throbber
Filed on behalf of Petitioner
`By:
`/Richard F. Guinta/
`
`Richard F. Giunta
`Elisabeth H. Hunt
`Randy J. Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`Tel: (617) 646-8000
`Fax: (617) 646-8646
`RGiunta-PTAB@wolfgreenfield.com
`
`
`
`
`
`
`
`
`
`
`
`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
`Patent 8,484,111 B2
`
`Case IPR2015-01751
`Case IPR2015-01752
`Patent 7,356,482 B21
`
`_____________
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in the
`heading.
`
`
`
`
`
`
`
`
`
`
`
`Paper No. __
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`AIT FAILS TO MEET THE FIRST GARMIN FACTOR ............................. ..1
`
`A. AIT Misstates the RPI Test ....................................................................... ..2
`
`B. No Evidence Tends To Show That Salesforce Is an RPI .......................... ..3
`
`1. AIT Mischaracterizes RPX’s Business Model .................................... ..4
`
`I. AIT FAILS TO MEET THE FIRST GARMIN FACTOR ............................... 1
`A. AIT Misstates the RPI Test ......................................................................... 2
`B. No Evidence Tends To Show That Salesforce Is an RPI ............................ 3
`1. AIT Mischaracterizes RPX’s Business Model ...................................... 4
`2. AIT Mischaracterizes RPX’s History In Filing IPRs ............................ 6
`2. AIT Mischaracterizes RPX’s History In Filing IPRs .......................... ..6
`3. AIT’s Remaining “Evidence” Is Innocuous .......................................... 8
`3. AIT’s Remaining “Evidence” Is Innocuous ........................................ ..8
`C. Conclusion - Discovery Should Be Denied Outright .................................. 9
`C. Conclusion — Discovery Should Be Denied Outright ................................ ..9
`II. ANY DISCOVERY GRANTED SHOULD BE MORE NARROWLY
`TAILORED PURSUANT TO GARMIN FACTORS 1-5 ................................ 9
`
`ANY DISCOVERY GRANTED SHOULD BE MORE NARROWLY
`
`TAILORED PURSUANT TO GARMIN FACTORS 1-5 .............................. ..9
`
`
`
`i
`
`
`
`
`
`

`
`TABLE OF AUTHORITIES
`
`
`
`CASES
`Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc.,
`Case IPR2014-01288 (PTAB Feb. 20, 2015) (Paper 13) ....................................... 7
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`Case IPR2013-00214 (PTAB Sept. 30, 2013) (Paper 11) ...................................... 8
`
`Farmwald et al. v. ParkerVision, Inc.,
`Case IPR2014-00946 (PTAB Feb. 20, 2015) (Paper 25) ...................................7, 9
`
`Garmin International, Inc. v. Cuozzo Speed Technologies LLC,
`Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26) .............................. passim
`
`Globaltel*Link Corporation v. Securus Technoliogies, Inc.,
`Case IPR2015-01220 (PTAB Sept. 22, 2015) (Paper 18) ...................................... 8
`
`RPX Corporation et al. v. Red Anvil LLC,
`Case IPR2016-00003 (PTAB Oct. 1, 2015) (Paper 6) ........................................... 7
`
`RPX Corporation v. Macrosolve, Inc.,
`Case IPR2014-00140 (PTAB May 16, 2014) (Paper 9)......................................... 6
`
`RPX Corporation. v. VirnetX, Inc.,
`Case IPR2014-00171 (PTAB Jun. 5, 2014) (Paper 49) .....................................7, 8
`
`Samsung Display Co. Ltd. v. The Gold Charm Limited,
`Case IPR2015-01416 (PTAB Sept. 4, 2015) (Paper 7) ........................................ 3
`
`Sierra Wireless America, Inc. et al. v. M2M Solutions, LLC,
`Case IPR2015-01823 (PTAB August 26, 2015) (Paper 1) .................................... 7
`
`TRW Automotive U.S. LLC v. Magna Electronics Inc.,
`Case IPR2015-00950 (PTAB Sept. 17, 2015) (Paper No. 8) .............................6, 9
`
`U.S. Department of Homeland Security v. Larry Golden, Case
`IPR2014-00714 (PTAB Oct. 1, 2015) (Paper 35) .................................................. 3
`
`
`
`ii
`
`

`
`Unified Patents Inc. v. Hall Data Sync Technoogies, LLC,
`Case IPR2015-00874 (PTAB Sept. 17, 2015) (Paper 11) ...................................... 7
`
`Unified Patents, Inc. v. Dragon Intellectual Property, LLC,
`Case IPR2014-01252 (PTAB Feb. 12, 2015) (Paper 37) ...................................7, 8
`
`RULES
`
`77 F. Reg. at 48759 ................................................................................................2, 6
`
`
`
`iii
`
`

`
`I.
`
`
`
`AIT FAILS TO MEET THE FIRST GARMIN FACTOR
`
`AIT’s discovery motion should be denied. RPX has already told AIT that
`
`Salesforce is entirely uninvolved in the IPRs and offered to produce any and all
`
`evidence relating to control, ability to control, direction of or funding of the IPRs
`
`by Salesforce - but none exists. Despite this and the absence of any evidence
`
`showing beyond speculation that something useful will be found as required by
`
`Garmin, AIT futilely pushes forward with expansive discovery requests that are
`
`not properly tailored to meet the Garmin factors.
`
`The mere possibility or allegation that something useful will be found is not
`
`enough. AIT “should already be in possession of evidence tending to show beyond
`
`speculation that in fact something useful will be uncovered.” Garmin, IPR2012-
`
`00001, Paper 26 at 6.2 “Useful” means “favorable in substantive value to a
`
`contention of the party moving for discovery.” Id. at 7. Thus, to meet the first
`
`Garmin factor, AIT must possess evidence demonstrating that something will be
`
`found that is favorable to its assertion that Salesforce is an unnamed RPI.
`
`AIT does not specify what the “something useful” is that allegedly exists, let
`
`alone present evidence of its existence. AIT seeks wide ranging discovery in the
`
`hope that something useful will be uncovered. This type of fishing expedition is
`
`prohibited by Garmin and routinely denied by the Board.
`
`
`2 Full citations to all cited Board decisions are provided in the Table of Authorities.
`1
`
`
`
`

`
`AIT repeatedly states that it “seems” that Salesforce is an RPI and that AIT
`
`“expects” and “believes” that to be the case. Patent Owner’s Motion For
`
`Additional Discovery (“Mot.”) at 1, 3-5 and 8. AIT’s beliefs are not evidence.
`
`AIT admits that it is only speculating that Salesforce may be an RPI and seeks
`
`discovery to substantiate that speculation. Mot. at 5 (“AIT requests discovery that
`
`is needed … to determine whether” Salesforce is an unnamed RPI). This
`
`admission is fatal to AIT’s discovery request, as discovery is not available to a
`
`party that “speculates” about an issue and “requests information to substantiate that
`
`speculation. ” Garmin, Paper 26 at 10.
`
`A. AIT Misstates the RPI Test
`Information AIT seeks is not “useful” unless it is relates to factors
`
`considered in an RPI analysis and “favorable” to AIT’s contention that Salesforce
`
`is an RPI. Id. at 7. AIT cites the Trial Practice Guide (“TPG”) but ignores the
`
`facts the Board most commonly considers in determining RPI – (1) “whether the
`
`non-party exercised or could have exercised control over a party’s participation in
`
`a proceeding” and (2) “whether the non-party funded the proceeding.” 77
`
`Fed. Reg. at 48759-48760. An RPI is a party that “desires review,” which the TPG
`
`defines as the petitioner and/or a party “at whose behest the petition has been
`
`filed.” TPG at 48,759. As discussed below, AIT points to no evidence tending to
`
`show that Salesforce controlled, could have controlled or funded the IPRs, or that
`
`
`
`2
`
`

`
`RPX filed the petitions at the “behest” (i.e., order or command) of Salesforce.
`
`To the extent AIT suggests that Salesforce may be an RPI even if it did not
`
`fund, control or direct the IPRs and did not have RPX file them at its behest, that is
`
`not the law. Samsung, IPR 2015-01416, Paper 7 at 4-5 (denying RPI discovery
`
`because patent owner showed only that unnamed parties “had some incentive to
`
`have a petition filed” but provided no evidence that they were involved in, directed
`
`or controlled the IPRs); Homeland Security, IPR 2014-00714, Paper 35 at 11
`
`(unnamed parties sued on the patent and having relationships with the petitioner in
`
`unrelated endeavors were not RPIs without “proof of control or involvement by
`
`these [unnamed] parties in this proceeding”).
`
`
`
`Finally, AIT’s reliance on apparent authority is misplaced given that the
`
`facts do not fit - RPX never held itself out as authorized to act for Salesforce in the
`
`IPRs (quite the opposite) - and AIT fails to explain how the doctrine is relevant to
`
`a proper RPI analysis or cite any authority supporting AIT’s assertion that it is.
`
`B. No Evidence Tends To Show That Salesforce Is an RPI
`AIT admits that it is speculating about “whether” RPX filed the IPRs as a
`
`proxy for Salesforce or for some other reason. Mot. at 5. RPX will not (and need
`
`not under Garmin factor 2) explain its legal strategy for filing these particular IPR
`
`petitions. It suffices to point out that AIT’s assertion that the only conclusion to be
`
`drawn from the cited facts is that RPX is acting as an agent for Salesforce is flatly
`
`
`
`3
`
`

`
`contradicted by the very evidence AIT relies on. This evidence does not meet
`
`Garmin’s requirement to show beyond AIT’s speculation that discovery will
`
`produce anything useful in showing that Salesforce is an RPI.
`
`AIT Mischaracterizes RPX’s Business Model
`
`1.
`The evidence refutes AIT’s assertion that the only conclusion to be drawn
`
`from RPX’s business model is that RPX filed the IPR petitions as an agent of
`
`Salesforce. AIT cobbles together disparate quotes selected out of context from
`
`three public documents in misrepresenting that the “essence” of RPX’s business is
`
`to serve as an extension of a client’s in-house legal team by representing clients
`
`accused of infringement and acting as their proxy to clear liability by attacking the
`
`asserted patents. Mot. at 1.
`
`RPX offers solutions to companies to mitigate and manage patent risk and
`
`expense. Ex. 2008 at 3. “The core of [RPX’s] solution is defensive patent
`
`aggregation” in which RPX acquires patents that are or may be asserted against
`
`current or prospective clients and licenses them to its clients. Id. Serving as an
`
`extension of a client’s in-house legal team does not refer to attacking patents, but
`
`to RPX sharing insight about the patent market with the “client’s in-house legal
`
`team to better inform its long-term IP strategy.” Ex. 2006. For an annual
`
`subscription fee, the benefits RPX clients receive include: reduced risk of patent
`
`litigation because RPX buys and licenses patents that may otherwise be asserted
`
`
`
`4
`
`

`
`against clients; a cost-effective license based upon the client’s historical financial
`
`results; and reduced costs for managing patent risk because clients supplement
`
`their internal resources with RPX’s knowledge and experience. Ex. 2008 at 4.
`
`The cited materials’ reference to RPX “clear[ing]” liability for its clients
`
`does not refer to attacking patents, but to RPX acquiring “a license to the litigated
`
`patent and selectively clear[ing] our clients from the suit.” Ex. 2007. The
`
`reference to “challenging patents” is described as a “complementary solution”. Ex.
`
`2008 at 4. AIT cannot meet Garmin’s requirement to provide evidence tending to
`
`show that Salesforce engaged RPX to attack the AIT patents because it did not.
`
`The reference to RPX acting as an agent or proxy for its clients relates to
`
`special circumstances (e.g., a patent relevant to few RPX clients) called
`
`“syndicated acquisition” where RPX may act “as an agent to acquire patent rights
`
`… on behalf of clients who are paying for such rights separately from their
`
`subscription arrangements.” Id. at 26, 53. AIT’s attempt to tie this entirely
`
`unrelated agent/proxy relationship to challenging patents (Mot. at 1) is misleading.
`
`The cited RPX materials reveal that RPX is a business with many different
`
`aspects that provide incentives for RPX to file IPRs to serve its own interests,
`
`including supporting its patent rights acquisition program which had already
`
`deployed over $500 million of RPX’s capital by the end of 2013. Ex. 2008 at 5. In
`
`RPX’s negotiations for patent rights, RPX’s demonstrated history of filing high
`
`
`
`5
`
`

`
`quality IPRs as an alternative way to remove patents from the market may provide
`
`leverage in reaching agreement on valuation with owners of patents of
`
`questionable validity. RPX also offers NPE insurance as a complementary service.
`
`Id. at 4. As an insurer, RPX may have an independent interest in proactively
`
`reducing its potential exposure from insured clients being sued on invalid patents.
`
`The overly broad patents at issue here are clearly invalid and owned by an
`
`NPE that has shown a willingness to assert them against the industry. It is unlikely
`
`that only Salesforce will be forced to defend itself if these invalid patents are left
`
`unchallenged. The very evidence AIT relies upon illustrates numerous reasons
`
`why RPX might further its own independent interests by challenging such patents.
`
`AIT Mischaracterizes RPX’s History In Filing IPRs
`
`2.
`RPX has filed 19 petitions against 8 different patent owners and expects to
`
`file many more. When RPX files a petition alone, its clients are not RPIs. RPX v.
`
`Macrosolve, IPR 2014-00140 (Paper 9 at 3-4) (“Mere membership in petitioner
`
`RPX Corporation, however, does not demonstrate the requisite control over
`
`petitioner by the alleged unnamed real parties-in-interest.”). This is consistent
`
`with (1) the TPG’s explanation of how RPI is handled for trade associations (TPG
`
`at 48,760) ; (2) Board decisions deemphasizing any relationships between parties
`
`unrelated to the IPR (TRW, IPR 2015-00950, Paper No. 8 at 6 (“The key inquiry is
`
`‘the relationship between a party and a proceeding” rather than “the relationship
`
`
`
`6
`
`

`
`between parties” (emphasis in original)); and (3) the Board’s handing of petitions
`
`filed by Unified Patents where its members are not RPIs absent evidence of
`
`specific involvement in the IPR (Unified v. Dragon, IPR 2014-01252, Paper 37 at
`
`12-13; Unified v. Hall, IPR 2015-00874, Paper 11 at 3-4).
`
`When RPX works with another party to file an IPR petition, the other party
`
`is named an RPI. See IPR 2014-00946, IPR 2015-01823 and IPR 2016-00003.
`
` Contrary to AIT’s misrepresentations, the Board in ParkerVision did not
`
`find that RPX was acting as a proxy for a concealed RPI, and no “procedural
`
`posture” prevented the Board from addressing RPI. Mot. at 2-3. The patent owner
`
`response stated that “Consistent with an e-mail from the Board … depending on
`
`the results of the additional discovery … patent owner will seek Board permission”
`
`to brief RPI. IPR 2014-00946, Paper 27 at 1-2. The Board specifically invited the
`
`patent owner to revisit the RPI issue if the discovery proved fruitful, but the patent
`
`owner did not because, as RPX had represented, discovery revealed no other RPI.
`
`VirnetX, IPR 2014-00171 (Paper 49), and the related IPRs (collectively
`
`“VirnetX”) was an early case on previously unsettled RPI law and was an outlier.
`
`None of RPX’s other filings has been found to involve an unnamed RPI. The facts
`
`the Board focused on in VirnetX are not present here. There, the Board found that
`
`Apple paid RPX to file IPRs as part of a “newly created program.” VirnetX at 4.
`
`Salesforce is not part of any such program and AIT cites no evidence that it is.
`
`
`
`7
`
`

`
`The Board also found that RPX used “Apple’s expert” and “Apple’s law firm” to
`
`file a petition with “substantially identical” grounds to Apple’s. Id. at 6-7. Here,
`
`Salesforce’s previously filed CBMs used different counsel, a different expert and
`
`different prior art grounds. VirnetX simply does not apply.
`
`AIT’s Remaining “Evidence” Is Innocuous
`3.
`That RPX has not been sued by AIT (Mot. at 6) is “unremarkable.” Unified
`
`v. Dragon, Paper 37 at 13. Being sued is not a requirement for IPR.
`
`The fact that a single board member, one of 11 for Salesforce (Ex. 2010) and
`
`6 for RPX (Ex. 2009), overlaps between public companies is also unremarkable.
`
`Mr. Robertson has had significant involvement in over 500 technology companies
`
`(Ex. 2009) and AIT has no evidence that Mr. Robertson is even aware of the filing
`
`of these IPRs, let alone that he caused RPX to file them on Salesforce’s behalf.
`
`Absent evidence of involvement in or directing the filing of the petition, a common
`
`director is not evidence of any “useful” discoverable information. Global, IPR
`
`2015-01220, Paper 18 at 9; Butamax, IPR 2013-00214, Paper 11 at 4.
`
`The fact that the CEOs of Salesforce and RPX belong, along with more than
`
`30 others (Ex. 2012), to a common organization, and that the companies are
`
`housed in different proximate buildings, makes it no more “natural to expect” that
`
`they have engaged in “covert communications” (Mot. at 7-8) than any other two
`
`parties with access to a phone. AIT’s “evidence” of ways in which parties could
`
`
`
`8
`
`

`
`communicate is not evidence that they did so.
`
`C. Conclusion - Discovery Should Be Denied Outright
`Salesforce does not fund, control or have the ability to control these IPRs.
`
`
`
`AIT has no evidence of any involvement by Salesforce, and its motion admits as
`
`much - AIT needs discovery “to determine whether” Salesforce is an RPI. Mot. at
`
`5. AIT’s discovery requests are based entirely on erroneous speculation
`
`unsupported by the evidence Garmin requires. The request should be denied.
`
`II. ANY DISCOVERY GRANTED SHOULD BE MORE NARROWLY
`TAILORED PURSUANT TO GARMIN FACTORS 1-5
`
`Any granted discovery must comply with Garmin factors 1-5 (“F1-F5”) and
`
`be narrowly tailored to “useful” information evaluated in determining RPI –
`
`control, ability to control, funding and the relationship of Salesforce to the IPR
`
`proceedings. AIT’s proposed requests (“Req1-Req10”) are not at all so tailored.
`
`Req1 is overbroad in seeking aspects of a relationship that are unrelated to
`
`the proceedings and therefore not “useful” (F1). TRW, Paper No. 8 at 6.
`
`Req2 seeks irrelevant information about billings unrelated to the
`
`proceedings. Any IPR billings are covered by Req7; no others are “useful” (F1).
`
`Req3 is overbroad and burdensome (F5) in seeking communications relating
`
`to litigation to which RPX is not a party. Such information was excluded from
`
`discovery in ParkerVision. IPR2014-00946, Paper 25 at 7. Req4 likewise is
`
`overbroad. Communications relating to the IPRs, excluding privileged
`
`
`
`9
`
`

`
`communications, are covered by other requests and nothing else is “useful” (F1).
`
`Req5 – AIT does not explain why communications with other third parties
`
`are “useful” in making Salesforce an RPI, and has no evidence that any exist (F1).
`
`Req6 improperly seeks the strategic reasons why RPX filed these petitions
`
`(F2). AIT cites no authority establishing that a reason or motive for filing an IPR
`
`petition is “useful” in determining RPI (F1), and strategic reasons for filing are
`
`privileged and “litigation positions” not discoverable under F2, as Garmin is clear
`
`that “litigation” refers to the IPR proceeding itself. Garmin at 6 and 13.
`
`Req8 is not directed to “useful” information as explained above (F1), AIT
`
`presents no evidence that any such documents exist (F1), and the request is overly
`
`burdensome on an outside director uninvolved in these proceedings (F5).
`
` Req9 - the relationship between another third party to a different proceeding
`
`is not “useful” to establish that Salesforce is an RPI in this proceeding (F1).
`
`Req10’s speculation that RPX must “shield its clients” from being an RPI is
`
`erroneous and AIT cites no evidence that such documents exist (F1).
`
`Attached are revised discovery requests, and a redline of AIT’s requests, that
`
`are more appropriately tailored. The revised requests would reveal any obligation
`
`of RPX to file the IPRs for Salesforce and any communications between RPX and
`
`Salesforce relating to the IPRs (which would address control of the IPRs), and any
`
`documents relating to funding by Salesforce of the IPRs. Nothing else is “useful.”
`
`
`
`10
`
`

`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`
`It is hereby certified that on this 9th day of October, 2015, a copy of the
`
`foregoing document was served via electronic mail, as previously consented to by
`
`Patent Owner upon the following counsel of record:
`
`Steven C. Sereboff (Reg. No. 37,035)
`M. Kala Sarvaiya (Reg. No. 58,912)
`SoCal IP Law Group LLP
`310 N. Westlake Boulevard, Suite 120
`Westlake Village, CA 91362
`uspto@socalip.com
`
`
`
`/Richard F. Giunta/
`Richard F. Giunta
`
`
`
`Date: October 9, 2015
`
`
`
`11

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