Served on behalf of Petitioner
`By: Richard F. Giunta
`Elisabeth H. Hunt
`Randy J. Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`Tel: (617) 646-8000
`Fax: (617) 646-8646
`RGiunta-PTAB@wolfgreenfield.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`RPX Corporation
`Petitioner
`v.
`Applications in Internet Time, LLC
`Patent Owner
`_____________
`
`Case IPR2015-01750
`Patent 8,484,111 B2
`
`Case IPR2015-01751
`Case IPR2015-01752
`Patent 7,356,482 B21
`_____________
`PETITIONER’S RESPONSES TO
`PATENT OWNER’S REQUESTS FOR PRODUCTION
`
`1 The word-for-word identical paper applies to each proceeding identified in the
`heading.
`
`RPX Exhibit 1196
`RPX v. AIT
`IPR2015-01752
`
`
`By: Richard F. Giunta
`Elisabeth H. Hunt
`Randy J. Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`Tel: (617) 646-8000
`Fax: (617) 646-8646
`RGiunta-PTAB@wolfgreenfield.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`RPX Corporation
`Petitioner
`v.
`Applications in Internet Time, LLC
`Patent Owner
`_____________
`
`Case IPR2015-01750
`Patent 8,484,111 B2
`
`Case IPR2015-01751
`Case IPR2015-01752
`Patent 7,356,482 B21
`_____________
`PETITIONER’S RESPONSES TO
`PATENT OWNER’S REQUESTS FOR PRODUCTION
`
`1 The word-for-word identical paper applies to each proceeding identified in the
`heading.
`
`RPX Exhibit 1196
`RPX v. AIT
`IPR2015-01752
`
`
`
`Petitioner RPX Corporation (“RPX”) hereby responds to the Patent Owner’s
`
`Request for Production.
`
`RESPONSES
`
`Request No. 1: Documents sufficient to show Salesforce’s relationship to
`
`RPX, such as membership or client agreements, and renewals.
`
`Response No. 1:
`
`RPX has produced all RPX membership agreements with Salesforce.com
`
`(“Salesforce”), including the Membership and License Agreement executed
`
`, (Bates Range RPX000014-RPX000025), the First Amendment
`
`executed
`
`, (Bates Range RPX000009-RPX000011) and the Second
`
`Amendment executed
`
`, (Bates Range RPX000012-RPX000013).
`
`Although RPX does not believe the Board’s discovery Order calls for
`
`agreements under which RPX is a customer and user of Salesforce’s software (see
`
`Response No. 4 below), RPX has nevertheless produced
`
` Order Forms
`
`documenting RPX’s orders for Salesforce software (Bates Ranges RPX000001-
`
`RPX000008 and RPX000026-RPX000036). These are sufficient to show RPX’s
`
`relationship to Salesforce as a software customer of Salesforce dating back to
`
`.
`
`RPX believes that an additional Order Form for Salesforce software was signed in
`
`, but no such Order Form was found after diligent effort.
`
`RPX Exhibit 1196 - Page 1
`
`
`
`Request No. 2: Documents sufficient to show RPX’s annual billings to
`
`Salesforce and the services associated with those billings.
`
`Response No. 2:
`
`RPX has produced a spreadsheet detailing RPX’s billings invoiced to
`
`Salesforce. (Bates No. RPX000037.)
`
`The
`
` Membership and License Agreement (Bates Range
`
`RPX000014-RPX000025), the
`
` First Amendment (Bates Range
`
`RPX000009-RPX000011), and the
`
` Second Amendment (Bates Range
`
`RPX000012-RPX000013) produced under Request No. 1 are sufficient to show
`
`RPX’s services to Salesforce associated with those billings.
`
`Request No. 3: Communications between RPX and Salesforce, and their
`
`respective attorneys and agents, relating to the Challenged Patents, the Related IPR
`
`Proceedings, or the Salesforce Litigation, whether by name, code name or
`
`euphemism.
`
`Response No. 3:
`
`There were no communications between RPX and Salesforce about the IPR
`
`Proceedings before they were filed. The only communications between RPX and
`
`Salesforce regarding the IPR Proceedings occurred after the petitions were filed
`
`and were driven by AIT’s discovery requests,
`
`RPX Exhibit 1196 - Page 2
`
`
`
`.
`
`RPX has produced an e-mail dated
`
`, (Bates Range
`
`RPX000047-RPX000067) and a Declaration of William W. Chuang (“the
`
`Declaration”) (Bates Range RPX000099-RPX000223) that summarizes oral
`
`communications that occurred between RPX and Salesforce employees relating to
`
`the Challenged Patents, the Related IPR Proceedings and/or the Salesforce
`
`Litigation. To the best of RPX’s knowledge, as explained in the Declaration, these
`
`are the only communications between RPX and Salesforce relating to the
`
`Challenged Patents, the Related IPR Proceedings, or the Salesforce Litigation,
`
`whether by name, code name or euphemism, and there have been no such
`
`communications between outside lawyers acting on behalf of RPX and Salesforce.
`
`RPX has also produced a Daily Litigation Alert e-mail dated November 11,
`
`2013, (Bates Range RPX000038-RPX000046) that mentions the filing of the
`
`Salesforce Litigation. As explained in the Declaration, it is possible that one or
`
`more Salesforce employees may have received this e-mail; however, it is not
`
`known to RPX whether any Salesforce employees were subscribers to that
`
`particular Daily Litigation Alert.
`
`RPX Exhibit 1196 - Page 3
`
`
`
`Request No. 4: Documents sufficient to show the names, dates, locations
`
`and times of any meetings or communications between Salesforce and RPX, or
`
`their attorneys, after the Salesforce Litigation began, unless produced under a prior
`
`request herein.
`
`Response No. 4:
`
`All meetings or communications between Salesforce and RPX, or their
`
`attorneys, that related to the Challenged Patents, the Related IPR Proceedings
`
`and/or the Salesforce Litigation are addressed in the response to Request No. 3.
`
`RPX has produced a spreadsheet showing the names, dates, locations and
`
`times of all meetings and communications between employees of Salesforce in its
`
`capacity as an RPX client and employees of RPX in its capacity as a service
`
`provider, or their attorneys, after the Salesforce Litigation began, that RPX was
`
`able to identify after a diligent search. (Bates Range RPX000077-RPX000090.)
`
`Where RPX’s records were not clear on precisely which individuals participated in
`
`a meeting or communication, RPX erred on the side of being overly inclusive in
`
`identifying the individuals that are believed to have participated.
`
`RPX does not believe that the Board’s discovery Order contemplated
`
`meetings or communications between employees of Salesforce in its capacity as a
`
`software vendor and employees of RPX in its capacity as a Salesforce customer
`
`and user of that software. AIT represented to the Board (Patent Owner’s Motion
`
`RPX Exhibit 1196 - Page 4
`
`
`
`for Additional Discovery at 2) that “RPX does not make, use or sell any
`
`commercial product relevant to AIT’s patents.” RPX does not believe that the
`
`Board contemplated ordering RPX to produce discovery relating to
`
`communications between Salesforce’s product personnel and RPX’s IT department
`
`about issues such as bug fixes, software updates, new user licenses or renewals,
`
`software support questions, etc. Such communications have no bearing
`
`whatsoever on the issue of real party-in-interest in these proceedings.
`
`Although RPX believes that communications between RPX’s IT department
`
`and Salesforce about Salesforce’s software are not contemplated by the Board’s
`
`Order, RPX has produced documents sufficient to show the meetings or
`
`communications between RPX and Salesforce relating to RPX’s use of the
`
`Salesforce software.
`
` are the RPX employees
`
`who typically communicate with Salesforce employees regarding RPX’s use of
`
`Salesforce’s software. Any other RPX employee is not likely to have had
`
`substantial communication with Salesforce about RPX’s use of the Salesforce
`
`software.
`
`RPX has produced a first spreadsheet (Bates Range RPX000094-
`
`RPX000098) including all meetings and communications in which
`
`participated. This production is sufficient to show the requested information for
`
`RPX Exhibit 1196 - Page 5
`
`
`
`communications relating to RPX orders and renewals of Salesforce software.
`
`RPX has also produced a second spreadsheet (Bates Range RPX000091-
`
`RPX000093) including all meetings and oral communications in which
`
` of RPX was a participant (Bates No. RPX000091). With respect to email
`
`communications involving
`
` and Salesforce (relating to issues such
`
`as software support and bug fixes), all such e-mail communications for a
`
`representative month (i.e., July 2015) are addressed in the second spreadsheet
`
`(Bates Range RPX000092-RPX000093). The communications for this
`
`representative month are sufficient to show these types of communications for the
`
`entire time period requested.
`
`Request No. 5: [Intentionally omitted]
`
`Request No. 6: All documents showing why RPX decided to challenge the
`
`Challenged Patents, unless produced under a prior request herein.
`
`Response No. 6:
`
`RPX has produced a Validity Challenge Identification Process and Best
`
`Practices document (Bates Range RPX000074-RPX000075), a Validity Challenge
`
`Identification presentation (Bates Range RPX000068-RPX000073), and tags that
`
`RPX applied to the Challenged Patents identifying technology areas implicated by
`
`the Challenged Patents (Bates No. RPX000076). RPX has also produced the
`
`RPX Exhibit 1196 - Page 6
`
`
`
`Declaration of William W. Chuang (Bates Range RPX000099-RPX000223) which
`
`explains the documents produced in response to Request No. 6, explains the role
`
`they played in RPX’s decision to challenge the Challenged Patents, and explains in
`
`detail RPX’s decision to challenge the Challenged Patents.
`
`Request No. 7: Documents, such as invoices, sufficient to show all funds
`
`or consideration provided to RPX with the purpose of funding the Related IPR
`
`Proceedings, including dates and source of funds, unless produced under a prior
`
`request herein.
`
`Response No. 7:
`
`RPX has no documents responsive to this request. No funds or
`
`consideration were provided to RPX with the purpose of funding the Related IPR
`
`Proceedings.
`
`Request No. 8: Documents sufficient to show how Sanford R. Robertson
`
`separates his fiduciary duties to RPX and Salesforce despite serving
`
`simultaneously as a Board Member of RPX and as a Board Member of Salesforce.
`
`Response No. 8:
`
`RPX no documents responsive to this request. RPX has produced the
`
`Declaration of William W. Chuang (Bates Range RPX000099-RPX000223) which
`
`explains that RPX board member Sandy Robertson was uninvolved in and did not
`
`influence RPX’s decision to challenge the Challenged Patents.
`
`RPX Exhibit 1196 - Page 7
`
`
`
`Dated: November 3, 2015
`
`Respectfully submitted,
`RPX Corporation
`
`By /Richard F. Giunta /
`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 Ave., Boston, MA 02210
`Tel.: 617.646.8000
`Fax: 617.646.8646
`
`RPX Exhibit 1196 - Page 8
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`It is hereby certified that on this 3rd day of November, 2015, a copy of the
`
`foregoing document was served via electronic mail, as previously consented to by
`
`Patent Owner upon the following counsel of record:
`
`Steven C. Sereboff (Reg. No. 37,035)
`SoCal IP Law Group LLP
`310 N. Westlake Boulevard, Suite 120
`Westlake Village, CA 91362
`uspto@socalip.com
`
`/Richard F. Giunta /
`Richard F. Giunta, Reg. No. 36,149
`
`RPX Exhibit 1196 - Page 9
`
`
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