Paper No. __
`
`Filed on behalf of Petitioner
`By:
`/Richard F. Giunta/
`
`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
`
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`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 REDACTED MOTION FOR SANCTIONS
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in the
`heading.
`
`
`
`Filed on behalf of Petitioner
`By:
`/Richard F. Giunta/
`
`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 REDACTED MOTION FOR SANCTIONS
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in the
`heading.
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`I.
`
`THE FACTS .................................................................................................... ..1
`
`II. AIT WAS BOUND BY THE TERMS OF THE PROTECTIVE
`
`ORDER ............................................................................................................ ..7
`
`THE FACTS ...................................................................................................... 1
`I.
`II. AIT WAS BOUND BY THE TERMS OF THE PROTECTIVE
`ORDER .............................................................................................................. 7
`III. DISCLOSURE TO UNAUTHORIZED RECIPIENTS .................................... 7
`IV. AIT VIOLATED THE BOARD’S ORDER ..................................................... 9
`V.
` ...................10
`V. ................. -10
`VI. HARM TO RPX ..............................................................................................11
`VII. THE BOARD HAS THE AUTHORITY TO SANCTION AIT .....................12
`VIII. REQUESTED SANCTIONS ..........................................................................14
`VIII. REQUESTED SANCTIONS ........................................................................ ..14
`
`
`
`III. DISCLOSURE TO UNAUTHORIZED RECIPIENTS .................................. ..7
`
`IV. AIT VIOLATED THE BOARD’S ORDER ................................................... ..9
`
`VI. HARM TO RPX ............................................................................................ ..11
`
`VII. THE BOARD HAS THE AUTHORITY TO SANCTION AIT ................... .. 12
`
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`i
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`TABLE OF AUTHORITIES
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`CASES
`Euro-Pro v. Acorne Enters.,
`IPR2014-00353, Paper 37 ....................................................................................13
`
`Intri-Plex Technologies v. Saint-Gobain,
`IPR2014-00309, Paper 84 ....................................................................................14
`
`Iron Dome v. Chinook,
`IPR2014-00674, Paper 7 ......................................................................................13
`
`RULES
`
`77 Fed. Reg. at 48769-48770 ...................................................................................14
`
`77 Fed. Reg. at 48771 ................................................................................................ 7
`
`REGULATIONS
`
`37 C.F.R. §42.10 ......................................................................................................13
`
`37 C.F.R. §42.14(a) ..................................................................................................12
`
`37 C.F.R. §42.14(b) .................................................................................................12
`
`
`
`ii
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`AIT repeatedly breached its agreement to comply with the default protective
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`order (PO) resulting in RPX confidential information being exposed to
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`unauthorized individuals
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`. Incredibly, the most recent breach
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`occurred after RPX had already explained to AIT the initial breaches, what AIT
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`needed to do to comply and the sensitivity of RPX’s confidential information.
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`Contrary to AIT’s brazen suggestion that RPX will not obtain sanctions because
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`harm will be difficult to prove, the sanctions requested are narrowly tailored to
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`address very real harm, including unauthorized disclosure to individuals regularly
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`involved in patent assertions by non-practicing entities (“NPEs”) and
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`
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` of highly confidential information of RPX
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`
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`The scope of the breaches remains unclear because AIT failed to provide the
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`information necessary to comply with the Board’s Order (Paper 23). This was the
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`latest in a long string of AIT actions that disregard the Board’s rules, its order and
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`the PO. RPX seeks sanctions to (1) compel AIT to identify the scope of the
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`breach; (2) protect RPX’s confidential information going forward; and (3)
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`compensate RPX for significant expense incurred in addressing AIT’s violations.
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`I.
`
`THE FACTS
`
`AIT agreed to abide by the Board’s standard PO before the Board call
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`seeking discovery. Ex. 1026. 2 AIT’s lead counsel Mr. Sereboff provided RPX
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`2 Citations are to the Exhibit numbers used in IPR2015-01750 and IPR2015-01751.
`1
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`with his signed acknowledgement of the PO prior to RPX’s production. Ex. 1027.
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`Subsequently, RPX emphasized to AIT that the PO limits access “to certain
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`individuals (parties, party representatives, experts and in-house counsel) who have
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`executed the acknowledgement.” Ex. 1028.
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`On November 27, AIT informed RPX that it would file its Preliminary
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`Patent Owner Response (PPOR) in IPR2015-01750 that day and would “protect
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`RPX’s confidential information.” Ex. 1030. AIT filed the PPOR late that day
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`along with a motion to seal it and requesting entry of the PO.
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`When RPX reviewed AIT’s filing it learned for the first time that its
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`confidential information had been shared with Messrs. Sturgeon, Boebel and
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`Knuettel, and
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` Ex. 1031; Ex. 1046. The
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` disclosure
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`included highly sensitive information, including
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`Ex. 1020 at §9.9.
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` PPOR at 9-10.
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`The day after AIT’s filing, RPX informed AIT of “protective order
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`2
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`
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`violations that need to be addressed immediately in the ‘111 IPR and any future
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`filings in the ‘111 and other IPRs.” Ex. 1031.
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`
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`Id. RPX also asked AIT to identify, for each of Messrs. Sturgeon, Boebel and
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`Knuettel, which of provisions 2(A)-(G) of the PO AIT believed authorized their
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`access to RPX’s confidential information. Id.
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`AIT responded that it would
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` AIT also alleged that RPX had
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`been “aggressive in its designation” but identified nothing specific. AIT asserted
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`that as president of AIT Sturgeon qualified as a “party” under the PO, that Boebel
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`is AIT’s counsel in the Salesforce litigation and that Knuettel was “an advisor to
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`AIT regarding the IPRs.” Id. Sereboff asked if RPX would consent to the
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`disclosure to Boebel and Knuettel and represented that they were provided with
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`access only to the PPOR and its three exhibits. Id. Those exhibits included Ex.
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`RPX responded the same day rejecting the alleged justifications for
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` PPOR at 10.
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`3
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`2018
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`
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`
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`providing access to Sturgeon, Boebel and Knuettel and refusing AIT’s belated
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`request for access. Ex. 1029. RPX explained the need to understand the scope of
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`the disclosure and asked if AIT would provide sworn declarations from these
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`individuals confirming what confidential information they received, that they had
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`destroyed it and that they had not and would not use it for any purpose. Id. RPX
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`also informed AIT that its certificate of service for the PPOR was inaccurate. Id.
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`4
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`AIT filed its PPOR in the two other proceedings later on Monday
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`(November 30) and represented that the RPI sections were substantively identical
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`to its prior Friday filing. PPORs in 01751 and 01752 at fn. 1. AIT falsely certified
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`that these papers were served on RPX the same day, as they were not served until
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`
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`
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`almost 9 AM EST the next day. Ex. 1036.
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` RPX also (the day after AIT filed) notified AIT of the
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` false service certification. Ex. 1038.
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`RPX subsequently received an email from Sarvaiya, who has been counsel
`
`of record throughout, was copied on all correspondence discussed above and
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`signed the PO acknowledgment. She stated that
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`5
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`Subsequently, the Board ordered (Paper 23) AIT to provide declarations
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`from Boebel and Knuettel “regarding the specific extent of Petitioner’s
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`confidential information to which they were provided access.” AIT provided
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`declarations (Ex. 1040-1041), but as RPX explained to AIT, they are deficient
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`because
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` Ex. 1042. AIT’s counsel Pearce stated
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` Ex. 1043.
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`6
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`
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`II. AIT WAS BOUND BY THE TERMS OF THE PROTECTIVE ORDER
`RPX reasonably relied on the TPG’s statement that the default “Standing
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`Protective Order will be automatically entered into the proceeding upon the filing
`
`of a petition.” PO. 77 Fed. Reg. at 48771; see also Id. at 48769 (“Absent such
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`agreement, the default standing protective order will be automatically entered.”).
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`RPX appreciates the Board’s guidance and filed the PO as Ex. 1017 pursuant to the
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`Board’s request. Paper 23 at 3. The Board correctly found that prior to RPX
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`providing any confidential information to AIT, the parties agreed that the PO
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`applied to these proceedings. Paper 23 at fn. 3. Only well after breaching its terms
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`and being faced with potential sanctions did AIT belatedly question whether the
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`PO applies. AIT’s advancing of such an “excuse” highlights its awareness of the
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`severity of its breach. As explained in §I supra, AIT agreed to be bound by the PO
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`and its counsel signed the acknowledgement agreeing to “abide by its terms.” AIT
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`was obligated to protect RPX’s confidential information under the terms of the PO.
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`III. DISCLOSURE TO UNAUTHORIZED RECIPIENTS
`The PO limits access to specified individuals, including parties,
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`representatives of record and in-house counsel of a party. Ex. 1017 at §2. Other
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`employees or consultants of a party are granted access “only upon agreement of the
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`parties or by order of the Board.” Id. at §2(E). Sturgeon, Boebel and Knuettel
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`were not authorized recipients. AIT asserts that
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`7
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` Ex. 1039. Given that AIT did not receive
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`RPX’s agreement or a Board order, AIT’s
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` is an admission that it
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`breached its agreement to follow the PO. Counsel’s statement that
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`
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` is extraordinary. Id.
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`Disclosure to Boebel and Knuettel was egregious given their regular
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`involvement in NPE litigations. Boebel is AIT’s counsel in the Salesforce
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`litigation and often represents NPEs in litigation, while Knuettel is the CFO of
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`Marathon Patents, the #3 NPE by volume in 2014 (over 100 litigations filed), with
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`expertise in financing litigations. Ex. 1044-1045; Ex. 1049 at 30. RPX’s core
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`business deals with NPE litigation. Individuals that are regularly involved in and
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`finance NPE assertions head the list of those that should not have access to RPX’s
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`confidential information. RPX never would have consented to these disclosures.
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`There is no justification for Boebel or Knuettel receiving confidential information
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`alleged to be relevant only to RPI, and RPX is concerned that its information will
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`be used for other purposes.
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` AIT’s assertion that Sturgeon
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` is refuted by AIT’s own
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`mandatory notices. Ex. 1033. He is another “other employee” under §2(E) given
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`access without RPX’s agreement or Board order in violation of the PO. In seeking
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`authorization for this motion, RPX focused on the disclosures to individuals
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`outside AIT that seemed more troubling. However, the declaration from Boebel
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`8
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`
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`reveals that
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` Ex. 1040.
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`That heightens RPX’s concern about the disclosure to Sturgeon.
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`IV. AIT VIOLATED THE BOARD’S ORDER
`The Board ordered AIT to provide declarations from Boebel and Knuettel
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`“regarding the specific extent of Petitioner’s confidential information to which
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`they were provided access” to allow RPX to understand the scope of the breach
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`before filing this motion. Paper 23. The declarations AIT provided are deficient.
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` Ex. 1043. Nothing in the declarations support that. Ex.1040-1041.
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`The Board ordered sworn testimony from the recipients about the scope of the
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`breach. Representations from AIT’s counsel are no substitute, particularly given
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`counsel’s repeated and reckless actions respecting RPX’s confidential information
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`and its history of making demonstrably false assertions. §VI infra.
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` Other qualifiers in the declarations are concerning.
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` Ex. 1041.
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`The declarations also fail to identify the specific RPX confidential
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`
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`9
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`information provided to these individuals. The declarants both state that they
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` and Boebel states that he
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` The declarants fail to explain
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` The declarants do not explain the
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`“specific extent of Petitioner’s confidential information to which they were
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`provided access” as ordered by the Board.
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`Ex. 1043. Again, Counsel’s representation is not what the Board ordered. Given
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`the conflicting representations AIT’s counsel have made, RPX should be provided
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`with the sworn testimony the Board ordered explaining, inter alia, whether any
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`exhibits were provided to Boebel or Knuettel. Cf. Ex. 1033 and Ex. 1039.
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`10
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`VI. HARM TO RPX
`Although the precise scope of the harm remains unknown due to AIT’s non-
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`compliant declarations, RPX was undoubtedly harmed by the improper disclosure
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`to Boebel and Knuettel. §III, supra. Depending on which AIT representation (if
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`any) will prove accurate, those individuals may have had access to
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`
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` Cf. Ex. 1033 and Ex. 1039. Given their
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`
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`involvement with NPE litigations, Boebel and Knuettel had no business being
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`provided with access to any RPX confidential information and could improperly
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`use it to
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`11
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`RPX has also been harmed by the time and expense incurred in addressing
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`the breaches. That process has been exacerbated by AIT’s lack of candor and
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`accountability, AIT’s service failures and its changing stories. §I, supra.
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`VII. THE BOARD HAS THE AUTHORITY TO SANCTION AIT
`The Board may impose sanctions for “failure to comply with an applicable
`
`rule or order,” “abuse of discovery” or “any other improper use of the proceeding,
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`including actions that harass or cause unnecessary delay or an unnecessary increase
`
`in the cost of the proceeding.” 37 C.F.R. §42.14(a). Sanctions may include
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`“expunging or precluding a party from filing a paper” and an “order providing for
`
`compensatory expenses, including attorney fees.” Id. at §42.14(b). In imposing
`
`
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`12
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`
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`sanctions, the Board has considered repeated misconduct including failure to
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`comply with the rules and actions causing unnecessary inconvenience to “the
`
`panel, Board staff, and/or opposing counsel.” Euro-Pro v. Acorne Enters.,
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`IPR2014-00353, Paper 37 at 3.
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`In addition to its noncompliance detailed above, AIT has repeatedly violated
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`the rules (e.g., withdrawing counsel in violation of §42.10, failing to comply with
`
`its service obligations - many exhibits and PO acknowledgments were never
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`served, and requesting sanctions in its PPOR in violation of §42.20(b) and Iron
`
`Dome v. Chinook, IPR2014-00674, Paper 7). AIT’s counsel purportedly made
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` representations to counsel (Ex. 1039), as well as false representations
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`to the Board, including a false certification of service (Ex. 1036) and numerous
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`false factual assertions in its PPOR refuted by evidence AIT withheld from the
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`Board. Cf. Paper 21, Paper 28. Additionally, in seeking discovery under Garmin,
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`AIT represented as fact “that Salesforce has been an RPX client for some time and
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`that Salesforce has paid RPX millions of dollars” (Discovery Mot. at 5),
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` Ex. 1035. AIT’s repeated
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`misconduct has caused tremendous inconvenience to RPX and the Board.
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`The Board has the authority to enter a PO that differs from the default PO, to
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`provide remedies for a PO breach and to “impose sanctions on a party and a party’s
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`
`
`13
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`
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`representative for any violations of its terms.” 77 Fed. Reg. at 48769-48770.
`
`“The need to promote respect for, and meticulous observance of protective orders,
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`and to deter others from similar conduct remains an important objective.” Intri-
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`Plex Technologies v. Saint-Gobain, IPR2014-00309, Paper 84 at 6. AIT’s
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`“observance” of the PO has been far from meticulous. Its violation in providing
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`confidential information to unauthorized individuals was clear from a cursory
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`review of the PO, and
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`
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` was egregious.
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`VIII. REQUESTED SANCTIONS
`RPX requests three types of sanctions to serve the different purposes of (1)
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`identifying to RPX and the Board the scope of the breach, (2) protecting RPX’s
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`confidential information going forward, and (3) compensating RPX for attorney
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`fees incurred in addressing AIT’s breaches.
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`On point (1) RPX requests that the Board order AIT to provide declarations
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`from all three unauthorized individuals (Boebel, Knuettel and Sturgeon) that
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`provide complete and unqualified explanations of all RPX confidential information
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`they were exposed to via any means (documents, oral or otherwise), swear that the
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`declarant has destroyed that information and any copies, explain any uses of that
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`information to date, and swear to not use it for any purpose going forward.
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`On point (2) RPX requests entry of the revised protective order attached as
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`14
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`
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`Ex. 1047 (redline at Ex. 1048) that limits access to confidential information to
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`attorneys of record in these proceedings and prohibits AIT from making any public
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`filing referencing RPX’s confidential information without RPX’s prior approval.
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`On point (3) RPX requests an award of attorneys’ fees,
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`, in connection with the breaches, including the
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`fees for preparing this motion.
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`The requested sanctions are measured and proportionate to the suffered
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`harm. The requested declarations are nothing more than what
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` Ex. 1039. The amended PO imposes reasonable
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`safeguards in view of AIT’s actions to date. The requested attorneys’ fees only
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`cover work after AIT’s inexcusable
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` after it had
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`been fully apprised of the previous breaches. RPX remains uncompensated for
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`counsel’s work
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` in dealing with the initial breach, RPX’s own
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`time and effort and any and all harm to its client relationships and its business.
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`Finally, “removal” of Sereboff as named counsel is not a meaningful self-
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`sanction. Sarvaiya has been counsel of record throughout and was copied on all
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`communications. Responses from AIT’s three counsel (members of an eight
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`lawyer firm) on the PO violations have been lock-step and equally unsatisfactory.
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`Whether Sereboff is formally listed as lead counsel is immaterial and his
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`“removal” is no substitute for meaningful sanctions.
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`15
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`
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`It is hereby certified that on this 21st day of December 2015, a copy of the
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`foregoing document was served via electronic mail, as previously consented to by
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`Patent Owner upon the following counsel of record:
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`Steven C. Sereboff (Reg. No. 37,035)
`M. Kala Sarvaiya (Reg. No. 58,912)
`Jonathan Pearce (Reg. No. 60,972)
`SoCal IP Law Group LLP
`310 N. Westlake Boulevard, Suite 120
`Westlake Village, CA 91362
`uspto@socalip.com
`
`
`
`
`
`Date: December 21, 2015
`
`/Richard F. Giunta/
`Richard F. Giunta
`
`
`
`16
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