Paper No. __
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`Filed on behalf of Petitioner
`By:
`/Richard F. Giunta/
`
`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
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`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 (REDACTED) REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE ON REAL-PARTY-IN-INTEREST(RPI)
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in the
`heading.
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`

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`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`!—1
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`INTRODUCTION ........................................................................................... ..1
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`III.
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`THE FACTS RELEVANT TO RPI ................................................................ ..5
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`IV.
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`SALESFORCE IS NOT AN RPI .................................................................... ..8
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`A. RPX Pursues Its Own Interests In These IPRs .......................................... ..8
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`THE LAW ON RPI ......................................................................................... ..2
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`INTRODUCTION ............................................................................................. 1
`I.
`II. THE LAW ON RPI ........................................................................................... 2
`III. THE FACTS RELEVANT TO RPI .................................................................. 5
`IV. SALESFORCE IS NOT AN RPI ...................................................................... 8
`A. RPX Pursues Its Own Interests In These IPRs ............................................ 8
`B. RPX Is Not Salesforce’s Proxy and Did Not File at Its Behest .................. 9
`B. RPX Is Not Salesforce’s Proxy and Did Not File at Its Behest ................ ..9
`1. Salesforce Did Not Pay For the IPRs ..................................................10
`1. Salesforce Did Not Pay For the IPRs ................................................ .. 10
`2. Salesforce Had No Role in the IPRs ...................................................10
`3. There Was No Communication About the Petitions ...........................10
`4. Shared Board Member Robertson Was Uninvolved ...........................11
` ................................12
`C.
`c.T .............................. -12
`D. AIT Mischaracterizes RPX’s History In Filing IPRs ................................13
`D. AIT Mischaracterizes RPX’s History In Filing IPRs .............................. ..l3
`V. AIT REPEATEDLY AND KNOWINGLY MISREPRESENTS
`FACTS .............................................................................................................15
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`2 Salesforce Had No Role in the IPRs ................................................. ..lO
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`3. There Was No Communication About the Petitions ......................... .. 10
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`4. Shared Board Member Robertson Was Uninvolved ......................... ..1l
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`AIT REPEATEDLY AND KNOWINGLY MISREPRESENTS
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`FACTS ........................................................................................................... .. l 5
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`TABLE OF AUTHORITIES
`
`CASES
`Butamax,
`IPR 2013-00214, Paper 11 ...................................................................................12
`
`Expert Electric, Inc. v. Levine,
`554 F.2d 1227 (2nd Cir. 1977) ............................................................................... 9
`
`General Foods Corp. v. Massachusetts Dept. of Public Health,
`648 F.2d 784 (1st Cir. 1981) .................................................................................. 9
`
`Global-Tech Appliances v. SEB S.A.,
`131 S.Ct. 2060 (2011) ..........................................................................................15
`
`ParkerVision,
`IPR 2014-00946, Paper 27 ...................................................................................14
`
`RPX Corporation v. Macrosolve, Inc.,
`Case IPR2014-00140 (PTAB May 16, 2014) (Paper 9)......................................... 3
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`RPX Corporation. v. VirnetX, Inc.,
`Case IPR2014-00171 (PTAB Jun. 5, 2014) (Paper 49) ...................................6, 14
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`Taylor v. Sturgell,
`553 U.S. 880 (2008) ...................................................................................... 4, 5, 9
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`TRW Automotive U.S. LLC v. Magna Electronics Inc.,
`Case IPR2015-00950 (PTAB Sept. 17, 2015) (Paper No. 8) ................................. 3
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`Unified Patents Inc. v. Hall Data Sync Technoogies, LLC,
`Case IPR2015-00874 (PTAB Sept. 17, 2015) (Paper 11) ...................................... 3
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`Unified Patents, Inc. v. Dragon Intellectual Property, LLC,
`Case IPR2014-01252 (PTAB Feb. 12, 2015) (Paper 37) ............................ 3, 8, 12
`
`Zerto,
`IPR2014-01295, Paper 31 ...................................................................................... 2
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`Zoll,
`IPR2013-00609, paper 15 ....................................................................................... 4
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`RULES
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`

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`77 F. Reg. at 48759 ........................................................................................... 3, 4, 8
`77 F. Reg. at 48759 ......................................................................................... .. 3, 4, 8
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`I.
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`
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`INTRODUCTION
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`RPX filed the petitions to further its own interests and is the sole RPI. The
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`petitions’ identification of RPI is presumed correct. To rebut that presumption AIT
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`must provide sufficient evidence to call RPX’s identification of RPI into question.
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`AIT was granted extensive discovery into (1) agreements between RPX and
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`Salesforce; (2) communications between RPX and Salesforce, including any
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`relating to these IPRs, the underlying patents and/or the litigation involving them;
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`(3) any funds RPX received to pay for the IPRs; and (4) the reasons why RPX filed
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`the IPRs. Paper 11. RPX provided all responsive documents and a sworn
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`declaration from William Chuang, VP of Client Relations at RPX, who was
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`involved in and explains RPX’s decision to file the IPRs. Ex. 1019 at ¶¶1, 5 and
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`34.2
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` Id. at ¶47.
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`As Mr. Chuang states unequivocally, “RPX had no communication with
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`Salesforce whatsoever regarding the filing of IPR petitions against the AIT Patents
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`2 Citations are to the Exhibit numbers used in IPR2015-01750 and IPR2015-01751.
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`before the AIT IPRs were filed. Salesforce did not request that RPX file the AIT
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`IPRs, was not consulted about the decision by RPX to file the IPRs, and did not
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`communicate with RPX about the searching for or selection of prior art asserted in
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`the AIT IPRs, the selection of counsel for the IPRs, the selection of an expert for
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`the IPRs, or any other aspect of the IPRs. RPX had no obligation (contractual or
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`otherwise) to Salesforce to file the AIT IPRs and Salesforce did not fund the AIT
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`IPRs.” Id. at ¶20.
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`After representing that the evidence RPX produced,
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` and the highly confidential reasons why RPX filed the IPRs, was
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`“needed” to determine whether Salesforce was an RPI, AIT completely ignored
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`this evidence in its Preliminary Response (PR). Mot. for Discovery at 5. Instead,
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`AIT invites the Board to speculate and draw unsupported inferences directly
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`refuted by the evidence RPX produced and AIT kept from the Board. AIT presents
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`no evidence to rebut the presumption that RPX properly named itself the sole RPI,
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`and the evidence overwhelmingly establishes that Salesforce is not an RPI.
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`II. THE LAW ON RPI
`The petition is presumed to correctly name the RPI. Zerto, IPR2014-01295,
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`Paper 31 at 6-73. Only if the patent owner “provides sufficient rebuttal evidence
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`that reasonably brings into question the accuracy of petitioner’s identification” of
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`3 Full citations to all cited Board decisions are provided in the Table of Authorities.
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`RPI must the petitioner present evidence to establish that RPI was properly
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`identified. Id. An RPI is a party that “desires review,” which the Trial Practice
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`Guide (TPG) defines as the petitioner and/or a party “at whose behest the petition
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`has been filed.” 77 Fed. Reg. at 48,759. In determining RPI, the Board most
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`commonly considers (1) “whether the non-party exercised or could have exercised
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`control over a party’s participation in a proceeding” and (2) “whether the non-party
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`funded the proceeding.” Id. at 48759-48760.
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`The Board has never held, and there is no law to support, that a non-party
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`“desires review” simply because it might benefit from invalidation of a challenged
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`patent and has a relationship with the petitioner unrelated to the IPR. While the
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`relationship of an unnamed party to the petitioner is relevant, “[t]he key inquiry is
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`‘the relationship between a party and a proceeding’ rather than ‘the relationship
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`between parties.’” TRW, IPR 2015-00950, Paper No. 8 at 6 (emphasis in original).
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`The Board has consistently held that clients of an entity that challenges patents as
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`part of its business are not RPIs absent involvement in the IPR. RPX v.
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`Macrosolve, IPR 2014-00140 (Paper 9 at 3-4) (“Mere membership in petitioner
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`RPX Corporation … does not demonstrate the requisite control over petitioner by
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`the alleged unnamed” RPI.); Unified, IPR 2015-00874, Paper 11 at 3-4; see also
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`the TPG’s explanation that trade association members are not automatically RPIs
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`in an IPR filed by the association. TPG at 48,760.
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`While the RPI inquiry is “highly fact-dependent,” the TPG is clear that
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`whatever the facts, they are analyzed to determine whether they establish
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`“relationships and considerations sufficient to justify applying conventional
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`principles of estoppel and preclusion.” 77 Fed. Reg. at 48,759. In Taylor (cited in
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`the TPG and by AIT), the Supreme Court (“SCOTUS”) emphasized that there are
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`only “discrete exceptions that apply in ‘limited circumstances’” to the general rule
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`that a non-party is not bound by a judgment, and that an “amorphous balancing test
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`is at odds with the constrained approach to nonparty preclusion our decisions
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`advance.” Taylor v. Sturgell, 553 U.S. 880, 898 (2008).
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`AIT specifically asserts that Salesforce is an unnamed RPI because RPX
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`filed the petitions as a proxy or agent for Salesforce. PR at 5, 8. However, the
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`SCOTUS has held that under the proxy/agent exception “preclusion is appropriate
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`only if the putative agent’s conduct of the suit is subject to the control of the party
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`who is bound by the prior adjudication.” Taylor, 553 U.S. at 905, 906. Thus, the
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`proxy/agent exception AIT relies upon requires a showing of control. AIT quotes
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`Zoll (without attribution) for the proposition that the non-party’s participation may
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`be overt or covert and that evidence may be direct or circumstantial, but omits the
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`critical remainder of the sentence in which the Board emphasized that “the
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`evidence as a whole must show that the non-party possessed effective control from
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`a practical standpoint.” PR at 5; Zoll, IPR2013-00609, paper 15 at 10.
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`AIT suggests that a third party may be an RPI even though it did not fund,
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`control or direct the IPR, did not ask the petitioner to file at its behest and was not
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`even aware of the filing beforehand. All the relevant authority refutes this.
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`Identifying a party as an RPI carries important estoppel implications and as Taylor
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`makes clear, it would be entirely inappropriate to find a non-party an RPI and bind
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`it to the outcome of a matter not filed at its behest (indeed of which the non-party
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`was not even aware) and over which the non-party had no control or opportunity to
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`control. Taylor, 553 U.S. at 905, 906.
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`III. THE FACTS RELEVANT TO RPI
`As stated in §I supra, Salesforce was totally uninvolved in RPX’s filing of
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`the IPRs. Ex. 1019 at ¶20. RPX did not have any contractual obligation to file the
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`IPRs or any “unwritten,” implicit or covert understanding with Salesforce that it
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`would do so. Id. at ¶45.
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` none obligate RPX to file IPRs.4 Ex. 1020-1022.
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`4
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`Ex. 1019 at ¶33.
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` Id.
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`The Board ordered discovery of all communications with Salesforce relating
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`to the challenged patents, the litigation or the IPRs. Paper 11.
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` Ex. 1019 at
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`¶¶20-30.
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`1023; Ex. 1025.
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` Id at ¶¶20-21; Ex.
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` Ex. 1019 at ¶¶22 and 29.
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` Id. at ¶¶14, 16, and 19; Ex. 2018.
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` Ex. 1019 at ¶¶14, 40.
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` Id. at ¶19 (citing examples).
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`Id. at ¶7.
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` Id. at ¶¶8-10.
`— Id- W118-10.—
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` Id. at ¶¶11-13.
` Id- at‘1I‘1I11-13.
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` Id. at ¶¶34-44.
`— Id. at $9134-44.‘
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` Id. at ¶47.
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` Id. at ¶¶43 and 47.
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` Id. at ¶37; Ex. 1024.
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` Ex. 1019 at ¶37.
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` Id. at ¶18.
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` Id. at ¶47.
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`Any assertion that Mr. Chuang’s declaration should be disregarded fails. Mr.
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`Chuang is not in-house counsel for RPX - he is a VP of Client Relations. Id. at ¶1.
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`Mr. Chuang is indisputably a fact witness and his testimony is corroborated by
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`documents RPX produced and directly responsive to the ordered discovery
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`(including a request for oral communications). Id. at ¶¶1, 5, 34.
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`IV. SALESFORCE IS NOT AN RPI
`AIT misstates the law and invites the Board to speculate and draw inferences
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`that are unsupported and directly refuted by the evidence. What the evidence
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`shows is that RPX filed the IPRs to pursue its own interests, the IPRs were not
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`filed at Salesforce’s behest, and Salesforce did not fund the IPRs, nor have any
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`control, opportunity to control or involvement in them. RPX is the sole RPI.
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`A. RPX Pursues Its Own Interests In These IPRs
`AIT asserts that RPX has no interest in these IPRs because it has not been
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`sued on the AIT Patents. PR at 1, 6-7, 13. This fact is “unremarkable” for an IPR
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`(as opposed to a CBM). Unified v. Dragon, Paper 37 at 13; §II, supra. As
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`described in §III supra, the evidence overwhelmingly shows that RPX had its own,
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`independent reasons to file the IPRs. Ex. 1019 at ¶¶6-13, 16, 35-47.
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`AIT’s citations to General Foods and Expert Electric are inapposite. PR at
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`19. General Foods held that “a member of a trade association who finances an
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`action which [the association] brings on behalf of its members impliedly authorizes
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`the trade association to represent him in that action.” General Foods Corp. v.
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`Massachusetts Dept. of Public Health, 648 F.2d 784 (1st Cir. 1981). Salesforce
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`did not finance the IPRs and RPX filed them to pursue its own interests rather than
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`Salesforce’s. §III, supra. Expert Electric, Inc. v. Levine, 554 F.2d 1227, 1233-
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`1235 (2nd Cir. 1977) also involved different facts, including a labor regulatory
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`scheme that recognized an association “as the single representative of all [its]
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`participants” in connection with an overseeing agency, and recognized the
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`association as having “standing to assert the interests of its members.”
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`B. RPX Is Not Salesforce’s Proxy and Did Not File at Its Behest
`AIT asserts repeatedly that RPX filed as a proxy or agent for Salesforce. PR
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`at 1-2, 13-20. Saying it repeatedly does not make it so. A finding that RPX acted
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`as a proxy for Salesforce would only be “appropriate” if RPX’s filing was “subject
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`to the control” of Salesforce. Taylor, 553 U.S. at 905, 906. AIT cites no evidence
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`of this, and AIT’s assertions and speculation are directly refuted by the evidence.
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`Ex. 1019 at ¶¶20 and 45. The IPRs were not filed at Salesforce’s behest (i.e.,
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`command), as Salesforce did not request, let alone command, that RPX file them,
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`and indeed was not even aware that RPX would file. Id.; Ex. 1018.
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`1.
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`Salesforce Did Not Pay For the IPRs
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` PR at 2 and 11-12.
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` Exs. 1020-1022. Mr. Chuang confirms
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`unequivocally, “Salesforce did not fund the AIT IPRs.” Ex. 1019 at ¶¶20 and 45.
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`Salesforce Had No Role in the IPRs
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`2.
`AIT misrepresents that “RPX does not state affirmatively … that Salesforce
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`had no role in the petition.” PR at 9. RPX has stated this repeatedly, including in
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`the Petitions (§II.A), in RPX’s motion opposing discovery (at 1) and in Mr.
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`Chuang’s declaration (Ex. 1019 at ¶20 and 45).
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`3.
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`There Was No Communication About the Petitions
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` PR at 13-19.
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`PR at 17-18.
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`These misrepresentations are extraordinary. Discovery Request No. 3
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`sought actual communications relating to the AIT Patents, the litigation or the IPRs
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`and Request No. 4 sought only documents sufficient to show (not actual
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`communications) the names, dates, locations and times (but not the content) of all
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`communications (include those unrelated to the litigation, the AIT Patents or the
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`IPRs) after the litigation began. Paper 11.
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`Ex. 1019 at ¶32.
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` while withholding Mr. Chuang’s
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`declaration that swears this to not be true is stunning. PR at 17-18.
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`4.
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`Shared Board Member Robertson Was Uninvolved
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`AIT concedes that given the absence of any contrary evidence, the “only
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`inference” is that Mr. Robertson “has dutifully served both [RPX and Salesforce]
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`companies.” PR at 13. Inexplicably, AIT suggests that this somehow evidences
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`RPX’s “plausible deniability” of Salesforce’s involvement in the IPRs. Id. Mr.
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`Chuang, who participated in RPX’s decision to pursue the IPRs, explains that Mr.
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`Robertson was uninvolved in the decision. Ex. 1019 at ¶51-52. An overlapping
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`board member uninvolved in the IPR decision does not demonstrate Salesforce
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`control or involvement in the IPRs. Butamax, IPR 2013-00214, Paper 11 at 4.
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`AIT asserts that “Petitioner’s business model is built upon petitioner acting
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`as an agent or proxy for third parties in cases just like this.” PR at 6-7.
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` The Board has held that even if a “Petitioner
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`engages in no activity of practical significance other than filing IPR petitions with
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`money received from its members, this does not demonstrate that any member
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`paid, directed, or suggested to Petitioner to challenge the [patent], specifically.”
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`Unified v. Dragon, IPR 2014-01252, Paper 37 at 12-13.
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` Ex. 1020 at §2; Ex. 1019 at ¶45 (“RPX has no contractual obligation to
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`Salesforce to file an IPR under any circumstances … and has no “unwritten” or
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`implicit understanding … [to] do so.”)
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` Instead, AIT focuses the Board on out-of-context quotes
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`from three public documents
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` In the cited materials, serving as an extension of a client’s in-house
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`legal team does not refer to attacking patents, but to RPX sharing insight about the
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`patent market. Ex. 2006. The reference to “clear[ing]” liability refers not to
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`attacking patents but to RPX acquiring “a license to the litigated patent.” Ex.
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`2007. The reference to “challenging patents” is a “complementary solution.” Ex.
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`2008 at 4. The reference to RPX acting as an agent relates to special “syndicated
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`acquisitions” where RPX acquires patent rights “on behalf of clients who are
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`paying for such rights separately from their subscription arrangements.” Id. at 26,
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`53. AIT’s speculation is unsupported by the cited materials and directly refuted by
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` sworn testimony that make clear that RPX did not
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`file these petitions on behalf of Salesforce. Ex. 1020; Ex. 1019 at ¶45.
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`D. AIT Mischaracterizes RPX’s History In Filing IPRs
`RPX has filed 21 petitions against 10 different patent owners.
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` when RPX works with another party, the other party is named an
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`RPI. Ex. 1019 at ¶19. Contrary to AIT’s misrepresentations, the Board in
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`ParkerVision did not find that RPX acted as a proxy for a concealed RPI. PR. at 9.
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`Despite the Board’s invitation to revisit RPI if granted discovery proved fruitful,
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`the patent owner did not do so because discovery revealed no other RPI.
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`ParkerVision, IPR 2014-00946, Paper 27 at 1-2.
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`VirnetX, IPR 2014-00171, and the related IPRs (collectively “VirnetX”) was
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`an early case on previously unsettled RPI law and was an outlier. None of RPX’s
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`other filings has been found to involve an unnamed RPI. The facts the Board
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`focused on in VirnetX are not present here. The Board found that Apple paid RPX
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`to file IPRs as part of a “newly created program” and “at least suggested that RPX
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`file challenges to the specific VirnetX Patents.” VirnetX at 4, 7. Salesforce is not
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`part of any such program and never suggested or implied that RPX should file
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`these IPRs. The Board also found that RPX used “Apple’s expert” and law firm to
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`file a petition with “substantially identical” grounds to Apple’s. Id. at 6-7.
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`Salesforce’s CBMs used different counsel, a different expert and different grounds.
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`VirnetX does not apply.
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` PR at 9-10. Filing IPRs serves
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`RPX’s own important business interests and RPX takes its obligation to properly
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`name RPIs very seriously. Ex. 1019 at ¶¶6-13.
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` Id. at ¶45; Ex. 2018.
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` PR at 10. Global-Tech concerns imputing
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`knowledge for induced infringement and is completely irrelevant to the
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`determination of RPI. Global-Tech Appliances v. SEB S.A., 131 S.Ct. 2060, 2068-
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`2072 (2011). RPX’s careful actions to name all involved parties an RPI and avoid
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`outside input from others cannot support finding an uninvolved party an RPI.
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`V. AIT REPEATEDLY AND KNOWINGLY MISREPRESENTS FACTS
`AIT makes numerous false factual assertions refuted by evidence it withheld
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`from the Board (see supra §IV.B.1
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`, §IV.B.2 re RPX not
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`stating Salesforce uninvolved, §IV.B.3
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`Mr. Robertson’s involvement and §IV.C re
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`, §IV.B.4 re
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`). AIT’s
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`PR also falsely asserts that RPX filed 25 IPRs (only 20 had been filed at the time)
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`and that the AIT IPR petitions were already prepared when the Salesforce CBMs
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`were denied. PR at 18 and 40. AIT also falsely stated on a call that Mr. Chuang is
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`in-house counsel for RPX when seeking to keep his declaration from the Board.
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`Given AIT’s demonstrated recklessness with the facts, RPX requests the Board’s
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`vigilance in scrutinizing representations AIT makes in its sur-reply.
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`It is hereby certified that on this 14th day of December 2015, a copy of the
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`foregoing document was served via electronic mail, as previously consented to by
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`Patent Owner upon the following counsel of record:
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`Steven C. Sereboff (Reg. No. 37,035)
`M. Kala Sarvaiya (Reg. No. 58,912)
`Jonathan Pearce (Reg. No. 60,972)
`SoCal IP Law Group LLP
`310 N. Westlake Boulevard, Suite 120
`Westlake Village, CA 91362
`uspto@socalip.com
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`Date: December 14, 2015
`
`/Richard F. Giunta/
`Richard F. Giunta