`
`Filed on behalf of Petitioner by:
`
`Richard F. Giunta, Reg. No. 36,149
`
`Elisabeth H. Hunt, Reg. No. 67,336
`
`Randy J. Pritzker, Reg. No. 35,986
`
`WOLF, GREENFIELD & SACKS, P.C.
`
`600 Atlantic Avenue
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`Boston, MA 02210
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`617.646.8000
`
`Paper No. __
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`APPLICATIONS IN INTERNET TIME, LLC,
`Patent Owner.
`_____________
`
`IPR2015-01750
`Patent 8,484,111 B2
`
`IPR2015-01751
`IPR2015-01752
`Patent 7,356,482 B21
`_____________
`
`
`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING OF FINAL DECISION ON
`REMAND TERMINATING INSTITUTION
`
`1 This identical paper is being filed in each proceeding in the above heading the
`Board authorized the parties to use. Paper 116 at 3. Paper and Exhibit numbers
`used herein are from IPR2015-01750. Emphasis is added unless otherwise
`indicated and internal quotation marks and citations are omitted.
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`THE 11TH-HOUR PANEL CHANGE VIOLATED DUE PROCESS .......... 1
`THE BOARD OVERLOOKED AND MISAPPREHENDED THE
`EVIDENCE ..................................................................................................... 3
`A.
`RPX Does Not File for Clients Who Do Not Contract for That
`Service ................................................................................................... 4
`The Finding That RPX Files To Benefit Unnamed Clients Is
`Unsupported .......................................................................................... 7
`The Finding That RPX Takes Clients’ Interests into Account
`When Filing IPRs Is Unsupported ........................................................ 8
`III. THE BOARD ERRED IN FINDING THAT RPX WAS
`REPRESENTING SALESFORCE’S INTERESTS ...................................... 10
`A.
`The Board’s Fact Findings Are Unsupported ..................................... 11
`B.
`The Board Erred As a Matter of Law .................................................. 14
`IV. DISCRETIONARY DENIAL ....................................................................... 15
`
`
`
`B.
`
`C.
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) .............................................................................. 8
`Arthrex v. Smith & Nephew,
`941 F.3d 1320 (Fed. Cir. 2019) .............................................................................. 1
`Carry Cos. of Ill. v. N.L.R.B.,
`30 F.3d 922 (7th Cir. 1994) .................................................................................... 6
`Golden Bridge Tech. v. Nokia,
`527 F.3d 1318 (Fed. Cir. 2008) .............................................................................. 3
`Laganiere v. Bonte Spinning Co.,
`236 A.2d 256, 258 (R.I. 1967) ............................................................................... 6
`Legg v. Wyeth,
`428 F.3d 1317 (11th Cir. 2005) .............................................................................. 6
`Moles v. Regents of Univ. of California,
`654 P.2d 740 (Cal. 1982) ....................................................................................1, 3
`Thryv, Inc. v. Click-to-Call Techs., LP,
`140 S.Ct. 1367 (U.S. Apr. 20, 2020) .................................................................... 15
`STATUTES
`35 U.S.C. § 314(a) ................................................................................................... 15
`35 U.S.C. § 315(b) ..................................................................................................... 1
`REGULATIONS
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`
`ii
`
`
`
`
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`Pursuant to 37 C.F.R. § 42.71(d), RPX requests rehearing of the Board’s
`
`Decision Terminating Institution (Paper 125, public Paper 128, “Dec.”).
`
`I.
`
`THE 11TH-HOUR PANEL CHANGE VIOLATED DUE PROCESS
`Taking these cases away from the panel that oversaw them from inception—
`
`to be decided instead by judges who had them for less than a week and did not
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`participate at the oral hearing—was unprecedented and improper. Respectfully,
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`neither the justification in the panel change order, nor the different justification in
`
`the Decision (Dec., 6), warranted taking these cases away from the original panel
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`of highly experienced and well-respected judges who knew the record and were
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`more than capable of deciding cases that “raise important issues.” Paper 124, 2.
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`Due process required that these cases be decided by the panel that conducted
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`a pre-hearing conference to explain what issues and evidence those judges believed
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`were most critical to address (Ex. 1099), and participated at oral hearing. The only
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`authority RPX has found addressing repaneling a case after oral argument, for
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`different judges to make the fact-finding decision, questions whether that complies
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`with due process. E.g., Arthrex v. Smith & Nephew, 941 F.3d 1320, 1332 (Fed.
`
`Cir. 2019) (“It is not clear the Director has de-designation authority.” “[M]id-case
`
`de-designation of an APJ could create a Due Process problem.”); Moles v. Regents
`
`of Univ. of California, 654 P.2d 740, 742-43 (Cal. 1982) (“[T]he law and sound
`
`policy lead to one conclusion—a judge who has not participated in [oral argument]
`
`
`
`1
`
`
`
`
`
`may not be permitted to participate in the final decision and sign the opinion issued
`
`by that panel.... oral argument would be an empty right [] if it did not encompass
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`the right to have one’s case decided by the justices who heard the argument.”).
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`AIT’s theories were based on pure speculation, which RPX was tasked with
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`refuting. RPX disproved AIT’s principal speculation that RPX had no interest of
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`its own (Dec., 16, acknowledging RPX’s interest) and other speculative arguments
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`such as those based on allegedly “unusual” payments and a board member. Id., 21,
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`28-29. But as the Board noted, RPX was in the “unenviable position of having to
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`prove a negative.” Paper 112 (public Paper 123) (“Hearing Tr.”), 12. Thus, it was
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`critical for RPX to understand which (if any) of AIT’s incorrect speculative
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`arguments about RPX’s business and actions might gain traction, so RPX could
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`explain where the record refuted them. RPX raised this point and was assured the
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`Board would voice any concerns at oral hearing. Ex. 1099, 6-7. The parties were
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`instructed to identify at oral hearing the “record evidence that supports those facts
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`that you think best support your position.” Id., 5. RPX did just that and addressed
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`the few questions the judges raised. AIT did not; it identified no evidence as
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`“best” supporting its position, instead pointing to the “absence of evidence” from
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`Salesforce, leaving the panel “unsatisif[ied].” Hearing Tr., 37-39; also id., 61-63.
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`The new panel’s decision views differently the same evidence the original
`
`panel considered, including public documents (RPX’s website and SEC filing)
`
`
`
`2
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`
`
`
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`which have nothing to do with filing IPRs. Paper 60, 9; § II.A below. The panel
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`that spent years with the cases never expressed skepticism of the credibility of
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`RPX’s witnesses despite RPX inviting questions about any concerns. Hearing Tr.,
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`12-13. Conversely, the new panel that spent only days with the record refused to
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`credit unequivocal testimony on critical facts. Dec., 13-14, 20, 26, 39. This
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`highlights the unfairness to RPX of changing the panel at the eleventh hour to have
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`the cases decided by judges before whom RPX had no opportunity to appear to
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`address whatever concerns they might have had. Thus, the Decision must be
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`vacated and the cases handed back to the original panel which was fully capable of
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`deciding the merits. At a minimum, the current panel should vacate its decision
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`and hold an oral hearing. RPI is a “highly fact-dependent question.” Dec., 7.
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`RPX deserves to be heard before the judges who will make the fact findings and
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`decide the case. Moles, 654 P.2d at 742-43 (“Oral argument… promotes
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`understanding in ways… [un]matched by written communication.”).
`
`II. THE BOARD OVERLOOKED AND MISAPPREHENDED THE
`EVIDENCE
`Respectfully, the Board overlooked and misapprehended key evidence,
`
`resulting in factual findings that are simply wrong on critical issues. Additionally,
`
`the Decision misapprehended the Federal Circuit’s decision as having made fact
`
`findings. Dec., 11, 13, 17-20, 26, 30, 35. The Federal Circuit does “not find
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`facts.” Golden Bridge Tech. v. Nokia, 527 F.3d 1318, 1323 (Fed. Cir. 2008). The
`3
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`
`
`
`
`
`
`Decision also overlooked RPX’s explanation of how and why the Court’s
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`suggestions about what the record might ultimately reveal were not borne out by
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`the complete record on remand. Paper 98 (public Paper 95) (“RPX Brief”), 8-48.
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`A. RPX Does Not File for Clients Who Do Not Contract for That Service
`RPX’s “business model” and “the relationship between Salesforce as a
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`member of RPX” were the primary factors that led the Board to find Salesforce an
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`unnamed RPI. Dec., 35. The Board misapprehended the evidence and
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`fundamentally misunderstood RPX’s business and its relationship with Salesforce.
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`The Board found that “filing IPRs to protect its clients” is an “important
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`component of RPX’s core subscription business,” and therefore that RPX filed
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`these IPRs to benefit Salesforce. Dec., 15; see also id., 32 (finding that members
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`of RPX’s core subscription business have an “expectation that [RPX] might initiate
`
`an IPR against a patent that poses a threat to a member”). No evidence supports
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`these findings, and extensive evidence directly refutes them.
`
`The Board acknowledged that Mr. Chuang, an executive who leads RPX’s
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`client services team and has detailed knowledge of clients’ expectations and why
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`they join RPX, testified unequivocally that RPX only files IPRs for and with
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`clients who separately contract for that service, and also explained that the Federal
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`Circuit’s conjecture that the prospect of an RPX-filed IPR challenging a patent
`
`asserted against a client might be a “key reason” clients join RPX was wrong.
`
`
`
`4
`
`
`
`
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`Dec., 13 (citing Ex. 1073, ¶ 32). This testimony was corroborated by (1) RPX’s
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`typical membership agreements (including Salesforce’s) which detail the
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`contracted-for services and do not include IPRs (RPX Brief, 9, 11-12, 23-26, citing
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`Exs. 1020, 1074-1075) and (2) that RPX clients sued by NPEs have seen RPX file
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`an IPR against an involved patent less than 2% of the time. RPX Brief, 20 (citing
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`Ex. 1073, ¶ 32). Yet, the Board did not credit this corroborated unequivocal
`
`sworn testimony of an attorney in good standing. Why? Because the Board
`
`erroneously found it “conflicts with statements made by RPX in its marketing
`
`materials.” Dec., 13-14.
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`Website statements explaining how RPX’s “defensive patent aggregation
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`service” saves legal costs for RPX clients by acquiring rights to patents and
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`licensing them to RPX’s clients, which can benefit clients in litigation because
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`RPX can “acquire a license to the litigated patent and selectively clear our clients
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`from the suit” (Dec., 13-14 (italics in Decision)), do not “conflict” with Mr.
`
`Chuang’s testimony that RPX does not file IPRs for clients that do not separately
`
`contract for that service. None of these passages even mention IPRs; they do not
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`“conflict” with anything Mr. Chuang said and instead corroborate his below-cited
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`testimony that clients join RPX to gain access to its pool of licensed patent rights.
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`The only other evidence cited as purportedly conflicting with Mr. Chuang’s
`
`testimony is marketing material and SEC statements that RPX’s interests are
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`
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`5
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`
`
`
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`aligned with its members because RPX will not assert acquired patents against its
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`members. Dec., 14-15. This evidence also does not even mention IPRs. RPX
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`Brief, 19-23 (citing Ex. 1073, ¶¶ 3, 9, 11, 28-36). Thus, the Board’s finding that
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`RPX’s marketing materials “conflict” with Mr. Chuang’s testimony
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`misapprehended the evidence by assuming a context unsupported by record
`
`evidence. The Board also overlooked that signed agreements (some originally
`
`entered before IPRs existed) are highly probative of the services that clients—
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`sophisticated public companies who pay “substantial sums” for those services
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`(Dec., 21)—contract for and corroborate Mr. Chuang’s testimony because they
`
`detail the license rights clients receive and nowhere reference filing IPRs for
`
`clients that do not separately contract for that different service. RPX Brief, 23-26
`
`(citing Exs. 1020, 1073); Paper 101 (public Paper 102) (“RPX Reply”), 9-12
`
`(citing Exs. 1020-1022, 1074-1079). It was error to not credit uncontroverted
`
`corroborated sworn testimony of a fact witness. Legg v. Wyeth, 428 F.3d 1317,
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`1323 (11th Cir. 2005) (“legal error” to “refuse[] to consider” “undisputed” sworn
`
`affidavits); Carry Cos. of Ill. v. N.L.R.B., 30 F.3d 922, 928 (7th Cir. 1994) (giving
`
`no deference to “utter disregard for uncontroverted sworn testimony” on credibility
`
`determination); Laganiere v. Bonte Spinning Co., 236 A.2d 256, 258 (R.I. 1967)
`
`(“uncontroverted testimony… is ordinarily conclusive upon the trier of facts”).
`
`
`
`6
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`
`
`
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`B. The Finding That RPX Files To Benefit Unnamed Clients Is Unsupported
`That RPX had no “risk of liability for infringement” (Dec., 17) should have
`
`been immaterial, given that the Decision elsewhere accepts that RPX had different
`
`reasons to file IPRs to serve RPX’s own interests (Dec., 16). The Board further
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`erred in finding that in addition to pursuing its own interests, RPX “also files IPRs
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`to protect its clients” because “the evidence suggests that RPX selects patents to
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`challenge, at least in part, to reduce risk to existing clients.” Dec., 16. Based on its
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`own representation of “the public record” (Dec., 16), the Board found “the vast
`
`majority of RPX petitions, forty-seven of fifty-seven, have involved patents
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`asserted against its clients.” Dec., 19. The suggestion that this supports the
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`Board’s finding that RPX files IPRs in its own name to benefit its clients
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`overlooks that 21 of those 47 IPRs named clients as co-petitioners. RPX Reply, 14
`
`(citing Ex. 1073, ¶ 30). That 10 of RPX’s 57 IPRs did not involve a client in
`
`litigation corroborates the testimony that RPX files for its own reasons, and that 21
`
`co-name a client corroborates the testimony that while RPX sometimes files IPRs
`
`to reduce risks for client(s), in those circumstances post-VirnetX RPX names those
`
`clients as petitioners and RPIs. RPX Brief, 15-20, 41 (citing Ex. 1073, ¶¶ 27-30).
`
`Post-VirnetX, less than half of RPX’s IPRs were filed solely in RPX’s name
`
`against a patent asserted against an RPX client, not a “vast majority.” RPX Reply,
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`14. The finding that RPX chose in this minority of its IPRs to file on behalf of
`
`
`
`7
`
`
`
`
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`clients, but not name them as co-petitioners the way RPX did in 21 other IPRs, is
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`directly contradicted by sworn testimony and unsupported by any evidence. RPX
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`Brief, 15-20 (citing Ex. 1073, ¶¶ 27-30). No evidence supports a finding that RPX
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`filed, on its own, even a single post-VirnetX “IPR[] to benefit its existing clients”
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`(Dec., 17), so this evidence does not “support[] a conclusion that Salesforce is an
`
`RPI in these proceedings.” Dec., 17. All the relevant evidence demonstrates that
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`if a client is not named then RPX filed only for its own interests. RPX Brief, 15-
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`20, 41 (citing Ex. 1073, ¶¶ 27-30).
`
`C. The Finding That RPX Takes Clients’ Interests into Account
`When Filing IPRs Is Unsupported
`The Board found the testimony that RPX does not file IPRs to benefit
`
`unnamed clients “of little relevance” because “as the Federal Circuit noted … RPX
`
`admits it takes its client’s interests into account.” Dec., 17-18 (citing AIT at 1351-
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`52). The Federal Circuit is not a fact-finder and the AIT decision is not evidence.
`
`The Board must make fact findings based on the record. There is no evidence that
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`a client in suit was a positive factor that favored RPX filing any post-VirtneX IPR
`
`on its own, and direct evidence that that factor weighed against such a filing as
`
`discussed below. The Decision cites no evidence to support its finding that RPX
`
`“takes its clients’ interests into account” in deciding to file IPRs where the client is
`
`not named, and cites no place in the record where RPX allegedly admitted it does.
`
`The Board’s finding that RPX’s Best Practice Guide (“BPG”) “intentionally
`8
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`
`
`
`
`
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`operates…to circumvent the Board’s RPI case law” (Dec., 18) is unsupported by
`
`evidence. There was nothing inappropriate about RPX seeking to ensure
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`compliance with evolving RPI caselaw. Hearing Tr., 56-57 (panel noting same).
`
`The Decision (at 18-19) acknowledged Mr. Chiang’s testimony that the BPG was
`
`adopted to “comply with the law on RPI and accurately name all RPIs in all future
`
`petitions,” but failed to credit that testimony because the Board characterized the
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`BPG’s selection criteria as including “the number of current and potential RPX
`
`clients in suit,” and implicitly found this to be a factor that favored RPX filing a
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`petition. Id. No evidence is cited to support that finding and none does.
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`Mr. Chiang was unequivocal that in these IPRs the time-barred party being
`
`an RPX client factored against filing. RPX Brief, 43-46 (citing Ex. 1090, ¶ 28 and
`
`explaining it was outweighed by other factors). He also explained that generally a
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`client being in suit weighed against RPX filing. Ex. 1094, 138. The Board’s
`
`misapprehension that clients in suit weighed in favor of filing led the Board to
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`erroneously conclude that the BPG indicates that RPX sought to identify IPRs to
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`file where RPX could serve its clients’ interests while not naming them. Dec., 17-
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`19. That finding is unsupported by any evidence and refuted by Mr. Chiang’s
`
`sworn testimony. RPX Brief, 14-17, 43-46 (citing Ex. 1090, ¶¶ 12-13, 18-19, 90).
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`The Board’s above-discussed misapprehension of the BPG factors was central to
`
`the Board’s erroneous finding that RPX files “IPRs to benefit its existing clients,
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`
`
`9
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`
`
`
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`supporting a conclusion that Salesforce is an RPI in these proceedings.” Dec., 17.
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`The Decision relies on the Federal Circuit raising—not answering—a
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`question about whether RPX’s SEC filing’s reference to facilitating validity
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`challenges could “imply” that RPX files IPRs for its clients. Dec., 19-20. The
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`Board needed to answer that question. Mr. Chuang’s sworn testimony explained
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`unequivocally that this statement referred to RPX aiding a client making the
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`client’s own validity challenge. Id. (citing Ex. 2008, 4). The Board again refused
`
`to credit sworn testimony—here, because it was allegedly “unsupported by record
`
`evidence.” Dec., 20. Respectfully, the exact opposite is true—the Board’s
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`(mis)understanding is unsupported. Mr. Chuang’s sworn testimony (itself “record
`
`evidence”) is corroborated by the plain meaning of “facilitate” (RPX Reply, 12-
`
`13), and the evidence demonstrating that RPX co-filed 21 IPRs with clients. Dec.,
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`17 (citing Ex. 1073, ¶ 30). These separately contracted-for co-filed IPRs are
`
`consistent with the SEC filing; each is a “solution” and “service” RPX offered that,
`
`if successful, “reduces expenses for our clients.” Dec., 20. The Board’s finding
`
`(directly refuted by Mr. Chuang) that the SEC filing refers to RPX filing alone to
`
`pursue a client’s interest is unsupported by any evidence because it is not true.
`
`Thus, the “[a]t bottom” conclusion that RPX engaged in a “‘willful
`
`blindness’ strategy” (Dec., 20) is unsupported and refuted by the relevant evidence.
`
`III. THE BOARD ERRED IN FINDING THAT RPX WAS
`REPRESENTING SALESFORCE’S INTERESTS
`10
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`
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`
`
`A. The Board’s Fact Findings Are Unsupported
`“Most cricital[]” to the Board’s finding that RPX represented Salesforce’s
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`interests in these IPRs were (1) that Salesforce paid RPX to reduce litigation
`
`exposure and (2) that RPX had no infringement risk of its own. Dec., 31. The
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`second finding should have been immaterial because of RPX’s different reasons of
`
`its own to file (acknowledged Dec., 16), and the first misapprehends what the
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`services are that Salesforce paid RPX to provide. The finding that RPX is paid “to
`
`advance Salesforce’s interests” is unremarkable, but the assertion that this
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`“support[s] AIT’s theory” because RPX may “clear[] them from a lawsuit”
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`misapprehends the evidence. Dec., 21. RPX’s core service “advance[s]
`
`Salesforce’s interests” by giving it a license under a large pool of patent rights.
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`RPX Brief, 23-24. The evidence the Decision cites explains how this service
`
`“clear[s] [clients] from a lawsuit”—by “acquir[ing] a license to the litigated patent
`
`and selectively clear[ing] our clients from the suit.” Dec., 21 (citing Ex. 2007); see
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`also §§ II.A-C above (noting other misapprehensions about RPX’s services).
`
`The finding that RPX creates the “appearance” of pursuing its own interests
`
`despite Salesforce’s interests being “of paramount importance to RPX” given
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`“significant economic incentives” (Dec., 35) diminishes RPX’s acknowledged
`
`interests (Dec., 16) and misapprehends RPX’s incentives. No evidence is cited to
`
`support the finding that there were “strong economic incentives on RPX to
`
`
`
`11
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`
`
`
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`represent Salesforces’ interests” in these IPRs. Dec., 25. The Board overlooked
`
`the evidence demonstrating why Salesforce joined and renewed with RPX,
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`including conditioning its renewal not on RPX doing anything relating to AIT, but
`
`instead on a specific licensing transaction detailed in the confidential record. RPX
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`Reply, 9-10 (citing Exs. 1077, 1079). The Board’s finding misapprehends the
`
`nature of the value RPX provides to Salesforce, based on speculation unsupported
`
`by any evidence that there were “economic incentives” motivating RPX to take
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`actions outside the scope of the contracted-for services it provides to Salesforce,
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`including “represent Salesforce’s interests” in an IPR. Dec., 25.
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`The Board “agree[d]” with the Federal Circuit that RPX’s website might
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`“imply” RPX files IPRs to serve its client’s interests. Dec., 26. The Board needed
`
`to do more. It needed to analyze the record and determine if the possible
`
`implication the Court raised was actually supported by the evidence. It is not. The
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`Board’s finding that RPX “exists in part to file IPRs against patents being asserted
`
`or threatened to be asserted against its members” is unsupported for the reasons
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`discussed supra §§ II.A-E.
`
`The Decision notes that RPX’s IPRs “provided benefit to Salesforce,” and
`
`from that concludes that “[i]n view of RPX’s own assertions and evidence
`
`regarding its relationship with Salesforce, it stands to reason that RPX inevitably
`
`represented Salesforce’s interests.” Dec., 25. This finding inherits all the above-
`
`
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`12
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`
`
`
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`discussed errors in the Board’s findings about RPX’s “assertions” and its
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`relationship with Salesforce (§§ II.A-E, III.A), and overlooks the authority RPX
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`cited (RPX Brief, 48-57; RPX Reply, 19-30) concerning the legal requirements for
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`one party to be considered to be representing the interests of another.
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`The Board’s finding that communications between RPX and Salesforce
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`about the AIT litigation were “naturally tied to possible defenses, of which an IPR
`
`challenge is one” is facially wrong and unsupported. Dec., 30. The evidence
`
`establishes what was discussed—RPX asked if Salesforce wanted RPX to reach
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`out to AIT’s lawyers (with whom RPX had previously dealt) to ask what it might
`
`take for AIT to settle the litigation. RPX Brief, 27-33 (citing Exs. 1019, 1073,
`
`1090, 1094, 1095). No “possible defenses” were discussed; the Board’s contrary
`
`finding is unfounded and wrong. Thus, no “evidence” indicates that “Salesforce’s
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`relationship with RPX was based, at least in part, on efforts to address the same
`
`patents” challenged in these IPRs. Dec., 23. If RPX had acquired rights under the
`
`AIT patents, Salesforce would have received a license to the AIT patents. But
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`RPX did not do so, despite AIT’s overtures, because RPX was not trying to help
`
`Salesforce, and sought to invalidate AIT’s facially unpatentable patents for RPX’s
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`own reasons. RPX Brief, 42-43 (citing Ex. 1073, ¶ 38; Ex. 1090, ¶ 24; Exs. 1082-
`
`1089). The communications referenced in the Decision at 22 did not result in any
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`“efforts” by RPX on Salesforce’s behalf, let alone “efforts” that would warrant
`
`
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`13
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`
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`Salesforce being named an RPI in these IPRs. RPX Brief, 27-33.
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`Lastly, the Decision notes the Federal Circuit’s statement that the “evidence
`
`might actually indicate” RPX sought to learn Salesforce’s desires, but makes no
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`finding about what the evidence “actually [does] indicate.” Dec., 30. Any such
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`finding would be unsupported by evidence and directly refuted by sworn testimony
`
`that RPX did not seek to learn Salesforce’s desires because they were irrelevant
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`given that RPX was filing for its own interests—not Salesforce’s. RPX Brief, 31-
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`33 (citing Ex. 1019, ¶¶ 7-12, 41-44; Ex. 1073, ¶¶ 32, 38; Ex. 1090, ¶¶ 20-35).
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`B.
`The Board Erred As a Matter of Law
`The Decision states the Federal Circuit “suggested” Salesforce was a “clear
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`beneficiary.” Dec., 35. The Court made no such finding and remanded for the
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`Board to evaluate the evidence and apply the law. The Board overlooked what is
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`legally required for Salesforce to be a “beneficiary.” RPX Brief, 50-57; RPX
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`Reply, 19-24. The finding that “Salesforce would have been interested in Board
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`review” does not “support[] a conclusion that Salesforce is an RPI” (Dec., 27)
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`because it does not establish the requirement (acknowledged Dec., 26-27) that the
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`IPRs were filed at Salesforce’s behest.
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`The Decision overlooks the authority RPX cited (RPX Brief, 49; RPX
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`Reply, 21) that “behest” means command, and that RPX cannot have acted as
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`Salesforce’s representative unless RPX were appointed by Salesforce to so act.
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`14
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`RPX Brief, 52-57. There is no evidence that Salesforce commanded or appointed
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`RPX to file these IPRs because Salesforce did no such thing. Even if the Board’s
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`findings were supported by the record (they are not), they would at most establish
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`that RPX filed as a mere volunteer to benefit Salesforce. The law is clear that no
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`party can appoint itself to represent another—the principal must appoint the agent.
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`Id. Salesforce never appointed RPX its representative and the Board did not find
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`that it did. Thus, the Board’s fact findings are legally insufficient to find that RPX
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`represented Salesforce’s interest in these IPRs. RPX Brief, 49; RPX Reply, 21.
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`IV. DISCRETIONARY DENIAL
`To the extent the Board exercised discretion to deny institution under
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`§ 314(a) (Dec., 38-40), it did so based on erroneous fact-findings that inherited the
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`above-discussed errors, and violated the APA because RPX was given no notice or
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`opportunity to brief the issue. Further, terminating on discretionary denial would
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`resurrect bad patent claims of the type IPRs were enacted “to weed out.” Thryv,
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`Inc. v. Click-to-Call Techs., LP, 140 S.Ct. 1367, 1374 (U.S. Apr. 20, 2020).
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`Discretionary denial after a full trial found the claims unpatentable over each of
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`three distinct prior art grounds would “unwind the agency’s merits decision,”
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`“wast[e] the resources spent resolving patentability and leav[e] bad patents
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`enforceable.” Id.
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`Dated: October 9, 2020
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`Respectfully submitted,
`/Richard Giunta/
`Richard F. Giunta, Reg. No. 36,149
`15
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(E)(4)
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`I certify that on October 9, 2020, I will cause a copy of the foregoing
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`document to be served via electronic mail, as previously consented to by Patent
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`Owner, upon the following:
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`Steven C. Sereboff
`Jonathan Pearce
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`Andrea Pacelli
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`Robert Whitman
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`Date: October 9, 2020
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`ssereboff@socalip.com
`jpearce@socalip.com
`uspto@socalip.com
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`Andrea.Pacelli@us.kwm.com
`robert.whitman@us.kwm.com
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`/MacAulay S. Rush/
`MacAulay S. Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
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`16
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