`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`RPX CORPORATION,
`Petitioner
`v.
`
`APPLICATIONS IN INTERNET TIME LLC,
`Patent Owner
`____________________
`
`Case IPR2015-01750
`US Patent No. 8,484,111
`Case IPR2015-01751
`Case IPR2015-01752
`Patent 7,356,482 B21
`____________________
`
`________________________________________________________________
`
`PATENT OWNER’S OPPOSITION:
`
`THE PETITIONS WERE TIME BARRED
`
`PURSUANT TO 35 U.S.C. § 315(b)
`
`                                                            
`1 This paper addresses issues common to all three cases. As required by the Board’s
`December 7, 2018 order in each, the word-for-word identical paper is filed in each
`proceeding identified in the heading.
`
`

`

`TABLE OF CONTENTS
`
`
`C.
`
`D.
`
`E.
`
`F.
`G.
`
`INTRODUCTION ....................................................................... 1
`I.
`II. LEGAL STANDARDS ............................................................... 3
`A.
`The Flexible Test for RPI ................................................. 3
`B.
`Privity is a Broad Concept ............................................... 4
`C.
`The Onus is on RPX ......................................................... 6
`D. Attorney Argument is not Evidence ................................. 7
`III. SALESFORCE IS A REAL PARTY IN INTEREST ................. 8
`A.
`Salesforce is a clear beneficiary in these proceedings ..... 8
`B.
`Salesforce had “a preexisting, established relationship
`with the petitioner” at the time of filing ......................... 14
`Salesforce Acquiesced in RPX Filing and Pursuing these
`IPRs ................................................................................ 17
`RPX has an “IPR Practice” in which it Acts on Behalf of
`its Clients ........................................................................ 26
`RPX is an Incorporated Association that is Not the RPI,
`but Rather its Members .................................................. 28
`Compare this Case to Taylor v Sturgell ......................... 28
`Chuang and Chiang Provide Attorney Argument, Not
`Facts, and their Testimony is Unreliable ........................ 31
`H. Overlapping Board Member is an Unusual Relationship
` ........................................................................................ 34
`IV. SALESFORCE AND RPX ARE IN PRIVITY ........................ 35
`A.
`RPX is a Proxy for Salesforce ........................................ 35
`B.
`RPX is Merely the Attorney-In-Fact or Agent of
`Salesforce ....................................................................... 37
`RPX should be Precluded from Relitigating Validity on
`behalf of Salesforce ........................................................ 38
`The Facts Here are Stronger than in Ventex v. Columbia
`Sportswear ...................................................................... 39
`
`C.
`
`D.
`
` 
`
`i
`
`

`

`V.
`
`Conclusion ................................................................................. 41
`
`V. Conclusion ................................................................................. 41
` 
`
`
`
` 
`
`
`
`ii
`ii
`
`

`

`Cases
`
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir.
`2018) ................................ 3-4, 8-11, 13-15, 17, 18, 27-28, 30-31, 33, 35-36
`ARRIS Int’l PLC v. Chanbond, LLC, IPR2018-00570,
`(PTAB July 20, 2018) .................................................................................. 5
`Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034
`(Fed. Cir. 2017) ............................................................................................ 7
`McAbee Const., Inc. v. US, 97 F. 3d 1431 (Fed. Cir. 1996) ......................... 16
`Pfeil v. Rogers, 757 F.2d 850 (7th Cir. 1985) .................................................. 7
`RPX Corp., v. Applications in Internet Time, LLC, Case No. 18-1075
`(Supreme Court, March 18, 2019) ............................................................... 8
`State Comp. Ins. Fund v. Drobot, 2016 U.S. Dist. LEXIS 184792 (C.D. Cal.
`2016) ............................................................................................................ 7
`State v. Franklin, 2002-Ohio-2370, 2002 Ohio App. LEXIS 2375 (Court of
`Appeals Ohio, 2nd App. Dist. 2002) ............................................................. 7
`Taylor v. Sturgell, 553 U.S. 880 (2008) ............................................... 4, 28-30
`Ventex Co., Ltd. v. Columbia Sportswear North America, Inc. Cases
`IPR2017-00651 (January 24, 2019) ...................................................... 38-40
`Ventex Co., Ltd. v. Columbia Sportswear North America, Inc. Cases
`IPR2017-00789 (January 24, 2019) .................................................. 6, 39-40
`WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308 (Fed. Cir.
`2018) ...................................................................................................... 4, 35
`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018) ............... 6, 7, 32
`Zoll Lifecor Corp. v. Philips Elec. N. Am. Corp.,
`Case IPR2013-00609 .................................................................................... 4
`
` 
`
` 
`
`iii
`
`

`

`Statutes
`
`35 U.S.C. § 312(a)(2) .................................................................................. 6, 7
`35 U.S.C. § 315(b) ....................................................................... 1, 4-6, 39, 41
`37 C.F.R. §§ 42.71(a), 42.72 ......................................................................... 39
`
`Other Authorities
`
`157 Cong. Rec. S1376 (Mar. 8, 2011) ............................................................ 5
`18A Charles Alan Wright, Arthur R. Miller, & Edward H. Cooper, Federal
`Practice & Procedure § 4453 (2d ed. 2018) ......................... 6, 18, 28, 37, 38
`Office Patent Trial Practice Guide (“TPG”), 77 Fed. Reg. 48,756, 48,759
`(Aug. 14, 2012) ........................................................................................ 4, 5
`Restatement (Third) of Agency, § 1.01 cmt. c (Am. Law Inst. 2006) .......... 37
`
` 
`
` 
`
`iv
`
`

`

`I. INTRODUCTION
`These are unusual cases. The Federal Circuit remanded the final written
`decisions in these cases because it wanted the Board to weigh the evidence
`using a different standard, one which squarely placed the burden of persuasion
`on the petitioner, RPX Corporation (RPX). The most important component of
`the Federal Circuit’s 41 page opinion and 15 page concurrence was the
`discussion of the burden the law placed on RPX. RPX bears the burden of
`persuasion regarding whether or not its client Salesforce is a real party of
`interest of RPX. Yet, RPX, in its 63 page opening brief, filled with various
`arguments, nowhere even mentions “burden” or “persuasion.” With RPX, you
`have to pay careful attention to what it does not say. Its failure to mention the
`burden of persuasion coincides with its lack of evidence, and its failure to even
`address important issues or precedent.
`
`As explained below, RPX has failed to carry its burden under 35 U.S.C.
`§ 315(b). Even RPX describes the Federal Circuit’s test as “broad.”
`
`RPX has failed to demonstrate that its client Salesforce is not a time-
`barred real party in interest (RPI). The evidence demonstrates that Salesforce
`is a clear, specific beneficiary of these IPRs. The evidence further
`demonstrates that RPX and Salesforce had a preexisting contractual
`relationship. Under their contract, RPX provided services to Salesforce to
`reduce Salesforce’s patent infringement liability. Even the absence of
`evidence supporting RPX’s arguments demonstrates that Salesforce
`
` a happy client of RPX. That is, Salesforce was aware that these
`IPRs were taking place and has acquiesced. This makes sense, given that
`Salesforce has been the only specific beneficiary of these IPRs.
`
` 
`
`1
`
`

`

`In keeping with RPX’s apparent policy of willful blindness, RPX failed
`to produce any testimony from Salesforce, even though Salesforce’s opinion
`on whether it benefits from these IPRs is critical. This is unusual. RPX
`provides no evidence that Salesforce was an unhappy client, upset, disagreed,
`or even suggested that RPX not file the IPRs. Instead, under its contact with
`RPX, every year, “Salesforce has paid RPX substantial sums as membership
`fees since its member ship began” and those payments
` like
`clockwork. This is unusual. RPX provides no evidence of criticism of RPX
`for filing or prosecuting these IPRs. On the other hand, Salesforce
`
` as an RPX client. This is unusual. The Federal Circuit was
`concerned about RPX’s willful blindness, yet this is precisely what the
`evidence reflects. Given the opportunity to create a full and clear record, RPX
`provides no evidence whatsoever from Salesforce.
`
`RPX has also failed to demonstrate that its client Salesforce is not its
`privy. The contract between RPX and Salesforce defines a relationship in
`which RPX acts on behalf of Salesforce. RPX admits to a range of services
`
` to Salesforce under that contract. These IPRs fall neatly within that
`range of services. RPX’s post hoc testimony and rationale for filing these IPRs
`ignores the overwhelming facts, the weight of the law, and Board precedent.
`
`The Federal Circuit opinion’s closing sentence decried “RPX’s
`somewhat bald assertions regarding who the real parties in interest are in these
`IPRs.” RPX has now presented its best evidence, but even that remains merely
`bald assertions. RPX is time-barred because Salesforce is time-barred.
`
`The burden of persuasion falls squarely on RPX. RPX presents
`abundant attorney argument, often on irrelevant issues, but a clear lack of
`
` 
`
`2
`
`

`

`actual evidence. The Board should ignore the attorney argument, whether in
`the briefs or in declarations.
`
`The Board need not conclude that RPX is Salesforce’s proxy to
`terminate these proceedings. The bar is much lower. Instead, to terminate
`these proceedings, the Board need only find that RPX has failed to
`demonstrate that RPX is not Salesforce’s proxy. Absent such a showing, these
`proceedings should end. The Board can and should dismiss the petitions and
`terminate these proceedings because RPX has not carried its burden of
`persuasion.
`
`II. LEGAL STANDARDS
`
`A. The Flexible Test for RPI
`“Determining whether a non-party is a ‘real party in interest’ demands
`a flexible approach that takes into account both equitable and practical
`considerations, with an eye toward determining whether the non-party [1] is a
`clear beneficiary that [2] has a preexisting, established relationship with the
`petitioner.” Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336,
`1351 (Fed. Cir. 2018) (“CAFC Op.”). “Congress understood that there could
`be multiple real parties in interest.” CAFC Op. at 1347 (citing 35 U.S.C.
`312(a)).
`
`RPX has explained the Federal Circuit’s two-part test as follows:
`“Under the panel’s decision, it does not matter that a petitioner has its own
`interest in pursuing IPR; the petitioner is bound by prior litigation brought by
`a separate entity if it has a relationship with that entity and the entity would
`‘benefit from’ the subsequent action.” RPX Pet. for Rehearing at 2. RPX
`called this test “broad.” Id. at 2, 8. On these points, the parties agree.
`
` 
`
`3
`
`

`

`A non-party is a clear beneficiary where it “will benefit from the redress
`that the chosen tribunal might provide,”—i.e., “having [the challenged patent]
`claims canceled or invalidated.” CAFC Op. at 1348, 1349. “Thus, the focus
`of the real-party-in-interest inquiry is on the patentability of the claims
`challenged in the IPR petition, bearing in mind who will benefit from having
`those claims canceled or invalidated.” CAFC Op. at 1348.
`
`A non-party’s participation with a petitioner may be covert, and the
`evidence may be circumstantial. Zoll Lifecor Corp. v. Philips Elec. N. Am.
`Corp., Case IPR2013-00609, slip op. at 10 (Board Mar. 20, 2014) (Paper 15).
`
`B. Privity is a Broad Concept
`“Privity,” as that term is used in 35 U.S.C. § 315(b), exists where “the
`petitioner is simply serving as a proxy to allow another party to litigate the
`patent validity question that the other party raised in an earlier-filed
`litigation.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308,
`1319 (Fed. Cir. 2018) (citing Taylor v. Sturgell, 553 U.S. 880, 895 (2008)),
`for example, “where the nonparty to an earlier litigation acts as a proxy for
`the named party to relitigate the same issues.” Taylor, 553 U.S. at 895. The
`privity issue under § 315(b) “is more expansive, encompassing parties that do
`not necessarily need to be identified in the petition as a ‘real party-in-
`interest.’” Office Patent Trial Practice Guide (“TPG”), 77 Fed. Reg. 48,756,
`48,759 (Aug. 14, 2012).
`
`The broader concept of privity “encompass[es] legal relationships that
`are ‘sufficiently close such that both the petitioner and the privy should be
`bound by the trial outcome and related estoppels.’” CAFC Op. at 1360-61
`(Reyna, J., concurring) (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759).
`
` 
`
`4
`
`

`

`When it comes to evaluating the relationship between a party bringing a suit
`and a non-party, the common law seeks to ascertain who, from a “practical
`and equitable” standpoint, will benefit from the redress that the chosen
`tribunal might provide. Id. (citing Trial Practice Guide, 77 Fed. Reg. at
`48,759). Indeed, the PTO correctly recognizes that the related concept of
`privity “is an equitable rule that takes into account the ‘practical situation,’
`and should extend to parties to transactions and other activities relating to the
`property in question.” Id. (emphasis added) (citing 157 Cong. Rec. S1376
`(Mar. 8, 2011) (statement of Sen. Kyl)). That does not mean solely the
`outcome in the case at hand: “[p]rivity between parties does not hinge on any
`single proceeding,” and does not depend on a formal relationship with RPX
`with respect to this IPR, but on whether RPX and its clients “[a]re in a
`substantive legal relationship in a broader context.” CAFC Op. at 1362.
`
`Likewise, privity may “have little to do with ‘control’ over” this case.
`Id. “Neither absolute control, nor actual control, is a requirement for finding
`of privity.” ARRIS Int’l PLC v. Chanbond, LLC, IPR2018-00570, Paper 25, 8
`(PTAB July 20, 2018) (denying institution based on privity under §315(b)).
`The Federal Circuit explained that privity is “closely related” to the RPI
`analysis and serves “related purposes,” including ensuring that “third parties
`who have sufficiently close relationships with IPR petitioners” are prevented
`from benefiting from “belated administrative attacks by related parties via
`§315(b).” CAFC Op. at 1350. Where two business entities, though separate,
`have “a legal relationship between them that is defined by mutual legal
`obligations and commonality of interest,” that can be “precisely . . . that which
`defines privity.” Id. at 1362 (Reyna, J., concurring).
`
` 
`
`5
`
`

`

`The common law also aims to protect defendants in one action from
`later legal actions brought by related parties who are actually entitled to relief.
`As stated in Wright & Miller, “[t]he ‘negative’ function of the rule governing
`who is a real party in interest enables a defendant to present defenses he has
`against the real party in interest to protect the defendant against a subsequent
`action by the party actually entitled to relief, and to ensure that the judgment
`will have proper res judicata effect.” Wright & Miller § 1543 n.3 (internal
`citations omitted). This notion applies with equal force in the IPR context—a
`patent owner dragged into an IPR by a petitioner, who necessarily has an
`interest in canceling the patent owner’s claims, should not be forced to defend
`against later judicial or administrative attacks on the same or related grounds
`by a party that is so closely related to the original petitioner as to qualify as a
`privy.
`
`C. The Onus is on RPX
`RPX bears the ultimate burden of persuasion to show that its petitions
`are not time-barred under § 315(b), and thus bears the burden of proving that
`Salesforce is neither a real party in interest nor its privy. Worlds Inc. v. Bungie,
`Inc., 903 F.3d 1237, 1246 (Fed. Cir. 2018).
`
`The Board may terminate an IPR proceeding and vacate its decisions to
`institute if the petitions fail to identify a real party-in-interest, as required
`under 35 U.S.C. § 312(a)(2). See, e.g., Ventex Co., Ltd. v. Columbia
`Sportswear North America, Inc., Case IPR2017-00789, Paper 148 (PTAB
`January 24, 2019) (panel included Administrative Patent Judge Mitchell G.
`Weatherly).
`
` 
`
`6
`
`

`

`D. Attorney Argument is not Evidence
`Attorney argument is not evidence. Worlds Inc. v. Bungie, Inc., 903
`F.3d 1237, 1246 (Fed. Cir. 2018), citing Icon Health & Fitness, Inc. v. Strava,
`Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not
`evidence.”). To carry its burden, RPX must rely on competent evidence such
`as reliable testimony from those with personal knowledge of relevant facts.
`Attorney argument, whether in a brief or in a declaration, is not
`evidence upon which the Board can rely. “Because legal argumentation is an
`expression of legal opinion and is not a recitation of a ‘fact’ to which an affiant
`is competent to testify, legal argument in an affidavit may be disregarded.”
`Pfeil v. Rogers, 757 F.2d 850, 862 (7th Cir. 1985). “The affidavit of an attorney
`giving an opinion based on facts in the record does not constitute evidence
`outside the record, but merely legal argument.” State v. Franklin, 2002-Ohio-
`2370, 2002 Ohio App. LEXIS 2375, *6 (Court of Appeals Ohio, 2nd App. Dist.
`2002).
`The Board should disregard attorney argument presented as evidence
`even if there is no motion to exclude that evidence. “First, when a court
`decides a summary judgment motion, only relevant evidence is convincing,
`and an evidentiary objection is not needed. Second, improper legal arguments
`and conclusions fall in the same camp—a court only considers relevant
`evidence, and ignores improper legal arguments and conclusions even in the
`absence of evidentiary objections.” State Comp. Ins. Fund v. Drobot, 2016
`U.S. Dist. LEXIS 184792, *15 (C.D. Cal. 2016) (internal citations omitted).
`
` 
`
`7
`
`

`

`III. SALESFORCE IS A REAL PARTY IN INTEREST
`The Federal Circuit’s two-part test is broad, succinct and easily applied
`
`here:
`
`RPX.
`
`
`
`
`1. The unnamed party Salesforce is a clear beneficiary that
`2.
` preexisting, established relationship with the petitioner
`
`RPX calls this the “benefits-plus-relationship” test. See e.g., RPX brief
`p. 50. RPX has not and cannot overcome the presumption against it and has
`thus failed to carry its burden of persuasion.
`
`A. Salesforce is a clear beneficiary in these proceedings
`There can be no dispute that Salesforce was and remains a clear
`beneficiary in these IPRs. One might expect an extensive discussion of this
`issue in RPX’s opening brief. There is none. Instead, RPX argues that the
`Federal Circuit’s “benefits-plus-relationship” test is incorrect. See RPX brief,
`50-52. RPX petitioned the Supreme Court for a writ of certiorari to review
`this issue. However, the Supreme Court denied the petition. RPX Corp., v.
`Applications in Internet Time, LLC, Case No. 18-1075 (Supreme Court,
`March 18, 2019). Thus, though RPX attempts to argue it is incorrect, the
`Federal Circuit’s beneficiary-plus-relationship test is the only controlling
`precedent.
`Turning to the facts, which RPX ignored, there is ample evidence that
`Salesforce is a clear beneficiary. Salesforce had everything to gain—much
`more, in fact, than RPX—from a Board determination of invalidity of the AIT
`patents. AIT sued Salesforce for infringement of the AIT patents on
`November 8, 2013. CAFC Op. at 1339. Salesforce had raised invalidity as a
`defense and sought and failed to invalidate the AIT patents through Covered
`
` 
`
`8
`
`

`

`Business Method Review of the AIT patents. Id. If RPX succeeds in its efforts
`here, there can be no argument that Salesforce does not benefit. Even the delay
`caused by these proceedings, and the subsequent appeal to the Federal Circuit,
`delays justice for AIT. That alone is and has been a benefit to Salesforce – the
`only party against whom the AIT patents have been asserted. As the Federal
`Circuit explained, “the evidence submitted indicates the company’s
`understanding that the very challenges to validity included in the IPR petitions
`were challenges Salesforce would like to have made if not time-barred from
`doing so.” Id. at 1355.
`RPX does not deny that that Salesforce is a beneficiary in these
`proceedings. In the deposition of RPX Senior Vice President Chuang, when
`asked, “Do you believe Salesforce has benefitted in any way from the AIT
`IPRs at any time?” Mr. Chuang responded, “They may have. I don’t know.”
`Ex, 1095, p. 103, lines 12-15 (Chuang depo.). In the view of RPX Senior
`Director and IP Counsel Steve Chiang, “benefit is largely a matter of
`perception... And to the extent that Salesforce is perceiving a benefit, they
`might be.... I can’t speculate on their perception of a benefit.” Ex. 1094, p. 69,
`lines 7-8 (Chiang depo.).
`Despite the evasive responses from RPX representatives, Salesforce is
`obtaining very specific benefits from these IPRs. Chiang admitted that
`Salesforce “may have benefited” from these IPRs because AIT’s lawsuit
`against Salesforce was stayed while these IPRs are pending. Ex. 1094, p. 70,
`lines 10-23 (Chiang depo.). Chiang also admitted that invalidation of the AIT
`patents is “good” for RPX’s clients. Ex. 1094, p. 125, line 20 – p. 126, line 7.
`Likewise, Chuang admitted that if RPX succeeds here, none of its clients
`could be sued on the AIT patents. Ex. 1095, p. 101, lines 7-18 (Chuang depo.).
`Of course, this “goodness” from RPX’s efforts would cover Salesforce, too.
`
` 
`
`9
`
`

`

` only RPX client that
`And, unlike RPX’s other clients, Salesforce
`actually has been sued by AIT. Thus, the benefit to Salesforce is singularly
`unique. It is special.
`Shockingly, though Chiang states that whether Salesforce is a
`beneficiary of these IPRs is a matter of opinion for Salesforce, RPX claims
`that it has never once discussed the issue of RPI (or privity) with Salesforce.
`Ex. 1090, para. 11 (Chiang dec.). RPX produced zero documents indicating
`any discussion, asserting that none exist. None. In other words, RPX admits
`that it doesn’t know if Salesforce is an RPI. Yet, as recognized by the Federal
`Circuit, RPX’s “Best Practices” prohibit it from discussing IPRs with clients
`who do not agree to be named as RPIs. CAFC Op. at 1352. Chiang also
`admitted that his team discussed the statute of limitations on Salesforce filing
`petitions for IPR. Ex. 1094, p. 137, lines 15-20 (Chiang depo.). This related
`to the RPX Best Practice factor of whether a new validity challenge by another
`entity might be filed. The clear implication is that RPX did not discuss RPI or
`privity with Salesforce because it already knew that Salesforce would benefit
`and did not want to hear it or to create any evidence that might tie the two
`parties together more than they already were. The Federal Circuit questioned
`“the circumstances surrounding RPX’s creation of its Best Practices Guide”
`which “cast additional doubt on the company’s motivations.” CAFC Op. at
`1352, n. 4. Willful blindness is no excuse.2
`Regarding willful blindness, the Federal Circuit questioned “a mutual
`desire [by RPX and Salesforce] to avoid entering into an express agreement
`under which RPX would file IPR petitions challenging AIT’s patents for
`
`                                                            
`2 Despite the Federal Circuit’s considerable criticism of RPX’s “best
`practices” policy as a tool for willful blindness,
`.
`Ex. 1094, p. 149, line 21 – p. 150, line 18 (Chiang depo.).
`10
`
` 
`
`

`

`Salesforce’s benefit.” CAFC Op. at 1355, n. 6. RPX has produced no evidence
`to negate the Federal Circuit’s inference.
`Though RPX writes extensively about its reason for filing the petitions
`here, RPX admits that under the controlling Federal Circuit precedent, its
`motivations do not matter. RPX Pet. for Rehearing at 2. See also CAFC Op.
`at 1353 (“The point is not to probe RPX’s interest (it does not need any);
`rather, it is to probe the extent to which Salesforce — as RPX’s client — has
`an interest in and will benefit from RPX’s actions, and inquire whether RPX
`can be said to be representing that interest after examining its relationship with
`Salesforce.”). On this point, Chiang admitted that, aside from RPX’s alleged
`“primary motivation” for filing the petitions, “per se it leaves room for other
`motivations.” Ex. 1094, p. 51, line 10 (Chiang depo.). Indeed, “RPX has many
`reasons for filing IPR petitions.” Ex. 1019, para. 6 (Chuang 1st dec.). There is
`limited evidence of what RPX’s other motivations and reasons were. None of
`that evidence excludes helping Salesforce.
`Though RPX asserts that “the industry” might be impacted by or have
`an interest in these patents or these IPRs, RPX provides no proof of this
`hollow attorney argument. There were no documents, no indications from
`others within “the industry” to support this argument, and no witnesses
`testified regarding this “interest.” Both of the RPX witnesses – Chuang and
`Chiang -- are attorneys. Their testimony amounts to little more than their legal
`opinions; they report few actual facts themselves. The arguments of Chuang
`and Chiang therefore carry no weight. The RPX brief amounts to attorney
`argument which is supported almost exclusively by other attorney arguments.3
`
`                                                            
`3 Given Chiang’s role as both a testifying witness, attorney of record in the
`related Supreme Court proceeding, and counsel for RPX in the deposition of
`11
`
` 
`
`

`

`Even the fact that the two primary witnesses for RPX are patent property
`attorneys tends to suggest that RPX is primarily oriented toward providing
`legal services to its clients, including Salesforce. Indeed, Chiang in his
`deposition admitted that RPX’s mapping of the AIT patents to
` companies
`in its database “has nothing to do with infringement.” Ex. 1094, pp. 57, line
`15 – p. 58, line 12 (Chiang depo.). More importantly, when RPX was
`considering its “best practices” before filing the petitions here, Salesforce was
`the only client implicated. Ex. 1094, pp. 138, line 15 – p. 139, line 9. Nor were
`any prospective clients of RPX implicated. Ex. 1095, p. 98, line 19 – p. 99,
`line 2 (Chuang depo.).
`The Federal Circuit opinion states:
`The evidence of record reveals that RPX, unlike a
`traditional trade association, is a for-profit company
`whose clients pay for its portfolio of “patent risk
`solutions.” J.A. 73. These solutions help paying members
`“extricate themselves from NPE lawsuits.” J.A. 29. The
`company’s SEC filings reveal that one of its “strategies”
`for transforming the patent market is “the facilitation of
`challenges to patent validity,” one intent of which is to
`“reduce expenses for [RPX’s] clients.” J.A. 31. Yet the
`Board did not consider these facts, which, taken together,
`imply that RPX can and does file IPRs to serve its clients’
`financial interests, and that a key reason clients pay RPX
`
`                                                            
`Chuang, RPX’s brief may well amount to Chiang arguing the merits of his
`arguments.
`
` 
`
`12
`
`

`

`is to benefit from this practice in the event they are sued
`by an NPE.
`
`This implication becomes stronger when one considers the
`discovery produced in this case. First, even though it is
`undisputed that RPX nominally adhered to its “best
`practices,” which prohibit it from discussing IPRs with
`clients who do not agree to be named as real parties in
`interest, J.A. 80, these practices do not bear on whether
`RPX files IPR petitions to benefit specific clients that
`previously have been accused of patent infringement.
`Moreover, several of the factors that RPX considers when
`identifying potential IPR candidates are highly probative
`of whether particular individual clients would benefit from
`having RPX file IPR petitions challenging patents they
`have been accused of infringing.
`
`CAFC Op. at 1351-1352 (emphasis added). In addition to the
`numerous factors specified in its “best practices” policy, RPX could
`have considered others. Ex. 1095, p. 80, lines 15-19 (Chuang depo.). In
`this case, though, RPX has not disclosed what other factors it might
`have considered. Again, none of those factors precludes providing a
`benefit to its client Salesforce, which is the only relevant inquiry here.
`For example, the
` annual payments by Salesforce to RPX could
`have been a factor, but RPX simply did not address it. RPX’s
`independent motivations, to the extent they exist at all, are beside the
`point.
`
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`B. Salesforce had “a preexisting, established relationship with the
`petitioner” at the time of filing
`There is no dispute that RPX and Salesforce had a “preexisting,
`established relationship.” The Federal Circuit’s test requires nothing more.
`CAFC Op. at 1351. Nonetheless, there is plenty more.
`The RPX-Salesforce relationship includes a “Membership and License
`Agreement” signed
`. Ex. 1020. Salesforce and RPX later
`amended
` the RPX-Salesforce Membership Agreement,
`including a third amendment
`.
`Ex. 1077. This contract, comprising the Membership and License Agreement
`and the various amendments, will be referred to herein as the “Membership
`Agreement.”
`Even RPX admits that the Membership Agreement does not fully
`delineate its relationship with Salesforce. RPX admits that it has provided
`several benefits to Salesforce: patent licenses, information and “reaching out.”
`See Ex. 1073, para. 8 (Chuang 2nd dec.) and Ex. 1095, p. 65, lines 9-16, p.
`116, line 7 – p. 117, line 9 (Chuang depo.). Yet, the Membership Agreement
`specifies
`. Ex 1020, Section 2. IPRs fall
`naturally in the spectrum between the patent license benefits specified in the
`Membership Agreement, and the information sharing and reaching-out that
`RPX admits it
` Salesforce without a written obligation to do so.
`See also Ex. 2006 (“More generally, our clients receive quarterly reports on
`our portfolio activity; monthly, customized reports on our acquisition
`pipeline; and a weekly subscription to summaries on significant IP industry
`news and developments. We also sponsor periodic networking and education
`events for our clients.”)
`
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`Though RPX argues that these IPRs are not included in the Membership
`Agreement, RPX’s contract with Salesforce no more excludes these IPRs than
`it does information sharing or “reaching out.” Furthermore, though the
`original contract was amended
`, Ex. 1077, the
`amendment made no reference to IPRs, and certainly nothing in the
`amendments carved out IPRs from the services RPX was providing to
`Salesforce. Ex. 1020.
`RPX’s argument also conflicts with RPX’s public statements that its
`interests are “100% aligned” with those of clients such as Salesforce. Ex.
`2015. RPX’s arguments also conflicts with its statement that RPX serves as
`“an extension of the client’s in-house legal team.” Ex. 2006. RPX’s arguments
`here also conflicts with its public statement that it “represent[s] clients who
`are accused of patent infringement, acting as their proxy to ‘selectively clear’
`liability for infringement as part of RPX’s ‘patent risk management
`solutions,’” including “attacking patents that are or will likely be asserted
`against its clients.” Exs. 2006–2008. RPX’s only contradiction of these
`statements are declarations of RPX attorney-employees Chuang and Chiang
`signed five years or more after-the-fact. There is no credible evidence that
`these IPRs are carved out of or otherwise excluded from the preexisting,
`established relationship between RPX and Salesforce at the time the IPRs
`were filed
`.
`RPX acknowledges that RPX and Salesforce discussed “reaching out”
`to AIT on several occasions. Ex. 1019, para. 24, 25, 26 (Chuang 1st dec.). See
`also Ex. 1095, p. 39, line 17 – p. 40, line 23 (Chuang depo.). The Federal
`Circuit questioned why RPX failed to provide this service as asked. CAFC
`Op. at 1355, n. 6 (referring to “Salesforce's change of heart and RPX’s effort
`not to acquire any additional information as a mutual desire to avoid entering
`
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`into an express agreement under which RPX would file IPR petitions
`challenging AIT’s patents for Sale