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
`US Patent No. 8,484,111
`
`Case IPR2015-01751
`Case IPR2015-01752
`Patent 7,356,482 B21
`____________________
`
`________________________________________________________________
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`1 This motion addresses issues common to all three cases. As required by the
`
`Board’s October 2, 2015 order in each, the word-for-word identical paper is filed
`
`in each proceeding identified in the heading.
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`RPX CORPORATION,
`Petitioner
`
`v.
`
`APPLICATIONS IN INTERNET TIME LLC,
`Patent Owner
`____________________
`
`Case IPR2015-01750
`US Patent No. 8,484,111
`
`Case IPR2015-01751
`Case IPR2015-01752
`Patent 7,356,482 B21
`____________________
`
`________________________________________________________________
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`1 This motion addresses issues common to all three cases. As required by the
`
`Board’s October 2, 2015 order in each, the word-for-word identical paper is filed
`
`in each proceeding identified in the heading.
`
`
`
`
`
`
`
`Exhibit List
`
`Exhibit Description
`2001 Patent Owner's Proposed Discovery Requests to Petitioner
`2002 Complaint filed in Applications in Internet Time, LLC v.
`Salesforce Inc., No. 3:13-cv-00628 (D.Nev.), filed on November
`8, 2013.
`2003 Return of Service of Summons in a Civil Action in Applications
`in Internet Time, LLC v. Salesforce Inc., No. 3:13-cv-00628
`(D.Nev.), dated November 20, 2013.
`2004 Docket Report for Applications in Internet Time, LLC v.
`Salesforce Inc., No. 3:13-cv-00628 (D.Nev.)
`2005 Scheduling Order in Applications in Internet Time, LLC v.
`Salesforce Inc., No. 3:13-cv-00628 (D.Nev.) dated May 18, 2015.
`2005 RPX Presentation, “The Market for Patents and Patent Litigation”
`(May 21, 2012).
`2006 RPX's “Client Relations” webpage at
`http://www.rpxcorp.com/rpx-membership/rpx-client- relations/.
`2007 RPX's “Why Join” webpage, “We can help” expanded, at
`http://www.rpxcorp.com/why-join-rpx/.
`2008 RPX’s 2013 Annual Report.
`2009 RPX Board of Directors, http://www.rpxcorp.com/rpx-team/
`2010 Salesforce Board of Directors,
`http://www.salesforce.com/company/leadership/board-of-
`directors/
`2011 Sandy Robertson’s bio from Francisco Partners’ website,
`http://www.franciscopartners.com/team/sanford-robertson
`2012 T4A.org directors and members, http://www.t4a.org/about-
`us/board/
`2013 T4A.org About Us page, http://www.t4a.org/about-us/
`2014
`“Tech Billionaire Marc Benioff Donates Generously To
`Politicians And This Is What He Wants In Return,”
`http://www.businessinsider.com/what-marc-benioff-wants-from-
`politicians-2014-9
`2015 RPX's “Why Join” webpage, “We provide” expanded, at
`http://www.rpxcorp.com/why-join-rpx/
`2016 RPX’s head office location, http://www.rpxcorp.com/about-rpx/
`2017 Salesforce’s head office location,
`http://www.salesforce.com/company/locations/
`
`i
`
`
`
`
`
`I.
`
`Relief Requested
`
`Patent Owner Applications in Internet Time, LLC (AIT) asks the Board to
`
`compel Petitioner RPX Corporation (RPX) to produce documents relevant to
`
`identifying real-parties-in-interest, as set forth in the proposed document requests
`
`provided as Exhibit 2001. The Board authorized this motion in its October 1, 2015
`
`Order. Paper 7 at 3. Patent Owner expects that the requested discovery, together
`
`with additional information, will make a compelling showing that RPX is the agent
`
`of un-named third party Salesforce.com, Inc. (Salesforce), thus establishing that
`
`the petitions are time-barred under 35 U.S.C. § 315(b).
`
`II.
`
`Factual Background
`
`AIT is a consulting company with patented technology that enables
`
`individuals to develop and deploy business applications through a meta-data driven
`
`application platform without being dependent on complex programming. It has
`
`three patents and one pending application, all related by continuation.
`
`The essence of RPX’s business model is to “serve as an extension of the
`
`client’s in-house legal team,” and to represent clients who are accused of patent
`
`infringement, acting as their proxy to “selectively clear” liability for infringement
`
`as part of RPX’s “patent risk management solutions.” See Ex. 2006; Ex. 2007; Ex.
`
`2008 at 3-5, 26, 53. RPX’s services include attacking patents that are or will likely
`
`
`
`1
`
`
`
`
`
`be asserted against its clients. See, e.g., Ex. 2008 at 4 (services “include [] the
`
`facilitation of challenges to patent validity”).
`
`At first, petitioner’s choice to challenge two AIT patents would seem to be
`
`an odd one: AIT has not sued or threatened to sue RPX on any patent, AIT never
`
`offered to license any patent to RPX, and RPX does not make, use or sell any
`
`commercial product relevant to AIT’s patents. RPX seemingly has no interest at all
`
`of its own, and therefore could not be a real party in interest.
`
`The underlying facts, however, offer a straight-forward explanation:
`
`Salesforce is the principal, RPX is the agent, and Salesforce is therefore the true
`
`real party in interest. As counsel for RPX admitted during the hearing, RPX has
`
`filed seven groups of IPRs, and in at least two, real party in interest (RPI) has been
`
`addressed. In one group, the Board denied institution of RPX’s petitions for IPR,
`
`finding that RPX acted as proxy for its time-barred client, Apple, Inc. See RPX
`
`Corp. v. VirnetX, Inc., IPR2014-00171, Paper 57 at 7-10 (June 23, 2014). In the
`
`second case, the Board found reason to believe that RPX was again acting as a
`
`proxy and concealing the real party in interest. See Decision Granting Patent
`
`Owner’s Motion for Additional Discovery, Farmwald v. ParkerVision, Inc.,
`
`IPR2014-00946, IPR2014-00947 and IPR2014-00948, Paper 25, 23, 23,
`
`
`
`2
`
`
`
`
`
`respectively (Feb. 20, 2015) (patent owner alleged that RPX is acting as the proxy
`
`for its client Qualcomm).2
`
`Sometimes, as in VirnetX, RPX acts overtly on behalf of its clients. After
`
`losing in VirnetX though, one naturally expected RPX to learn from its mistakes.
`
`That seems to be the case here and in ParkerVision. After VirnetX, like a dutiful
`
`agent (or extension of an in-house legal team), RPX seems to have taken a more
`
`autonomous guise in its IPR efforts. Nonetheless, RPX continues to act with
`
`apparent authority and for the benefit of its principal/client.
`
`The issue of real party interest has evolved, and the Board continues to
`
`recognize new fact patterns which demonstrate the presence of an un-named RPI.
`
`As stated in the Trial Practice Guide, whether a party who is not a named
`
`participant in a given proceeding is a “real party-in-interest” to that proceeding “is
`
`a highly fact-dependent question.” 77 Fed. Reg. at 48,759 (citing Taylor v.
`
`Sturgell, 533 U.S. 880 (2008)). “[T]he spirit of that formulation as to IPR . . .
`
`proceedings means that, at a general level, the ‘real party-in-interest’ is the party
`
`that desires review of the patent. Thus, the ‘real party-in-interest’ may be the
`
`
`2Because of its procedural posture, the ultimate issue of RPI in ParkerVision has
`
`not been addressed by the Board.
`
`
`
`3
`
`
`
`
`
`petitioner itself, and/or it may be the real party or parties at whose behest the
`
`petition has been filed.” Id. There is no “bright line test.” Id.
`
`The law recognizes that a principal is liable for its agent’s acts, even where
`
`the principal is not closely controlling the agent. American Soc'y of Mechanical
`
`Eng'rs v. Hydrolevel Corp., 456 U.S. 556 (1982). “[F]ew doctrines of the law are
`
`more firmly established or more in harmony with accepted notions of social policy
`
`than that of the liability of the principal without fault of his own.” Gleason v.
`
`Seaboard Air Line Ry. Co., 278 U.S. 349, 356, (1929). A principal is liable for an
`
`agent when the agent acts within the scope of his apparent authority. American
`
`Soc'y of Mechanical Eng'rs v. Hydrolevel Corp., 456 U.S. 556, 102 S.Ct. 1942
`
`(1982).
`
`AIT believes that the evidence will show that RPX filed the petitions in
`
`these Related IPR Proceedings3 with the apparent authority of and for the sole
`
`benefit of Salesforce. As RPX itself states, “RPX’s interests are 100% aligned with
`
`those of our clients.” Ex. 2015.
`
`Two years ago, AIT sued Salesforce on the same two patents that RPX
`
`challenges in the Related IPR Proceedings, alleging infringement of the same
`
`3 “Related IPR Proceedings” means the three IPR proceedings initiated by RPX
`
`against AIT’s patents: IPR2015-01750, IPR2015-01751 and IPR2015-01752.
`
`
`
`4
`
`
`
`
`
`claims
`
`that are challenged here. Applications
`
`in Internet Time, LLC v.
`
`Salesforce.com, Inc., No. 3:13-cv-00628 (D.Nev.) (“the Salesforce Litigation”). Ex.
`
`2002 at 3-5. The overlap in the Related IPR Proceedings and the Salesforce
`
`Litigation is no coincidence.
`
`In the hearing on October 1, 2015, counsel for AIT asserted that Salesforce
`
`has been an RPX client for some time and that Salesforce has paid RPX millions of
`
`dollars to reduce Salesforce’s patent infringement liability. Counsel for RPX did
`
`not deny this. The only company ever accused of infringing the AIT patents is
`
`Salesforce, and it is RPX’s business to track this. Furthermore, RPX and Salesforce
`
`have an unusually close relationship – their Boards of Directors overlap. Finally, a
`
`strong reason exists for RPX to hide Salesforce’s involvement here: Salesforce is
`
`time-barred under 35 U.S.C. § 315(b) from petitioning for the Related IPR
`
`Proceedings.
`
`III. Reasons for the Requested Relief
`
`AIT requests discovery that is needed in the interest of justice to determine
`
`whether RPX is a proxy for Salesforce here. AIT believes that it can show that
`
`Salesforce is the real-party-in-interest and, therefore, that the Related IPR
`
`Proceedings are timed-barred under § 315(b). Each of the Garmin factors for
`
`
`
`5
`
`
`
`
`
`additional discovery is satisfied here. See Garmin Int'l Inc. v. Cuozzo Speed Techs.
`
`LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013).
`
`It is highly likely that the requested additional discovery will uncover
`
`useful information: As summarized below, publicly available information
`
`demonstrates a high probability that useful information will be uncovered-
`
`evidence confirming that Salesforce is the real-party-in-interest and, consequently,
`
`that this IPR is barred, see also Ex. 2001 (describing bases for document requests):
`
` Served with a complaint nearly two years ago, Salesforce was time-
`
`barred from petitioning for the Related IPR Proceedings. Ex. 2002 at
`
`3-5; Ex. 2003.
`
` Although AIT owns three patents, RPX elected only to challenge only
`
`the two patents asserted in the Salesforce Litigation. See Ex. 2002 at
`
`3-5.
`
` RPX has no independent reason to petition for the Related IPR
`
`Proceedings because AIT never sued or threatened to sue RPX on any
`
`patent (nor any other party except Salesforce); AIT never offered to
`
`license any patent to RPX, and RPX does not make, use, or sell any
`
`commercial product relevant to AIT’s patents.
`
`
`
`6
`
`
`
`
`
`
`
` RPX has not denied that Salesforce is its client and that Salesforce has
`
`paid RPX millions of dollars to reduce its patent infringement
`
`liability. RPX’s interests are “100% aligned” with those of clients
`
`such as Salesforce. Ex. 2015. To achieve its goals, RPX serves as “an
`
`extension of the client’s in-house legal team.” Ex. 2006.
`
` Mr. Sanford Robinson is on the Board of Directors of both RPX and
`
`Salesforce. See Ex. 2009, 2010, 2011. This is akin to RPX and
`
`Qualcomm sharing counsel, as addressed by
`
`the Board
`
`in
`
`ParkerVision. A corporate director has a fiduciary duty to the
`
`corporation. As a director of these two publicly traded companies, he
`
`has a fiduciary duty to each, which is best served by RPX acting for
`
`Salesforce here.
`
` The CEOs of RPX and Salesforce have opportunities for informal
`
`communications, such as through the T4A.org organization, Ex. 2012,
`
`whose mission is “to create a safe space for private and public sector
`
`leaders to serve their country through dialog, two-way exchange of
`
`ideas, and the creation of public-private partnerships that benefit all
`
`Americans.” Ex. 2013. Salesforce’s liability for patent infringement
`
`has been an important concern for its CEO, Ex 2014, and it is natural
`
`to expect that the CEOs of RPX and Salesforce would use the
`
`7
`
`
`
`
`
`
`
`T4A.org “safe space” and others to finds ways to reduce Salesforce’s
`
`patent infringement liability.
`
` The ease of covert communications between RPX and Salesforce is
`
`unusually easy – their head offices are next door to one another. See
`
`Ex. 2016, 2017 (showing both companies having head offices at One
`
`Market Plaza in San Francisco).
`
` RPX protects its clients who are targets of patent-infringement
`
`lawsuits by attacking patents on their behalf as part of RPX's “patent
`
`risk management solutions.” See Ex. 2005 at 15; Ex. 2006; Ex. 2007;
`
`Ex. 2008 at 3-5, 26, 53.
`
` In the past, RPX served as proxy for undisclosed accused patent
`
`infringers, filing IPR petitions on behalf of time-barred clients. See
`
`VirnetX at 7-10.
`
` After losing in VirnetX, RPX seems to have taken a more autonomous
`
`guise when acting as a proxy for its clients. See ParkerVision.
`
` Only through discovery can AIT learn whether Salesforce has
`
`employed a “double-blind”
`
`tactic as sometimes employed
`
`in
`
`anonymous ex parte reexaminations, where the real party in interest
`
`8
`
`
`
`
`
`has its outside counsel retain another law firm to file the request for
`
`reexam.
`
`The requested discovery does not seek RPX’s litigation positions: The
`
`requested discovery seeks only factual information regarding Salesforce’s
`
`relationship with RPX and its involvement with this proceeding, not RPX’s
`
`litigation positions. See Garmin at 13.
`
`AIT can only obtain the requested discovery through RPX: To be an
`
`RPI, a non-party’s participation with a petitioner need not be overt, and the
`
`evidence of an un-named RPI may be circumstantial. Zoll Lifecor Corp. v. Philips
`
`Elec. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014)
`
`(Paper 15). AIT needs the requested discovery to obtain the circumstantial
`
`evidence of Salesforce’s covert role in the Related IPR Proceedings. See Garmin at
`
`13-14. If RPX had some other reason to file the petitions here, that information is
`
`almost certainly known only to RPX. If RPX is covertly acting on behalf of
`
`Salesforce in particular, that information, too, is almost certainly known only to
`
`RPX.
`
`The instructions are easily understandable: The requested discovery's
`
`instructions are easily understandable having been modeled, in part, on instructions
`
`approved by the Board in Garmin and ParkerVision. See Garmin at 14.
`
`
`
`9
`
`
`
`
`
`The requests are narrowly tailored and not burdensome: The requested
`
`discovery is limited to ten document requests and is “sensible and responsibly
`
`tailored according to a genuine need.” See id. at 14-16. RPX’s compliance with the
`
`requested discovery will not require significant expenditure of resources or place a
`
`significant burden on meeting deadlines in this proceeding.
`
`IV. Conclusion
`For the foregoing reasons, AIT respectfully requests that the Board grant the
`
`requested additional discovery contained in Ex. 2001 and require RPX to produce
`
`all responsive documents within five business days of its order.
`
`Date: October 4, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Steven C. Sereboff/
`Steven C. Sereboff (Reg. No. 37,035)
`ssereboff@socalip.com
`M. Kala Sarvaiya (Reg. No. 58,912)
`ksarvaiya@socalip.com
`SoCal IP Law Group LLP
`310 N. Westlake Boulevard, Suite 120
`Westlake Village, CA 91362
`Telephone: (805) 230-1350
`Fax: (805) 230-1355
`Attorneys for Applications in Internet Time
`LLC
`
`10
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of this PATENT OWNER’S
`
`MOTION FOR ADDITIONAL DISCOVERY has been served via Express Mail
`on October 4, 2015, upon the following:
`
`Richard F. Giunta
`Elisabeth H. Hunt
`Randy J. Pritzker
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`
`Rgiunta-PTAB@wolfgreenfield.com
`
`
`
`Dated: October 4, 2015
`
`
`
`
`
`
`
`
`
`By: /Steven C. Sereboff/
`
`Steven C. Sereboff
`
`SoCal IP Law Group LLP
`
`
`
`
`
`11
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