`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Elisabeth H. Hunt <Elisabeth.Hunt@WolfGreenfield.com>
`Thursday, November 15, 2018 4:46 PM
`Trials; Steve Sereboff; Rich Giunta
`Anneliese Lomonaco; RGiunta-PTAB@WolfGreenfield.com; RPritzker-
`PTAB@WolfGreenfield.com; EHunt-PTAB@WolfGreenfield.com; Bryan S. Conley;
`Jonathan Pearce
`RE: RPX Corp v Applications in Internet Time, IPR Nos. 2015-01750, 2015-01751,
`2015-01752 [SoCal IP file A213.L18F23]
`
`Follow Up Flag:
`Flag Status:
`
`Follow up
`Flagged
`
`Dear Board,
`
`Pursuant to the Board’s e‐mail below of November 9, the parties have conferred and submit the following proposals
`regarding procedure on remand. Below are:
`
`
`(1) a table summarizing the points of agreement and disagreement between the parties for each item of the
`proposed remand procedure;
`
`
`(2) a table of proposed due dates under each party’s proposed procedure; and
`
`
`
`(3) a textual list of points of agreement and disagreement.
`
`
`
`
`Table 1 – Points of Agreement/Disagreement regarding Remand Procedure
`
`
`Item of
`procedure:
`Opening brief by
`RPX
`(consolidated for
`all three
`proceedings)
`
`Points of
`agreement:
`Length
`14,000 words.
`
`
`
`
`
`
`
`
`Points of disagreement:
`RPX proposals:
`AIT proposals:
`Scope
`Scope
`Whether Salesforce is an
`The identity of any real
`RPI or privy of RPX under 35
`party or privy of the
`U.S.C. §315(b), which will
`petitioner under 35 U.S.C.
`also resolve whether
`§ 315.
`Salesforce is an unnamed
`
`RPI under §312(a)(2).
`
`
`1
`
`
`
`New Evidence
`None from RPX.
`
`
`Deadline
`3 weeks from Board’s
`Order.
`
`New Evidence
`AIT can submit publicly
`available documentary
`evidence.
`
`
`Deadline
`2 weeks from RPX’s brief.
`
`Deadline
`1 week from AIT’s
`responsive brief.
`
`
`New Evidence
` documentary and
`testimonial evidence
`responsive to factual
`questions raised in Fed.
`Cir. remand opinion
`(examples in the list of
`items below Table 2).
`
`
`
` documentary and
`testimonial evidence
`RPX will voluntarily
`provide responsive to
`AIT discovery requests
`RPX agrees are relevant
`to the remand
`proceeding (listed
`below Table 2).
`
` Any other discovery the
`Board may grant.
`
`
`Deadline
`1 month from Board’s
`Order.
`
`New Evidence
` Any evidence cited in
`RPX’s opening brief.
`
` Any discovery provided
`to AIT with RPX’s
`opening brief but not
`cited therein.
`
` Cross examination of
`any new testimonial
`evidence submitted
`with RPX’s opening
`brief.
`
`
`
`Deadline
`1 month from RPX’s brief.
`
`Deadline
`2 weeks from AIT’s
`responsive brief.
`
`
`2
`
`
`
`
`
`
`Responsive Brief
`by AIT
`(consolidated)
`
`Length
`Same as RPX
`opening brief.
`
`Reply by RPX
`(consolidated)
`
`Length
`7,000 words.
`
`Sur‐reply by AIT
`
`Only if authorized
`by the Board, due
`
`
`
`Oral hearing
`(consolidated)
`
`Board Decision
`
`in 1 week from
`authorization.
`Deadline
`2 weeks after RPX’s
`reply or AIT’s sur‐
`reply (if any).
`
`No agreement
`
`
`
`
`
`
`Deadline
`6 months from Mandate
`(April 30, 2019)
`
`
`Deadlines
`The Board should decide
`promptly whether to
`terminate the proceedings.
`AIT defers to the Board to
`choose its own deadline for
`this.
`AIT believes that if the
`Board does not terminate
`the proceedings, there
`should be another
`conference call to discuss
`further matters. AIT
`believes that there will be
`good cause to extend these
`proceedings for more than
`6 months from the
`remand.
`
`
`3
`
`
`
`Scope
`Whether Salesforce is an
`RPI or privy of RPX under 35
`U.S.C. §315(b), which will
`also resolve whether
`Salesforce is an unnamed
`RPI under §312(a)(2).
`If the Board finds Salesforce
`is not an RPI or privy, RPX
`believes the Board should
`reinstate the decisions on
`the merits of
`unpatentability from the
`vacated FWDs (Paper 80 in
`IPR2015‐01750 and
`IPR2015‐01752, and Paper
`82 in IPR2015‐01751).
`
`
`Scope
`If the Board does not
`terminate the proceedings
`on the evidence of record,
`the proceedings should
`proceed toward revised
`FWDs because the prior
`FWDs were vacated. AIT
`would like additional
`discovery as suggested by
`the CAFC related to RPX’s §
`315 and § 312 obligations.
`AIT expects that there will
`be discovery disputes
`because RPX believes that
`discovery should be limited
`to its relationship with
`Salesforce but AIT believes
`that RPX’s § 315 and § 312
`obligations under are not
`limited to Salesforce. After
`discovery, AIT believes that
`the parties should each
`have an opportunity for
`additional briefing on all
`issues.
`
`
`
`
`
`Table 2 – Proposed Due Dates (assuming the Board’s Order on the remand procedure issues
`November 21):
`
`
`Due:
`
`Date under RPX proposal:
`
`Date under AIT proposal:
`
`One month: December 21 (with
`evidence)
`One month: January 21 (with
`cross‐examination)
`Two weeks: February 4
`
`Week of February 18, if no sur‐
`reply by AIT
`April 30 (6 months from mandate)
`[none]
`[none]
`[none]
`
`Three weeks: December 12 (no
`evidence)
`Two weeks: December 26 (no
`evidence)
`One week: January 2
`One week, if authorized
`Week of January 14, if no sur‐reply
`by AIT
`At Board discretion, but promptly
`To be determined
`To be determined
`To be determined
`
`RPX Opening brief
`
`AIT Response
`
`RPX Reply
`AIT Sur‐Reply
`Oral hearing
`
`Board Decision
`Additional discovery
`Supplemental briefing
`Board decision on
`supplemental briefing
`
`
`
`
`
`4
`
`
`
`Textual List of points of agreement and disagreement between the parties on the remand
`procedure.
`
`Points of agreement
` The parties agree briefing should commence with issues related to 35 U.S.C. § 312 and 35 U.S.C. § 315 (RPI and
`privity).
` On the issues related to RPI and privity, the parties agree that consolidation of the three IPRs is appropriate.
` The parties agree that RPX should file the opening brief, AIT should file a response, and RPX should file a reply to
`AIT’s response. The parties agree that AIT would only file a sur‐reply if authorized by the Board after RPX files its
`reply.
` The parties agree on the following proposed word count limits: 14,000 words for RPX’s opening brief; the same
`limit for AIT’s response as for RPX’s opening brief; 7,000 words for RPX’s reply.
` The parties request an oral hearing.
`
`
`Points of disagreement
`
`1) The parties disagree as to scope of the remand.
`a) RPX believes the Federal Circuit’s majority opinion remanded only the issue of whether Salesforce is a real party
`in interest (“RPI”) under § 315(b), and invited the Board to also consider whether Salesforce is a privy of RPX.
`b) AIT believes the Federal Circuit vacated the FWDs in their entirety. Therefore, §§ 312 and 315 are fully at issue
`without limitation to Salesforce, and the merits issues are also open. AIT proposes that if the Board does not
`terminate the cases after the briefing at the current stage, then the record on §§ 312 and 315 should be
`reopened so that AIT can pursue the full range of discovery urged by the Federal Circuit. AIT believes that after
`discovery, the parties should have an opportunity for supplemental briefing to address any new evidence that
`arose in discovery and other issues preserved through the appeals, including the merits of unpatentability.
`
`c) AIT further believes that the three proceedings should be consolidated for all purposes, not merely as to RPI and
`privity. Though the ‘111 patent will expire soon, AIT is agreeable to continuing to use BRI as the claim
`construction standard to further facilitate speedy resolution.
`
`2) The parties disagree as to submission of evidence.
`a) RPX proposes to submit with its opening brief documentary and/or testimonial evidence responsive to factual
`issues the Federal Circuit’s opinion suggests may warrant further analysis by the Board (examples listed below),
`where such evidence is available. RPX will make available for cross‐examination any declarant whose
`declaration is submitted with the opening brief.
`i) “[W]hether RPX files IPR petitions to benefit specific clients that previously have been accused of patent
`infringement.” Federal Circuit Opinion (“Op.”) at 27.
`ii) “RPX, unlike a traditional trade association, is a for‐profit company whose clients pay for its portfolio of
`‘patent risk solutions.’ … These solutions help paying members ‘extricate themselves from NPE lawsuits.’ …
`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.’ …
`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 is to benefit from this practice in
`the event they are sued by an NPE.” Op. at 27.
`iii) Whether “the circumstances surrounding RPX’s creation of its Best Practices Guide—none of which the
`Board considered—cast additional doubt on the company’s motivations.” Op. at 28.
`5
`
`
`
`iv) “Salesforce’s” “motivations.” Op. at 31.
`v) “[T]he Board never required RPX to assert or prove that ‘the industry at large’ would be impacted by or have
`an interest in these patents or these IPRs.” Op. at 31.
`vi) The Board should “examine critically” “RPX’s business model.” Op. at 33.
`vii) “[T]he relevance, in the context presented here, of the fact that Salesforce and RPX had overlapping
`members on their respective boards of directors.” Op. at 33.
`viii) Whether “the timing and content of the communications between RPX and Salesforce in relation to the
`Salesforce litigation and the denied CBM petitions” “indicate that RPX worked to ascertain, with a strong
`degree of confidence, its client’s desires, while taking last‐minute efforts to avoid obtaining an express
`statement of such desires.” Op. at 34‐35.
`ix) Timing of when RPX “identified the ‘482 and ‘111 patents as ‘good potential IPR candidates that aligned well
`with the selection criteria’ set forth in the Best Practices Guide.” Op. at 34.
`x) Whether “RPX had apparent authority to file the IPR petitions to benefit Salesforce, pointing to RPX’s public
`statement that its ‘interests are 100% aligned with those of [its] clients’ and to the timing of Salesforce’s
`substantial payments to RPX.” Op. at 39‐40.
`xi) “[W]hether Salesforce has purchased any insurance policies from RPX.” Concurrence (“Con.”) at 9.
`xii) Whether RPX’s “advertise[ment] that its ‘interest are 100% aligned with those of [its] clients,’ it could ‘serve
`as an extension of a client’s in‐house legal team,’ and it could ‘facilitat[e] challenges to patent validity’”
`create “an attorney‐client relationship.” Con. at 9.
`xiii) Whether there is “evidence to show that RPX’s interests conflict with Salesforce’s interests.” Con. at 12.
`b) RPX proposes, given the Concurrence’s mention (at 12) that the Board “denied AIT’s request for discovery into
`‘[d]ocuments discussing any efforts by RPX to shield its clients from being named as real parties in interest in
`inter parte [sic] reviews and covered business method reviews’,” that the Board order this discovery item;
`however, no responsive documents exist.
`c) RPX proposes voluntarily producing discovery responsive to those of AIT’s discovery requests communicated
`during the meet‐and‐confer that RPX agrees are relevant to the remanded issue, including the following:
`i) Communications and records of communications between RPX and Salesforce regarding AIT, any AIT patent,
`or post‐grant proceedings.
`ii) Communications between RPX and Salesforce regarding the issues of RPI and privity as related to post‐grant
`proceedings.
`iii) Payment records by Salesforce to RPX.
`iv) Agreements between RPX and Salesforce.
`d) AIT opposes RPX’s proposal because it believes that it misconstrues the Federal Circuit’s order, and allows AIT
`little opportunity to verify RPX’s new evidence. In the interest of speedy resolution, AIT proposes that briefing
`focus on the current evidence, with additional discovery deferred only if the Board does not terminate.
`
`e)
`
`If discovery is ordered, AIT proposes broader discovery than requested by RPX, specifically “the circumstances
`surrounding RPX’s creation of its Best Practices Guide—none of which the Board considered—cast additional
`doubt on the company’s motivations.” Op. at 28.
`
`3) The parties disagree as to timeline of the proposed schedule.
`a) RPX proposes 1 month for RPX’s opening brief (with evidence), 1 month for AIT’s response (with cross‐
`examination), 2 weeks for RPX’s reply, and oral hearing 2 weeks later, leaving over 2 months for the Board to
`prepare its decision before the goal of 6 months from the Mandate. RPX proposes that no further procedure is
`necessary.
`
`6
`
`
`
`b) AIT believes that a broader scope of additional evidence than what RPX proposes is appropriate, but is
`concerned that pursuing discovery will add many months to these proceedings. AIT believes that its proposal
`strikes a good balance by giving the Board an opportunity to terminate the proceedings promptly, but if that is
`not possible then to proceed with re‐opening them, including giving AIT time to take discovery on RPX and
`possibly others through document requests, interrogatories and depositions. This discovery will take time.
`
`c) AIT proposes 3 weeks for RPX’s opening brief (with no new evidence), 2 weeks for AIT’s response, and 1 week
`for RPX’s reply. AIT does not presume to give the Board a deadline on its opinion, and recognizes that the
`schedule also depends on whether the Board allows AIT to file a sur‐reply.
`d) AIT is concerned with the impact of the holiday season on the scheduling and urges relief to all involved with
`respect to the proposed schedules.
`
`
`
`The parties look forward to discussing the above in the conference call scheduled for Friday at 3:00 pm Eastern time.
`AIT’s counsel has been impacted by the California fires, and one of its attorneys will be calling in from New Delhi, India at
`1:30 am local time.
`
`
`
`From: Trials [mailto:Trials@USPTO.GOV]
`Sent: Friday, November 9, 2018 1:04 PM
`To: Steve Sereboff <SSereboff@socalip.com>; Giunta, Richard F. <Rich.Giunta@WolfGreenfield.com>; Trials
`<Trials@USPTO.GOV>
`Cc: Anneliese Lomonaco <alomonaco@socalip.com>; PTAB Rich Giunta <RGiunta‐PTAB@WolfGreenfield.com>; PTAB
`Randy Pritzker <RPritzker‐PTAB@WolfGreenfield.com>; PTAB Elisabeth Hunt <EHunt‐PTAB@WolfGreenfield.com>;
`Conley, Bryan S. <Bryan.Conley@WolfGreenfield.com>
`Subject: RE: RPX Corp v Applications in Internet Time, IPR Nos. 2015‐01750, 2015‐01751, 2015‐01752 [SoCal IP file
`A213.L18F23]
`
`Counsel,
`
`The panel requests that the parties confer and send a joint email to Trials@uspto.gov by 5:00 PM ET on November 15
`outlining their proposal regarding procedure on remand, indicating the points on which the parties agree and those on
`which they disagree.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Steve Sereboff <SSereboff@socalip.com>
`Sent: Monday, November 5, 2018 1:41 PM
`To: Rich Giunta <Rich.Giunta@WolfGreenfield.com>; Trials <Trials@USPTO.GOV>
`Cc: Anneliese Lomonaco <alomonaco@socalip.com>; RGiunta‐PTAB@WolfGreenfield.com; RPritzker‐
`PTAB@WolfGreenfield.com; EHunt‐PTAB@WolfGreenfield.com; Bryan S. Conley <Bryan.Conley@WolfGreenfield.com>
`Subject: RE: RPX Corp v Applications in Internet Time, IPR Nos. 2015‐01750, 2015‐01751, 2015‐01752 [SoCal IP file
`A213.L18F23]
`
`7
`
`
`
`
`Dear Board,
`
`The parties have met and conferred about procedure and some specifics about discovery. The parties now wish to have
`a conference call with the Board to discuss the scope and order of the proceedings. The parties suggest November 15 or
`16 at any time, with November 15 preferred by the parties.
`
`/Steven C. Sereboff/
`ph +1 (805) 230‐1356
`mobile +1 (805) 279‐0074
`SoCal IP Law Group LLP
`www.socalip.com
`1332 Anacapa St., Suite 201, Santa Barbara, CA 93101
`310 N. Westlake Blvd., Suite 120, Westlake Village, CA 91362
`ssereboff@socalip.com
`Skype steve.sereboff
`
`From: Steve Sereboff
`Sent: Tuesday, October 30, 2018 2:18 PM
`To: Rich Giunta <Rich.Giunta@WolfGreenfield.com>; Trials@uspto.gov
`Cc: Anneliese Lomonaco <alomonaco@socalip.com>; RGiunta‐PTAB@WolfGreenfield.com; RPritzker‐
`PTAB@WolfGreenfield.com; EHunt‐PTAB@WolfGreenfield.com; Bryan S. Conley <Bryan.Conley@WolfGreenfield.com>
`Subject: RE: RPX Corp v Applications in Internet Time, IPR Nos. 2015‐01750, 2015‐01751, 2015‐01752 [SoCal IP file
`A213.L18F23]
`
`December 2? I meant November 2.
`
`/Steven C. Sereboff/
`ph +1 (805) 230‐1356
`mobile +1 (805) 279‐0074
`SoCal IP Law Group LLP
`www.socalip.com
`1332 Anacapa St., Suite 201, Santa Barbara, CA 93101
`310 N. Westlake Blvd., Suite 120, Westlake Village, CA 91362
`ssereboff@socalip.com
`Skype: steve.sereboff
`
`From: Rich Giunta <Rich.Giunta@WolfGreenfield.com>
`Sent: Tuesday, October 30, 2018 2:01 PM
`To: Steve Sereboff <SSereboff@socalip.com>; Trials@uspto.gov
`Cc: Anneliese Lomonaco <alomonaco@socalip.com>; RGiunta‐PTAB@WolfGreenfield.com; RPritzker‐
`PTAB@WolfGreenfield.com; EHunt‐PTAB@WolfGreenfield.com; Bryan S. Conley <Bryan.Conley@WolfGreenfield.com>
`Subject: RE: RPX Corp v Applications in Internet Time, IPR Nos. 2015‐01750, 2015‐01751, 2015‐01752 [SoCal IP file
`A213.L18F23]
`
`Dear Board,
`
`Petitioner had been awaiting the mandate from the Federal Circuit (which did not issue until today) before meeting and
`conferring with Patent Owner on a proposed procedure for the remand as specified in Standard Operating Procedure
`(SOP) 9.
`
`Petitioner notes that the date (December 2) Patent Owner’s below email proposes for a call with the Board is
`a Sunday, and falls outside the one month period within which SOP 9 states a teleconference should take
`place after the mandate.
`
`8
`
`
`
`
`Petitioner will meet and confer with Patent Owner and the parties will jointly propose one or more alternative
`times for the teleconference.
`
`Respectfully Submitted,
`
`Richard F. Giunta
`Shareholder
`rgiunta@wolfgreenfield.com
`direct dial 617.646.8322
`
`Wolf Greenfield
`Specialists in Intellectual Property Law
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, Massachusetts 02210-2206
`617.646.8000 | 617.720.2441 fax
`http://www.wolfgreenfield.com
`
`****************************************************************************************
`This e-mail message and any attachments may contain confidential or privileged information. If you are not the intended
`recipient, please notify me immediately by replying to this message and destroy all copies of this message and any
`attachments. Thank you.
`
`******************************************************************************************
`
`
`
`
`
`
`From: Steve Sereboff [mailto:SSereboff@socalip.com]
`Sent: Tuesday, October 30, 2018 12:18 AM
`To: Trials@uspto.gov
`Cc: Anneliese Lomonaco <alomonaco@socalip.com>; PTAB Rich Giunta <RGiunta‐PTAB@WolfGreenfield.com>; PTAB
`Randy Pritzker <RPritzker‐PTAB@WolfGreenfield.com>; EHunt‐PT <AB@wolfgreenfield.com>
`Subject: RPX Corp v Applications in Internet Time, IPR Nos. 2015‐01750, 2015‐01751, 2015‐01752 [SoCal IP file
`A213.L18F23]
`
`On October 30, 2018, the Court of Appeals for the Federal Circuit remanded these three cases back to the Board. The
`Federal Circuit vacated the final written decision in each of the cases, as shown in the attached opinion.
`
`The undersigned, lead counsel for the Patent Owner, requests a conference call with the Board to discuss procedure on
`remand. Might the judges be available on December 2? I suggest 10:30 am ET, but other times are open.
`
` I
`
` have made two recent inquiries with counsel for the petitioner to discuss this but received no response. I presume,
`however, that the petitioner remains interested in these cases. After the CAFC panel decision, petitioner sought
`rehearing en banc, though this was denied one week ago.
`
`/Steven C. Sereboff/
`ph +1 (805) 230‐1356
`mobile +1 (805) 279‐0074
`SoCal IP Law Group LLP
`www.socalip.com
`
`9
`
`
`
`1332 Anacapa St., Suite 201, Santa Barbara, CA 93101
`310 N. Westlake Blvd., Suite 120, Westlake Village, CA 91362
`ssereboff@socalip.com
`Skype: steve.sereboff
`
`
`10
`
`