.
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`20
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`o
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`IPRZOl 8—00304 and IPR20l8—00305 challenged a patent owned by
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`Spycurity when no RPX member was an active defendant when RPX
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`filed the IPR petitions.
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`-
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`lPRZOlS—Ol 131 and lPRZOl 8—01 132 challenged a patent owned by
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`Pubiishing Teen; oiogies
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`nei *nere was no Arnember in the only
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`actry e litiganon vv‘icr RPX tiiedtiTS T1“R petitions.
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`29.
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`The Federal Circuit opinion states the following:
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`The evidence of record reveals that RPX, unlike a traditional
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`trade association, is a for-profit company whose clients pay for
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`its portfolio oft‘patent risk solations. ” J .73.T1 ese
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`[/3
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`olntions
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`help paying members ‘eXtricate themselvves from NPE
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`lawsuits.” J A 29 The company 5 SEC Hilinngs reveal that one
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`of its “strategies” for transforming the patentrnmarket is“the
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`facilitation of challenges to patentvvali dity one intent ofwhich
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`is to “reduce expenses for [RPX’s] clients.” J .A. 31. Yet the
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`1-..
`Board did not consider these facts, which; taken together? imp y
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`that RPX can and does file IPRs to serve its clients’ financial
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`interests, and that a key reason clients pay RPX is to benefit
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`from this practice in the event they are sued by an NPE.
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`(897 F.3d at 1351-52.)
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`301
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`Respectfully, the Federal Circuit’s above statements are wrong in
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`several respects. RPX does not file IPRS to serve any specific client’s financial
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`interests, unless the client specifically and explicitly contracts with RPX to do so.
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`LQ‘VYAK:
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`2l
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`(See W 10-11 above.) Since 2014 when RPX implemented IPR policies and began
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`in earnest to establish a small IPR practice, this has only ever happened for a total
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`of twenty-one IPR petitions, all of which named both the client and RPX as co—
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`petitioners, and all of which involved explicit joint filing agreements between the
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`client and RPX.
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`31.
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`Contrary to the Federal Circuit opinion’s mistaken inference, the
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`prospect of RPX filing an IPR petition in the event that a client is sued by an NPE
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`is not “a key reason clients pay RPX.” As discussed above in § 1, by far the
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`primary reason clients pay RPX is to obtain the license to RPX’s vast portfolio of
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`patent assets, and the prospect of RPX in the future choosing to acquire rights in
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`patents being asserted, or which could potentially be asserted, against the client (or
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`licenses to such patents, with the right to sublicense to the client). To date, RPX
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`has secured dismissals of 1,286 lawsuits against RPX clients, through acquisition
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`of the patent-in-suit or a license with sublicensing rights. That is what was being
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`described on RPX’S “Why Join” webpage, which the Federal Circuit opinion
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`quotes as saying that RPX can help members “extricate themselves from NPE
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`lawsuits.” (897 F.3d at 1351, quoting Ex. 2007.) The very next sentence of that
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`page says, “Our central, trusted position in the market enables us to negotiate with
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`plaintiffs, acquire a license to the litigated patent and selectively clear our clients
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`from the suit,” making clear that it is RPX’s core service of defensive patent
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`aggregation (not patent validity challenges) that helps members “extricate
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`themselves 11on1l’PE lawsuits.”
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`32.
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`In contrast to the 1,286 lawsuit dismissals RPX has secured through
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`acquisitions, RPX has only ever filed a total of 57 IPR petitions to date, and those
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`llL/VA Cl". L112 L111;
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`‘tganon aeainst a11 330-ernher"t the #111
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`the thousands ofNPE lawsuits involving clients that RPX has monitored (to date,
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`4,748 NPE lawsuits filed against companies that were RPX members at the time