`
`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
`
`Boston, MA 02210
`
`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 REPLY TO PATENT OWNER’S RESPONSE TO
`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. REPLY TO AIT’S ARGUMENTS REGARDING DUE PROCESS ............... 1
`A. RPX Has Due Process Rights in These Proceedings .................................. 1
`B. AIT Cites No Authority Authorizing the Panel Change ............................. 3
`II. DISCRETIONARY DENIAL WAS IMPROPER ............................................ 9
`III. AIT’S SILENCE ON THE MERITS IS TELLING ........................................ 10
`
`
`
`
`
`i
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`
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`TABLE OF AUTHORITIES
`
`CASES
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) .............................................................................. 4
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .............................................................................. 1, 6, 7, 9
`
`ESIP Series 2, LLC v. Puzhen Life USA, LLC,
`958 F.3d 1378 (Fed. Cir. 2020) ..........................................................................5, 6
`
`GEA Process Eng’g, Inc. v. Steuben Foods, Inc.,
`IPR2014-0041, Paper 135 (Dec. 23, 2014) ............................................................ 3
`
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (Sept. 6, 2017) ............................................................. 9
`
`Mathews v. Eldridge,
`424 U.S. 319 (1976) ................................................................................................ 7
`SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................................... 1
`SAS Inst., Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016) ..........................................................................1, 2
`
`Thryv, Inc. v. Click-to-Call Techs., LP,
`140 S.Ct. 1367 (U.S. Apr. 20, 2020) ..................................................................5, 6
`TQ Delta, LLC v. DISH Network LLC,
`929 F.3d 1350 (Fed. Cir. 2019) ..................................................................... 1, 2, 9
`Withrow v. Larkin,
`421 U.S. 35 (1975) .............................................................................................1, 2
`STATUTES
`35 U.S.C. § 316(a)(10) ............................................................................................... 1
`35 U.S.C. § 6(c) .....................................................................................................4, 5
`5 U.S.C. § 554 ........................................................................................................1, 2
`
`ii
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`
`
`
`
`5 U.S.C. § 554 (d) ...................................................................................................... 5
`5 U.S.C. § 554(b)(3) ................................................................................................... 1
`5 U.S.C. § 555 ............................................................................................................ 2
`5 U.S.C. § 556 ........................................................................................................1, 2
`5 U.S.C. § 557 ............................................................................................................ 2
`5 U.S.C. § 706 ............................................................................................................ 1
`OTHER AUTHORITIES
`J. Golden, PTO Panel Stacking: Unblessed by the Federal Circuit and Likely
`Unlawful, 104 Iowa L. Rev. 2447 (2019) .............................................................. 7
`
`
`iii
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`
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`
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`Petitioner RPX submits this reply to Patent Owner AIT’s Response (Paper
`
`135) (“Response”) to RPX’s Request for Rehearing (Paper 134) (“Request”).
`
`I.
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`REPLY TO AIT’S ARGUMENTS REGARDING DUE PROCESS
`A. RPX Has Due Process Rights in These Proceedings
`“IPR proceedings are formal administrative adjudications subject to the
`
`procedural requirements of the Administrative Procedure Act (‘APA’),” including 5
`
`U.S.C. § 554 (“adjudications”), § 556 (“Hearings; presiding employees; powers and
`
`duties; burden of proof; evidence; record as basis of decision”) and § 706 (“Scope
`
`of Review”—reviewing court shall hold unlawful and set aside agency action that is
`
`“contrary to constitutional right” or “without observance of procedure required by
`
`law”). TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350, 1354 (Fed. Cir. 2019);
`
`see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (APA applies to IPRs);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (same); Withrow v.
`
`Larkin, 421 U.S. 35, 46 (1975) (the basic due process requirement of a fair trial
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`before a fair tribunal applies to agencies that adjudicate).
`
`AIT asserts that RPX is not entitled to due process because RPX allegedly
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`has no “protected interest” (Response, 2), but cites no authority supporting that
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`extraordinary assertion. IPR petitioners are entitled to due process. SAS Inst., Inc.
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`v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016) (citing, inter alia, 5
`
`U.S.C. § 554(b)(3) and 35 U.S.C. § 316(a)(10)), rev’d on other grounds, 138 S. Ct.
`
`
`
`1
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`
`
`
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`1348 (2018). RPX is a party to these “formal administrative adjudications”—
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`subject to the APA—between private parties and has a “protected interest” in
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`having the proceedings conducted fairly and in accordance with the law. TQ
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`Delta, 929 F.3d at 1354; see also Withrow, 421 U.S. at 46; 5 U.S.C. §§ 554-557.
`
`Additionally, the fees RPX paid to have the agency review its petitions are
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`“property” of which RPX would be deprived if the Board accepted RPX’s money
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`under the guise of giving due and fair consideration to RPX’s petition but failed to
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`do so. Finally, the “Final Decision” improperly terminated instituted trials, and the
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`Federal Circuit has expressly held that the APA’s “procedural protection,”
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`including § 554, applies to a petitioner in an instituted IPR trial. SAS, 825 F.3d at
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`1351. AIT’s assertion that RPX, as a party to these “formal administrative
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`adjudications,” was not entitled to basic due process protections to ensure fairness
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`from the agency is extraordinary and unsupported. TQ Delta, 929 F.3d at 1354.
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`AIT’s suggestion that only petitioners with a “risk of liability of
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`infringement” are entitled to due process (Response, 2) is unsupported and wrong;
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`there is no standing requirement and IPR petitioners are not required to show an
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`infringement risk. Additionally, AIT’s assertion that RPX conceded it has no such
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`risk (id.) is baseless. That an infringement risk was not the reason RPX filed these
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`IPRs (Paper 95 at 26) is not a concession that RPX has no such risk. RPX does
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`given the breadth of AIT’s claims. Ex. 1090, ¶¶ 21-22, 25-26. Before it could
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`
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`2
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`
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`impose a requirement that RPX show an infringement risk in order to be entitled to
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`due process, the Board would need to give RPX notice and open the record to
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`provide RPX an opportunity to submit evidence and make a showing that it meets
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`this “requirement,” which has no basis in the statute, rules or caselaw.
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`B. AIT Cites No Authority Authorizing the Panel Change
`What was “unprecedented and improper” here was “[t]aking these cases
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`away from the panel that oversaw them from inception—to be decided instead by
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`judges who had them for less than a week and did not participate at the oral
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`hearing.” Request, 1. RPX remains unaware of any authority that authorizes
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`“repaneling a case after oral argument, for different judges to make the fact-
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`finding decision.” Id. While the POP has reviewed panel decisions after issuance
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`(pursuant to SOP 2), and panels have been expanded for rehearing after a decision
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`issued from the original panel, RPX is aware of no authority (and AIT cites none)
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`authorizing wholesale replacement of a duly-assigned and available panel any time
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`before the panel issues its decision, let alone less than a week before a decision is
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`due and after the panel has conducted an oral hearing.
`
`AIT’s argument that an oral hearing was not required prior to the
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`termination decision misses the mark. Response, 3-4. Unlike the GEA decision
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`AIT cites where the Board decided that an oral hearing was unnecessary, these are
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`remanded cases where additional evidence was added to the record and the original
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`
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`3
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`
`
`
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`panel determined an oral hearing was appropriate. SOP 9 at 7 (“where new
`
`evidence is permitted, the panel may authorize additional oral argument”). This
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`determination presumably was made after a “remand meeting” with the Chief
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`Judge and/or Deputy Chief Judge before the mandate ever issued. Id. at 1-3 (topics
`
`for the “remand meeting” include “whether the panel anticipates … an additional
`
`oral hearing”). The Board determined that an oral hearing was appropriate, and
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`due process required that the case be decided by the panel that was assigned to
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`(and did) “hear” the case. 35 U.S.C. § 6(c). AIT cites no authority to the contrary.
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`AIT’s suggestion that what occurred in these cases was “a practice that is routinely
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`applied by the Board” (Response, 4) is facially false; AIT does not cite even a
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`single example of a remanded case where the panel ordered and conducted an oral
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`hearing, and thereafter saw the case taken away and decided by different judges.
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`AIT criticizes the only cases RPX could find that address whether repaneling
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`after oral argument comports with due process as “dictum in the Federal Circuit’s
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`Arthrex decision” and a California state court case. Response, 2 and 4. Notably,
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`however, despite its bold assertion that the re-paneling did “not constitute a due
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`process violation” (id., 3), AIT cites no contrary authority authorizing the type of
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`11th hour repaneling that occurred here, because there is no such authority. Given
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`that neither party has cited a single other instance of the PTAB repaneling a case
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`after oral argument, it is unsurprising that the Federal Circuit has not (yet) had the
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`4
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`
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`occasion to rule such a panel change improper.
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`AIT’s assertion that “RPX was not entitled to a … written decision from the
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`original panel” is unsupported (Response, 4), and AIT’s assertion that no statutory
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`provision limits repaneling (id.) is wrong. See e.g., 35 U.S.C. § 6(c) (IPRs “shall
`
`be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be
`
`designated by the Director.”); see also 5 U.S.C. § 554 (d) (“The employee who
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`presides at the reception of evidence pursuant to section 556 of this title shall make
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`the … initial decision required by section 557 of this title, unless he becomes
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`unavailable to the agency.”). Thus, the director has the authority to appoint PTAB
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`members to “hear” the case, and statutory provisions require that the appointed
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`PTAB judges decide the case they heard. It was the original panel that presided at
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`the reception of evidence in the remand proceedings. Taking the cases away from
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`them to have different judges make the decision violated the APA and due process.
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`The original panel issued orders in these cases as late as August 24, 2020
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`(Paper 122) and neither the Panel Change Order (Paper 124) nor the Decision
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`(Paper 128) states that the panel change was necessitated by unavailability of the
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`original panel. Instead, the Panel Change Order states the cases were repaneled
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`because they involved “important issues” and because “complexities” arose from
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`the Thryv and ESIP decisions. Paper 124, 2-3. But the Decision does not mention
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`Thryv or ESIP and characterizes the Panel Change Order as having repaneled the
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`5
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`
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`cases “in view of the significant and broad implications on remand.” Decision, 6.
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`SOP 9 “addresses the procedure for handling all decisions on [remanded]
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`cases.” SOP 9, 1. If a remanded case addresses “an issue of importance,” “the
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`Chief Judge … may elect to expand [not replace] the panel assigned to the
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`remanded case” (id., 3-4) but this is expected to be “rare.” Id. at 2. Whether a case
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`warrants changing the panel’s composition (by expansion) is considered at the
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`“remand meeting” before the mandate issues. SOP 9, 1-4. Thus, as of the summer
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`of 2018, it was determined that the original panel was fully capable of handling the
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`issues that arose in these cases because the panel was not expanded. While the
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`Panel Change Order mentions the subsequent Thryv and ESIP cases, both issued
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`months earlier without prompting a panel change; the panel change did not occur
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`until the eve of the Decision in which neither Thryv nor ESIP is mentioned.
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`Timing issues aside, SOP 9 never mentions replacing the panel. Replacement of
`
`the original panel was not only unprecedented and anything but “routine”
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`(Response, 4), it was inconsistent with the Board’s procedure for handling “all”
`
`remanded cases, including those raising “an issue of importance.” SOP 9, 1-4.
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`AIT cites Cuozzo for the proposition that denial of institution is committed
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`to the agency’s discretion. Response, 3. But Cuozzo is explicit that judicial review
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`is available under the APA for agency action that is “‘contrary to constitutional
`
`right,’ ‘in excess of statutory jurisdiction,’ or ‘arbitrary [and] capricious.’”
`
`
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`6
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`
`
`
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`Cuozzo, 136 S. Ct. at 2142. RPX has found no case involving wholesale
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`repaneling of the type that occurred here. Wholesale repaneling is even more
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`constitutionally suspect than “stacking” a panel by expansion, which numerous
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`Supreme Court justices and Federal Circuit judges have questioned as failing to
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`comply with due process. See e.g., J. Golden, PTO Panel Stacking: Unblessed by
`
`the Federal Circuit and Likely Unlawful, 104 Iowa L. Rev. 2447, 2462-76 (2019).
`
`AIT alleges that RPX’s opportunity to brief the issues and participate in an
`
`oral hearing, albeit before a different panel, provided “all possible procedural
`
`protections it could claim,” citing cases that note that the required “procedural
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`protections” may differ for different situations because due process is flexible.
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`Response, 4-6. None of those cases remotely relate to the unprecedented situation
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`here. This case is not about whether a particular procedure is required in a
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`particular circumstance or whether a particular procedure would impose an undue
`
`burden on the agency—it is about whether a case can be taken away from a panel
`
`that was duly appointed to hear the case after the panel has presided over the
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`reception of evidence, held an oral hearing and is on the eve of issuing a decision.
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`Having the original panel decide the case would have imposed no additional
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`burden on the agency. Id. AIT’s assertion that RPX cannot respond to AIT’s
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`Mathews analysis because the rules prohibit raising a new issue or belatedly
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`presenting evidence in a reply ignores that RPX is not belatedly presenting any
`
`
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`7
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`
`
`
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`evidence nor raising a new issue; RPX is replying to AIT’s response to an issue
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`RPX already raised—that the panel change violated due process. Request, 1-3.
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`AIT’s assertion that RPX waited until after “receiving an unfavorable
`
`decision” before objecting to a panel change (Response, 5-6) is wrong. Ex. 1106
`
`(RPX opposed AIT’s request to modify the panel because the original panel was
`
`“fully capable of issuing a decision consistent with Board precedent.”).
`
`AIT’s assertion that it was “eminently reasonable” for the new panel to not
`
`hold an oral hearing so it could “timely complete” the decisions after the 11th hour
`
`panel change ignores that the due process violation occurred by changing the panel
`
`in the first place. Response, 6. The original panel could (and should) have issued
`
`a decision by September 9, 2020, which would have incurred no burden or delay.
`
`Finally, AIT mischaracterizes RPX as having “insinuate[d] that the new
`
`panel is incapable of properly adjudicating these cases.” Response, 6-7. RPX does
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`not question the capability or the “honesty and integrity” of the new panel. Id.
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`RPX has great respect for the judges on the new panel, would have welcomed
`
`having them preside over the cases from their inception, and believes that would
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`have led to a different result in which the Board would not have made the errors
`
`that are detailed in the Request and that AIT’s Response conspicuously ignores.
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`Nothing in the patent statute, the APA, the rules, SOP 9 or caselaw supports
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`making a panel change (1) more than a year and a half into a remanded proceeding;
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`
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`8
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`
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`
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`(2) after the evidence has been received and the case fully briefed; (3) after oral
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`hearing and (4) less than a week before a Decision was due. Doing so raises the
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`type of constitutional concerns Cuozzo suggested make the Board’s termination
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`Decision appealable. Cuozzo, 136 S. Ct. at 2142. RPX reserves all its rights.
`
`II. DISCRETIONARY DENIAL WAS IMPROPER
`AIT argues it was proper for the Board to give RPX no notice that
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`discretionary denial was being considered and no opportunity to be heard on that
`
`issue, but then rule against RPX on that basis. Response, 7-8. “The APA and due
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`process require ‘notice’ and a ‘fair opportunity” to be heard.’” TQ Delta, 929 F.3d
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`at 1354. AIT’s assertion that RPX was on notice fails; Papers 26 and 37 (cited
`
`Response, 8) neither raise discretionary denial nor apply the Board’s factors.
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`Because the Decision’s discretionary denial analysis hinged on the erroneous
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`finding that Salesforce was an unnamed RPI (Response, 7-8) it must be
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`reconsidered on that basis alone. Request, 15. But additional considerations also
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`are involved in a discretionary denial determination. The Response underscores
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`this by arguing “policy” considerations not present in the RPI analysis, and by
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`citing to a decision (General Plastics) that RPX had no opportunity to address
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`because it issued years after the petitions were filed. The Federal Circuit did not
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`remand for a consideration of discretionary denial, and it was a violation of due
`
`process to “announce” that discretionary denial was being considered in the final
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`9
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`
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`decision without providing RPX notice and an opportunity to be heard.
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`III. AIT’S SILENCE ON THE MERITS IS TELLING
`Eleven pages of the Request were devoted to the merits. In those pages,
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`RPX identified numerous critical fact findings unsupported by any evidence and
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`other critical fact findings directly refuted by the evidence. Request, 3-14 (e.g.,
`
`identifying fact findings “no evidence” supports). RPX also identified extensive
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`documentary evidence corroborating sworn testimony of RPX’s witnesses that the
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`Decision did not credit, and identified “facts” the Board improperly treated as
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`found by the Federal Circuit despite no evidence supporting them. Id. The
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`Response is silent on the merits, despite AIT being granted the same number of
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`pages (15) as the Request and leaving almost half unused. The reason is clear—
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`AIT cannot point to evidence in the record to refute RPX’s assertions that “no
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`evidence” supports findings in the Decision because no such evidence exists.
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`AIT also fails to refute any of the legal errors the Request identified,
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`including the Board refusing to credit uncontroverted sworn testimony (id., 6) and
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`overlooking the legal requirements for one party to be considered to be
`
`representing the interests of another (id., 13-15). AIT did not—because it
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`cannot—refute that RPX cannot have acted as Salesforce’s representative under
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`the law because RPX was not appointed by Salesforce to so act. Id.
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`Dated: October 30, 2020
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`
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`
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`Respectfully submitted,
`/Richard Giunta/ Reg. No. 36,149
`10
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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 30, 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:
`
`Steven C. Sereboff
`Jonathan Pearce
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`
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`Andrea Pacelli
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`Robert Whitman
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`Date: October 30, 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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`
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`/MacAulay S. Rush/
`MacAulay S. Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
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`11
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