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 No. 8,484,111 B2
`
`Case IPR2015-01751
`
`Case IPR2015-017521
`
`Patent 7,356,482 B2
`
`DECLARATION OF STEVE W. CHIANG
`
`
`
`‘ The word—for-word identical paper is served in each proceeding identified in the
`heading.
`
`RPX Exhibit 1090
`
`RPX Exhibit 1090
`RPX v. AIT
`IPR2015-01750
`
`RPX V. AIT
`
`IPR2015—01750
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RPX CORPORATION,
`
`Petitioner,
`
`V.
`
`APPLICATIONS IN INTERNET TIME, LLC,
`Patent Owner.
`
`Case IPR2015-01750
`
`Patent No. 8,484,111 B2
`
`Case IPR2015-01751
`
`Case IPR2015-017521
`
`Patent 7,356,482 B2
`
`DECLARATION OF STEVE W. CHIANG
`
`
`
`‘ The word—for-word identical paper is served in each proceeding identified in the
`heading.
`
`RPX Exhibit 1090
`
`RPX Exhibit 1090
`RPX v. AIT
`IPR2015-01750
`
`RPX V. AIT
`
`IPR2015—01750
`
`
`
`1, Steve W. Chiang, declare:
`
`l.
`
`1 am Senior Director and IPpou
`
`err‘RPXporo1pu1ation (“RPX”).
`
`1
`
`have ‘1‘ “-rlied "t RPX srrce December “112813
`
`1 have ‘teen 5: member 01‘1“?”s
`
`fi A i
`1
`1
`_ n 1
`.l
`_
`_
`- As
`.
`1
`that team Was ereateu in 41,141 The team revrews patents asseueu oy non-
`
`practicing entities {“1 T1313s”) to identifyopotenta1 candidates for znterparies review
`
`F
`
`2.
`
`I am familiar with the reasons why RPX files petitions for inter partes
`
`review in general, and was personally involved in RPX’S decision to file the
`
`A 4 F
`petitions for the inter paries review proceedings numbered 1PR2U130—1750,
`
`IPR2015-01751, and 1PR2015-01752 (“the AIT IPRs”) concerning US. Patents
`
`7~\
`/
`7
`9
`U)
`\
`a
`Nos. 7 356 482 and 81484,1 1 (“the AIT Patents '1 owned bv A lications in
`
`Internet Time, LLC (“AIT”).
`
`3.
`
`I have reviewed the opinion of the United States Court of Appeals for
`
`the Federal Circuit in the appeal from the A
`
`1—4 1—1
`
`1—-<95V)
`
`”121:."B“:1 N 1'11Q B.
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`13(/1 ‘5u N13N»mVm m h* S f":
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`LL 1,
`DY rp
`
`L1111 11
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`ed
`I” Z'nm 97 E:3d133
`
`opinion”)
`
`4.
`
`I have reviewed the Declaration of William W. Chuang previously
`
`filed as Exhibit 11119111 1PR20
`
`411750 and 1PR2U‘1 5—01751 and as Exhibit 1119
`
`
`
`in lPR2015-Ol752.2 and 1 have reviewed the Declaration of William W. Chuang
`
`provided as Exhibit 1073. To the extent 1 have personal knowledge of facts
`
`discussed in either ofthese two declarations oer. Chuang. I agree with the
`
`statements in Mr. C huang’s declarations regarding those facts and have confirmed
`
`that those statements are accurate and consistent with my own recollection.
`
`I.
`
`COMMUNICATIONS WITH SALESFORCE REGARDING AIT,
`
`ANY AIT PATENT, OR POST-GRANT PROCEEDINGS
`
`5.
`
`All communications from before November 3, 2015. between RPX
`
`and Salesforcecom, lnc. (“Salesforce”) regarding AIT or any AIT patent were
`
`served on AIT on November 3, 2015, and all such communications from between
`
`November 3, 2015. and December 7, 2015, were served on AIT on December 7,
`
`2015.
`
`6.
`
`Since December 7, 2015, the only communications between RPX and
`
`Salesforcc regarding AIT or any AIT patent were in connection with—
`
`-, to notify Salesforce regarding any potential disclosure ofSalesl‘orce‘s
`
`confidential information. These communications consisted of five phone calls
`
`summarized in 1711 7-9 below, and well as e-mail communications provided as
`
`Exhibits 1091 and 1092.
`
`3 I will use the exhibit numbering from 1PR2015-01 750 herein.
`
`1»)
`
`
`
`7.
`
`On February 9. 2018. 1 had a telephone call with_
`
`—. during which I requested a call with- On February“ 12,
`
`2018. 1 had the requested telephone call with- during which I informed
`
`8.
`
`On July 10. 2018. I had a telephone call with_ during
`
`which I requested a call with- On July 1 1‘ 2018. 1 had the requested
`
`telephone call with_ during which 1 informed -- that the
`
`Federal Circuit had included items01‘—
`
`‘).
`
`On January 4. 2019. 1 had a telephone call with- during
`
`.4
`which 1 inl‘ormed- that RPX would shortlv he diselosin
`
`(13
`
`to AIT.
`
`pursuant to the Board‘s Order of December 7, 2018, regarding discovery in these
`
`p1 itemsor—
`
`DJ
`
`
`
`10.
`
`Other than the communications discussed in W 5-9 above regarding
`
`the AIT IPRs, RPX has no record of any communications specifically between
`
`RPX and Salesforce regarding post-grant proceedings. In the normal course of its
`
`business, RPX produces regular newsletter e—mails and automatically—generated
`
`notification e-mails that inform broad lists of subscribers about currently relevant
`
`patent litigations and sometimes post-grant proceedings, based on publicly
`
`available information. The lists include at least hundreds of subscribers. including
`
`approximately a dozen subscribers with Salesforce-related e—mail addresses. It is
`
`therefore possible that one or more Salesforce employees may have received one
`
`or more mass newsletter or automatically-generated notification e-mails that
`
`discussed publicly available information on one or more post-grant proceedings.
`
`RPX has two teams (the RPX Insight team and the Litigation Intelligence team)
`
`responsible for producing and distributing these mass e-mails; the RPX Insight
`
`team does not keep records of the content of mass e-mails sent or of past recipients
`
`of mass e-mails, and the Litigation Intelligence team searched and found no
`
`communications sent to Salesforce recipients regarding post-grant proceedings.
`
`11.
`
`COMMUNICATIONS WITH SALESFORCE REGARDING THE
`
`ISSUES OF RPI AND PRIVITY AS RELATED TO POST-GRANT
`
`PROCEEDINGS
`
`l l.
`
`RPX has had no communications with Salesforce regarding the issues
`
`of RPI and privity as related to post-grant proceedings. In the communications
`
`
`
`described in W 7-9 above, RPX informed Salesforce that items of-
`
`— in the appeal and remand from the AIT
`
`IPRs (which was a proceeding concerning issues of RPI and privity), but the issues
`
`of RPI and privity themselves were not discussed in those communications.
`
`I have
`
`spoken with all of RPX’s current employees who would have communicated with
`
`Salesforce regarding any topics related to post-grant proceedings, and those
`
`employees recall no communications regarding the issues of RPI and privity as
`
`related to post-grant proceedings, and have searched and found no record of any
`
`such communications.
`
`III. DOCUMENTS DISCUSSING ANY EFFORTS BY RPX TO SHIELD
`
`ITS CLIENTS FROM BEING NAMED AS REAL PARTIES IN
`
`INTEREST IN INTER PARTE REVIEWS AND COVERED
`
`BUSINESS METHOD REVIEWS
`
`12.
`
`RPX does not possess any documents discussing any efforts by RPX
`
`to shield its clients from being named as real parties in interest in inlerparles
`
`reviews and covered business method reviews.
`
`I agree with the statements in fl 40
`
`of Ex. 1073, which I have therefore copied below:
`
`RPX does not take efforts to shield its clients from being named
`
`as real parties in interest in inter partes reviews, covered
`
`business method reviews, or any other type of proceeding
`
`before the Patent Trial and Appeal Board. When RPX petitions
`
`for review ofa patent before the Patent Trial and Appeal Board,
`
`RPX considers the facts in light ofthc current case law to
`
`
`
`determine who the correct real parties in interest are. When
`
`RPX concludes, after considering the facts in light of the
`
`current law, that a client or other party is a real party in interest,
`
`RPX follows one of only two options: either RPX names that
`
`party as a real party in interest or co-petitioner in the
`
`proceeding, or RPX chooses not to file the petition. When RPX
`
`concludes, after considering the facts in light of the current law,
`
`that no client or party other than RPX is a real party in interest,
`
`RPX correctly names itself as the sole real party in interest in
`
`the proceeding. RPX follows its Best Practices (EX. 2018) to
`
`ensure that RPX remains the sole real party in interest going
`
`forward in preparing and prosecuting proceedings in which the
`
`facts and law indicate that no other party is a real par
`
`in
`
`interest at the time the patent is identified as a candidate for a
`
`validity challenge.
`
`l3.
`
`RPX’s Best Practices Guide (EX. 2018) does not discuss efforts by
`
`RPX to shield its clients from being named as real parties in interest in inter partes
`
`reviews and covered business method reviews, nor do the Validity Challenge
`
`Identification slides previously filed as Exhibit 2025, which are consistent with the
`
`Best Practices Guide. The Best Practices Guide sets forth practices intended to
`
`ensure that RPX correctly names all real parties in interest, and to avoid scenarios
`
`that might create confusion as to whether there is an appearance of involvement by
`
`a party who is truly not a real party in interest, as I discuss further below in § V.
`
`
`
`IV;
`
`SANFORD ROBERTSON
`
`14. During the time period when RPX considered and ultimately decided
`
`to file the AIT IPR petitions; and up throughttheetime P
`
`p.‘
`
`led the AITIPR
`
`petitions, l was not aware that Mr. Sanford Robertson served on the board of
`
`directors of Salesforce; Prior to and at the time RPX filed the AIT IPR peetitions, I
`
`was unaware that any member of RPX’s board of directors was a member of
`
`Sal esforce’s board of directors.
`
`l5.
`
`1 was one of the three members of the validity challenge identification
`
`team that identified the AIT Patents as candidates for lPRsa and l have first—hand
`
`knowledge of the reasons RPX decided to file the petitions for the AIT lPRs. The
`
`validity challenge identification team received no suggestion from Mr. Robertson
`
`oraany oetherm emembeer ofJPX’s board ofdirectors that mpX shouldconsider tiling
`
`the petitions for the AIT lPRs, and no input whatsoever from any member of
`
`RPX’s board of directors relating in any way to RPX’s decision to file the petitions
`
`for the AIT IPRs, to the substance of those petitionsa or to any aspect of the manner
`
`in which RPX prepared or prosecuted those IPRS. To my knowledge, Mr.
`
`Robertson was never mentioned in any communication or deliberation of the
`
`alidity challenge identification team concerning the AIT Patents or the potential
`
`AlT lPRs prior to tiling the petitions? norwseth fact that anyone sat on the boards
`
`of directorso RRX and Salesforce mentioned in any such communication or
`
`
`
`deliberation. Mr. Robertson and his board memberships were not considered in
`
`any way by the validity challenge identification team in deciding to prepare and
`
`file the NT lPR petitions.
`
`V.
`
`CIRCUMSTANCES SURROUNDING RPX’S CREATION OF ITS
`
`BEST PRACTICES GUIDE
`
`16.
`
`l was personally involved in the creation and use ofRPX‘s Best
`
`Practices Guide.
`
`In June 2014, not long after receiving and studying decisions
`
`denying institution in RPX’S IPRs against VirnetX ("‘VirnetX Decisions").-
`
`_ embsrea— and myseb‘as mmbers
`
`of the validity challenge identification team. At this time, RPX had relatively little
`
`experience with lPRs and had only ever filed two sets ol‘IPR petitions (the
`
`petitions against VirnetX, and one other petition against MacroSolve). The
`
`validity challenge identification team’s first task was to create a sound and
`
`consistent process and set of best practices for the team and RPX to follow in
`
`identifying patents that would make for good validity challenge candidates. The
`
`process and set ol‘best practices we developed are explained in the Best Practices
`
`Guide. Among the goals for the Best Practices Guide were to ensure that RPX
`
`would be in compliance with its contractual obligations relating to the use of any
`
`confidential information received from patent owners under non—disclosure
`
`agreements, and to ensure that RPX would accurately name all real parties-in-
`
`8
`
`
`
`interest (“RPls”) under the evolving law on RPI for all future petitions RPX filed.
`
`H
`See EX. 2018 at 1 (“RPX best practices help ensure that RPX1s complying with an
`
`17. With respect to ensuring thatRPXwould not violate contracu-tal
`
`0in atio s relatin
`(JD
`
`(110
`
`-+
`
`nn1. dential information of natentorwvners, the validity
`
`challenge identification team decided to create walls More specifically1 REX
`
`regularly entered into nondisclosure agreements with prospective licensors of
`
`patents who would then provide various employees at RPX with information such
`
`as infringement claim charts under confidentiality obligations. The walls
`
`prevente any rrmemb e1 of the
`
`1
`idity challenge1dentification team who receivea
`
`confidential information about a patent from using that information in violation of
`
`RPX’s confidentiality obligations. For example, a team member who had viewed
`
`an infringement claim chart could not subsequently evaluate the patent to inform
`
`AV UV
`{b9 f9
`
`‘1; u 1 V'llebllel
`am n11 “I (slap t0
`
`A
`
`..1
`
`le an IP11. See, eg.
`
`‘17
`CCDD
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`A .1 11
`
`A N
`
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`
`or use confidential information received under NBA in evaluating potential
`
`validity challenges. If a member of the validity challenge identification team has
`
`p1e‘viously received confidential1nf01mation aoout a pat
`
`that memberwill not
`
`participate in the evaluation of the patent”).
`
`
`
`18. With respect to ensuring that RPX would comply with the law on RPI
`
`and accurately name all RPIs in all future petitions RPX filed, after RPX’s
`
`petitions were denied in the VimetX Decisions, the validity challenge identification
`
`team believed it to be paramount that in future petitions where RPX was indeed the
`
`sole RPI, it was not sufficient that RPX believed itself to be the sole RPI; but,
`
`additionally, best practices needed to be developed and followed to ensure that
`
`RPX would be “deemed by the PTAB and district courts as the sole real party—in-
`
`interest in all validity challenges unless another real party-in-interest is expressly
`
`identified.” Accordingly, we reviewed various legal sources including the PTAB’s
`
`Trial Practice Guide, In reGuan, Taylor v. Sturgell, and the VirnetX Decisions, and
`
`developed a set of best practices for RPX to abide by in selecting validity
`
`challenge candidates, where those best practices sought to conservatively restrict
`
`communications with third parties. The set of best practices we developed broadly
`
`(a) disallow RPX to take into account any suggestion for filing a validity challenge
`
`from any third party if that party would not agree to be named an RPI, (b) disallow
`
`RPX to discuss forthcoming validity challenges (e.g., by discussing strategy,
`
`feedback, or otherwise) with third parties who are not named RPIS, and (c) ensure
`
`that no unnamed third party could exert control over any aspect of RPX’s validity
`
`challenge proceedings.
`
`10
`
`
`
`l9.
`
`It was the belief of the validity challenge identification team that
`
`compliance with the Best Practices Guide would ensure under the RPI law that
`
`a 1,. “A A
`fun
`A 1‘1:
`(An
`vwn-‘n
`RPX would not only in tact be the sole Rf
`
`p.-C.“9+ 5:"1("D
`
`-l\
`
`(D
`
`"U
`
`w. (—Fb.. C;5U: S): p..- O5
`
`”CD
`
`document designed to conceal the identity of unnamed RPls is blatantly false. The
`
`always names the proper RPI(s) in all IPRs going forward from when the Best
`
`Practices Guide was developed.
`
`VI. RPX’S DECISION TO FILE THE AIT IPR PETITIONS
`
`20. As a member of RPX’S validity challenge identification team, I was
`
`personally involved in “PX’S decision to file t e petitions ior the AIT IPRC. The
`
`validity Challenge identification team identified the AIT Patents as IPR candidates
`
`in February 2015, because the team determined that the AIT Patents met a number
`
`of factors set forth in RPX’s Validity Challenge Process. Paragraphs 34-49 of
`
`Exhibit 1019 accurately describe RPX’s reasons for filing the AIT IPR petitions
`
`and the process that led to RPX’S decision to file the All IPR petitions.
`
`21.
`
`RPX’S primary motivation in filing the AIT IPR petitions was to seek
`
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`
`practicing entity (“NPE”) in a manner that RPX considered highly indicative of a
`
`ll
`
`
`
`litigation campaign against an entire industry of software companies, based on
`
`RPX’s experience with NPEs. The claims of the AIT Patents and the manner in
`
`which AIT would need to interpret those claims in order to read on the accused
`
`products identified in AIT’s infringement Complaint against Salesforce were
`
`astonishingly broad and could not possibly be patentable, in the view of MX’S
`
`validity challenge identification team. (This was later confirmed when the PTAB
`
`found claims of the AIT patents anticipated or obvious over three different grounds
`
`based on three different primary prior art references in three different fields.)
`
`Although the AIT Patents’ specification describes embodiments related to
`
`management of changes in environmental, health, and safety regulations, and AIT
`
`has one patent (US. 6,341,287) whose single claim is more commensurate with the
`
`specification, that is not the patent AIT chose to assert. The claims of the asserted
`
`AIT Patents (the ‘482 and ‘ 1 11 patents) are divorced from the specification and
`
`unreasonably broadly drafted, with no mention of the regulatory aspects on which
`
`the specification focuses. The validity challenge identification team agreed with
`
`the Examiner’s assessment in the parent application to the ‘1 1 1 patent of a claim
`
`that was nearly identical to the issued independent claim in the ‘1 11 patent:
`
`If the examiner had not read the application number she never
`
`would have realized that these claims went with this
`
`specification. The claims are extremely generic and broad there
`
`is no mention about regulatory changes or anything that the
`
`12
`
`
`
`invention talks about in the first 13 pages of the specification
`«fl»: .n. .
`4.»:
`.
`Lila
`Ll
`
`“user interface element” for a particular application, if you
`1‘
`77
`taiKed to any software developer every project they worked on
`v
`-4
`_
`-
`-
`J
`v
`has at least these two elements and probabl" 1 .094. of t;
`
`software projects.
`
`(EX. 1013 in 1PR2015=01750, at 7—8.)
`
`22.
`
`1
`Similarly,
`
`TT’
`l 1 s infringement Complaint against Salesforce in the
`
`I Tnifpd Stafn
`wuw
`mes
`
`111a e no mentio i
`"ada (EX. l093) “cede
`m e
`"
`
`of any of the regulatory aspects on which the AIT Patents” specifications focus.
`
`Instead, AIT’s Complaint characterized the AIT Patents broadly as directed to
`
`“application development with a simple and efficient metadata-driven application
`
`platform” (EX. 1093 at ii 10) and as infringed by a plathrm “designed for
`
`developing and deploying cloud computing applications via configuration—driven
`
`development” (EX. 1093 at ll 13), with no tie to government regulations or
`
`managing regulatory changes. As RPX explained in its petitions for the AlT lPRs,
`
`the AIT Patents’ “claims are much more broadly directed to a system using a
`
`classic and well—known multi—layered architecture generating an application user
`
`interface... (often referred to as a model-view-controller or MVC architecture)
`
`[that] dates back to the 19705 and was developed to facilitate the design of
`
`software applications in a way that leverages the commonality among user
`
`13
`
`
`
`interface (UI) elements and other aspects ofmany software applications." (Paper
`
`No.
`
`l at l, emphasis added.) In the estimation of RPX‘s validity challenge
`
`identification team, the vast majority of modern online software application
`
`developers use such architectures, and it was highly likely that AIT would proceed
`
`to assert these patents against a large portion of this industry if the AIT Patents
`
`remained enforceable and AIT achieved success against its infringement lawsuit
`
`defendant. RPX mapped the AIT Patents to. companies in technology areas
`
`that RPX believed AIT might target for assertion of the AIT Patents, based on the
`
`claims ofthe AIT Patents, AIT’s infringement Complaint against Salesforce, and
`
`historical activities of NPES (like AIT) with patents in similar technology areas.
`
`23.
`
`RPX did not file the AIT IPR petitions for the purpose of extricating
`
`Salesforce from its lawsuit with AIT. The validity challenge identification team,
`
`of which I was a member, selected the AIT Patents as IPR candidates for the
`
`primary purpose of benefitting RPX’s reputation and future market pricing for
`
`patent acquisitions, by preventing AIT from asserting its facially invalid patents
`
`against- other companies that RPX had identified as potential targets given the
`
`breadth ofAIT’s infringement contentions in its lawsuit against Salesforce. (See
`
`1] 22 above.) I agree with the statements in 1] 42 of Exhibit 1019, which are
`
`consistent with my own recollection:
`
`14
`
`
`
`RPX determined that ifthe AIT Patents are not invalidated, it is
`
`highly likely that they will ultimately be broadly asserted
`
`against the industry. For example, RPX determined that the
`
`technology tags for the asserted AIT Patents have a broad reach
`
`- they were mapped— to - different
`
`companies (including- RPX clients and prospective
`
`clients) as ofthe date the NT lPRs were filed. Based on RPX’S
`
`deep knowledge of NPE litigation strategies, RPX determined
`
`that it was also likely that the NPE would seek cost-of-litigation
`
`settlements due to the highly suspect validity of the AIT
`
`Patents.
`
`24.
`
`I also agree with the statements in 11 38 ofExhibit 1073. IfRPX’s
`
`intention had been to help extricate Salesforce from its lawsuit with AIT, RPX
`
`would have engaged with AIT’s multiple overtures toward settlement, for example
`
`to at least explore the potential terms ofa license. RPX did not engage with AIT’s
`
`settlement overtures, because RPX’s motivation was to invalidate the AIT Patents
`
`for RPX’s own business reasons, and not to end Salesforce’s lawsuit. Even if
`
`Salesforce had settled out of the lawsuit on its own during the pendency ofthe AlT
`
`lPRs, RPX have continued to prosecute the lPRs given that RPX’s intention was to
`
`invalidate the AIT Patents in RPX’s own interests.
`
`25.
`
`In determining whether the AlT Patents were good IPR candidates,
`
`the validity challenge identification team applied and evaluated the factors set forth
`
`in the “Selection Criteria" of the Best Practices Guide (EX. 2018). For example,
`
`13
`
`
`
`there were a limited number of patents asserted in AlT‘s litigation (first factor),'
`
`—- The MT Patents" claims appeared
`
`overbroad under AIT‘s likely infringement read in accordance with AlT’s
`
`Complaint. and we felt confident that we could and subsequently did identify what
`
`we believed to be strong prior art—. RPX would likely enjoy
`
`significant reputational benefits in invalidating the All Patents (seventeenth
`
`factor). because (a) AlT‘s behavior appeared characteristic of an NPE (e.g.,
`
`incorporating what appeared to be a shell corporation in Nevada for what we
`
`hypothesized to be a forum shopping tactic; asserting the AIT Patents in a manner
`
`that was inconsistent with their specification; etc.); (b) we believed AlT‘s overly
`
`broad patents and likely infringement reads to be textbook examples of why there
`
`are so many critics of the U.S. patent system; and (c) we believed AIT‘S likely
`
`infringement reads arguably put in their crosshairs for future lawsuits the entire
`
`software industry— which is particularly sensitive to
`
`“nuisance" patent infringement assertions by NPEs.
`
`26.
`
`The validity challenge identification team identified the AIT Patents
`
`as good potential lPR candidates in February 2015 after the defendant named in
`
`AlT‘s initial lawsuit had its CBM petitions denied and had become time-barred
`
`from raising the NT Patents‘ clear invalidity before the Patent Trial and Appeal
`
`16
`
`
`
`Board (PTAB); not because RPX‘s motivation was to assist Salestbrce, but
`
`because RPX was interested in preventing l'uture lawsuits and believed (based on
`
`RPX‘S experience with non-practicing entities (NPEs)) that the odds of future
`
`lawsuits increase dramatically once the only defendant in the initial lawsuit
`
`becomes time-barred from filing a validity challenge with the PTAB.
`
`'l‘hese
`
`—. Based
`
`its eeeeieeee with We
`
`RPX believed it was highly likely that AIT would be emboldened by the CBM
`
`denial and would seek to extract nuisance settlements from a large number of other
`
`companies unless RPX or another party challenged the patents via lPR before AIT
`
`filed additional lawsuits. RPX’S experience with and research regarding NPEs
`
`indicates that NPE lawsuits tend to settle quickly for nuisance—level settlement
`
`amounts, such that RPX believed a validity challenge filed after additional
`
`companies had been sued would likely be too late to prevent the damage of those
`
`lawsuits to the industry and to the patent market. Therefore, RPX believed the
`
`time to act was as soon as practicable after the initial defendant had lost its ability
`
`to challenge the patents before the PTAB, and before the NPE’s litigation
`
`campaign dramatically expanded through large numbers of additional lawsuits.
`
`The fact that the initial defendant who had become time-barred was an RPX client
`
`17
`
`
`
`(Salesforce) played no role in the foregoing analysis undertaken by the validity
`
`challenge identification team.
`
`27.
`
`The validity challenge identification team never received any
`
`suggestion from anyone outside the team to challenge the AIT Patents’ validity to
`
`benefit Salesforce. Within the team, any potential ancillary benefit to Salesforce
`
`was never discussed by the validity challenge identification team as a positive
`
`motivating factor for challenging the AIT Patents” validity, and I did not consider
`
`any potential ancillary benefit to Salesforce to be a motivating factor.
`
`28. When the validity challenge identification team commenced the
`
`process of evaluating the AIT Patents as potential IPR candidates in February
`
`2015, the fact than an RPX client was the sole defendant in suit was instead a topic
`
`of concern—a factor that weighed against RPX filing the IPR petitions, because of
`
`(a) the risk of costly protracted discovery associated with a likely RPI challenge by
`
`the patent owner, (b) the likelihood that the RPX client would react negatively if
`
`RPX’s IPRs were not successful in invalidating the AIT Patents (because an
`
`unsuccessful validity challenge would likely embolden the plaintiff patent owner),
`
`(c) the likelihood that the RPX client would react negatively if RPX took claim
`
`construction positions in the AIT IPRs that might be inconsistent with claim
`
`construction positions the client planned to advance to support non—infringement
`
`positions in the litigation, and (d) the limited breadth (i.e., only a single defendant
`
`18
`
`
`
`rather than many defendants) ofthe patent assertion campaign by the plaintiff at
`
`the time the lPRs were filed. These issues were part ofour consideration -
`
`—. As to
`
`(a), we eventually overcame the concern because we believed we were -orrect on
`
`the merits and would prevail in any RPI challenge given that RPX was filing the
`
`IPRs in its own interests and not the client’s, and had even received an indication
`
`of the client’s mminterest in any assistance from RPX with the underlying
`
`litigation. (See ‘H 35-36 below.) As to (b) and (c), we eventually overcame the
`
`concerns because we felt very strongly that the AIT Patents were facially invalid
`
`and that we had developed strong prior art grounds that would provide multiple
`
`independent bases to successfully invalidate the patents, such that we should not
`
`allow the concerns ofan uninvolved party to inlluenee our independent decision to
`
`file. As to (d), we eventually overcame the concern because we felt confident.
`
`based on what we perceived to be AIT’s forum shopping tactic and AlT‘s
`
`overbroad likely infringement read, that AIT would sue other constituents ofthe
`
`software industry once it had extracted a settlement from the then-sole defendant in
`
`suit. Thus, despite the concerns we considered due to the sole defendant in the
`
`lawsuit being an RPX client, the validity challenge identification team decided to
`
`move forward with the All lPRs because the AIT Patents were overall very strong
`
`19
`
`
`
`candidates for invalidation when the selection criteria in our Best Practices Guide
`
`were evaluated collectively.
`
`29.
`
`To my knowledge, RPX has never had any authority (express,
`
`implied, apparent, or otherwise) to act on Salesforce’s behalf (as Salesforce’s
`
`agent, proxy, attorney—in-fact, or any other way) in challenging the validity of any
`
`patent (Via IPR or any other type of validity challenge). To my knowledge, no
`
`suggestion was ever made to the validity challenge identification team that RPX
`
`had any such authority to act on Salesforce’s behalf or that RPX should be
`
`motivated to file IPRs for Salesforce’s benefit.
`
`I was involved in overseeing the
`
`preparation of the AIT IPR petitions and RPX’s prosecution of the AIT IPRs, and
`
`RPX never conducted any aspect of the proceeding on Salesforce’s behalf and
`
`instead pursued only RPX’S own interests.
`
`30.
`
`RPX’S motivation in filing the AIT IPR petitions was to have AIT’s
`
`facially invalid claims declared unpatentable by the PTAB, and RPX acted only in
`
`RPX’S own interests. For example, in adopting its proposed interpretations of the
`
`AIT Patents’ claim terms, RPX did not concern itself with any noninfringement
`
`position(s) that Salesforce may have Wished to advance.
`
`VII. RPX’S 2015 COMMUNICATIONS WITH SALESFORCE
`
`REGARDING THE AIT-SALESFORCE LITIGATION
`
`31.
`
`The Federal Circuit opinion references two 2015 phone calls between
`
`RPX and Salesforce representatives, which were described in Exhibit 1019. (897
`
`20
`
`
`
`17.3d at 1355 n.6, citing Ex. 1019 at fl
`
`: 27-28.) 1 was a participant in both of those
`
`phone calls.
`
`32.
`
`Paragraph 27 of Exhibit 1019 accurately describes the phone call on
`
`March 11, 2015, in which 1 participated with—and William
`
`Chuang ot‘RPX and— of Salesforce. During that
`
`phone call, RPX asked whether Salesforcc would like RPX to try to obtain
`
`information from AlT, because RPX had had prior dealings with AIT’s counsel
`
`and often communicated with lawyers ofNPEs involved in assertion campaigns
`
`about how the NPE was valuing its asserted patent(s). This would not have
`
`involved RPX taking any action in a representative capacity on Salesforce‘s behalf.
`
`RPX would simply have communicated with AIT in an attempt to learn, for
`
`exam—-i—. This
`
`would have been an example ot‘RPX collecting market intelligence and sharing
`
`that data with a client. which is part ofRPX’s core defensive patent aggregation
`
`service. See. e.g., Ex. 2008 at 3 (“As a part of our solution, we provide extensive
`
`patent market intelligence and data to our clients. Clients can access this market
`
`intelligence and data through our proprietary web portal and through discussions
`
`with our client relations taunt"), emphasis added. Salesl‘orce indicated that it was
`
`not interested in RPX communicating with AIT at the time of the March 1 l. 2015,
`
`phone call. Though Salesforce‘s (‘BM petitions had already been denied,
`
`
`
`Salcsforce gave no indication whatsoever ofany desire for RPX to file a validity
`
`challenge. and validity challenge was not a topic ofconsideration or discussion
`
`during the phone call.
`
`33.
`
`By the time of the phone call on March 11. 2015. RPX’s validity
`
`challenge identification team, ofwhich I was a member, had already made a
`
`determination in February 2015 to propose—
`
`— that RPX file lPR petitions challenging the AIT
`
`Patents. The discussion with Saleslbrce in the phone call on March l 1, 2015, did
`
`not relate to, and did not affect or change, the determination to propose filing the
`
`All lPR petitions. The validity challenge identification team submitted its
`
`proposal to file the AlT lPR petitions to_ I believe during a
`
`meeting on March 19, 3015, and received final approval_
`
`to prepare and file the AIT lPR petitions during that same meeting. At the time
`
`when— approved the filing of the AIT lPR petitions, the most
`
`recent communication between RPX and Salesforce concerning All had been the
`
`phone call on March 1 1__ 3015. during which Salesforce indicated it was not
`
`interested in RPX providing any type of assistance regarding AlT. RPX‘s liling of
`
`the AlT lPR petitions was not undertaken on behall‘ol‘Salesforce in any respect.
`
`34.
`
`Paragraph 28 ot‘lixhibit 1019 accurately describes the April or May
`
`2015 phone call in which 1 participated with— of RPX and -
`
`’7'?
`
`
`
`— ot'Salesforee. Footnote 6 of the Federal Circuit
`
`opinion suggests this phone call may have involved “Salesforce’s change of heart
`
`and RPX‘s effort not to acquire any additional information." This is not an
`
`accurate characteri7ation ofthe phone call.
`
`In my recollection, nothing in that
`
`phone call indicated a “change of heart” by Salesl‘oree. Salesforec began to bring
`
`up the subject of the AIT—Salesforee Litigation, but did not indicate what
`
`Salesforce was intending to say about that subject. The subject was dropped
`
`because RPX indicated that it was not inclined to discuss the AIT-Salesforce
`
`Litigation. RPX never learned what Salesforee had intended to say on the subject
`
`of the AIT-Salesforee Litigation. Salesforce gave no indication during the April or
`
`May 2015 phone call that it desired any action by RPX related to NT. Before,
`
`during, and after the April or May 2015 phone call, I and RPX’s validity challenge
`
`iden
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