Redacted, non-confidential version of
`Patent Owner’s Opposition to
`Petitioner’s Motion to Correct Clerical
`Mistake under 37 CFR § 42.104(c)
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Opposition to
`Petitioner’s Motion to Correct Clerical
`Mistake under 37 CFR § 42.104(c)
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUBICON COMMUNICATIONS, LP
`Petitioner,
`
`v.
`
`LEGO A/S
`Patent Owner.
`____________
`
`Case IPR2016-01187
`Patent 8,894,066
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO CORRECT
`CLERICAL MISTAKE UNDER 37 CFR § 42.104(C)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`Introduction
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`Per the Board’s authorization given on November 16, 2016, LEGO A/S (the
`
`“Patent Owner”) respectfully submits its opposition to Petitioner’s Motion to
`
`Correct Clerical Mistake under 37 CFR § 42.104(c) (the “Motion to Correct”).
`
`Through its motion, Rubicon Communications, LP (the “Petitioner”) seeks
`
`permission to file a corrected petition listing Smallworks, LLC as a real party in
`
`interest. The Petitioner has failed to meet its burden as the moving party under 37
`
`C.F.R. §§ 42.20(c) and 42.22(a)(2) and has falsely claimed the absence of
`
`prejudice to the Patent Owner. Accordingly, the Patent Owner respectfully
`
`requests the Board deny the Petitioner’s Motion to Correct.
`
`
`
`II. Background
`
`Before responding to the Petitioner’s Statement of Material Facts, the Patent
`
`Owner submits a more comprehensive set of facts here. On May 29, 2015, the
`
`Patent Owner filed a complaint against Rubicon Communications, LP dba
`
`Smallworks in District of Connecticut, alleging infringement of the U.S. Patents
`
`Nos. 7,731,191; 8,091,892; 8,628,085; and 8,894,066 (the “Connecticut
`
`litigation”). (Ex. 1024.) Summons to the Petitioner was issued on June 1, 2015
`
`and served on June 10, 2015. On July 31, 2015, “Defendant Rubicon
`
`
`
`
`
`-2-
`
`
`
`
`
`Communications, LLC (‘Rubicon’) and SmallWorks, LLC (‘SmallWorks’)”
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`answered, stating:
`
`Rubicon Communications, LP dba SmallWorks does not
`exist. There are now two separate companies: Rubicon
`Communications, LLC and SmallWorks, LLC. Rubicon
`no longer engages in any of the alleged infringing
`activities. Rubicon also no longer does business as
`SmallWorks. Current manufacturing, offering for sale,
`and sales of the accused products are done solely by
`SmallWorks, which should be the only defendant entity
`in this lawsuit.
`
`(Ex. 2011 at Paragraph 2.) The Petitioner’s Corporate Disclosure Statement filed
`
`concurrently also states: “Rubicon Communications, LP dba SmallWorks is no
`
`longer a corporate entity. There are now two corporate entities: Rubicon
`
`Communications, LLC and SmallWorks, LLC.” (Ex. 2012.) On September 11,
`
`2015, Rubicon Communications, LLC and SmallWorks LLC filed their First
`
`Amended Answer, repeating the block quote above verbatim. (Ex. 2003 at
`
`Paragraph 2.)
`
`On October 14, 2015, the Patent Owner moved to add Smallworks, LLC as a
`
`defendant and extend the deadline to join parties and amend pleadings after further
`
`discovery. (Ex. 2004.) The court granted the motion and also ordered, “on or
`
`before 12/3/2015, Defendant must produce discovery regarding the corporate
`
`transaction(s) referenced in paragraph 2 of its answer . . . .” (Ex. 2005.) Despite
`
`the court’s Order, the parties have been engaged in prolonged discovery disputes
`
`
`
`
`
`-3-
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`over the Petitioner’s corporate transactions, and the Patent Owner continues to
`
`search for more information through depositions beginning on December 5, 2016
`
`and further written discovery. (Ex. 2017 (“Alquist Decl.”) at Paragraph 3.) On
`
`November 5, 2015, Rubicon Communications, LP and SmallWorks, LLC
`
`answered the amended complaint, stating: “Rubicon no longer exists. Current
`
`manufacturing, offering for sale, and sales of the accused products are done solely
`
`by SmallWorks, which should be the only defendant entity in this lawsuit.” (Ex.
`
`2013 at Paragraph 2.)
`
`Notwithstanding representations made to the United States District Court for
`
`the District of Connecticut, the allegedly-non-existent Rubicon Communications,
`
`LP filed on June 10, 2016 its Petition for Inter Partes Review of United States
`
`Patent No. 8,894,066 Pursuant to 35 U.S.C. §§ 311–319, 37 C.F.R. § 42 (the
`
`“Petition”), while omitting (at least) two corporate entities, Rubicon
`
`Communications, LLC and Smallworks, LLC. On June 27, 2016, the Petitioner
`
`sent a letter to the Patent Owner’s counsel noting the omission of Smallworks,
`
`LLC and seeking consent to its motion to correct. (Ex. 2010.) Based on the
`
`inconsistent statements made by the Petitioner and the Defendants in the
`
`Connecticut litigation, the Patent Owner objected. The Petitioner subsequently
`
`filed on July 8, 2016 its Power of Attorney (Paper 7) and Motion for Pro Hac Vice
`
`Admission of Ryan T. Beard (Paper 9), listing only Rubicon Communications, LP
`
`
`
`
`
`-4-
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`and making no mention of Rubicon Communications, LLC or Smallworks, LLC.
`
`Nearly a month after notifying the Patent Owner’s counsel about the omission, the
`
`Petitioner sent an e-mail to the Board on July 20, 2016 requesting permission to
`
`file the motion to correct. (Ex. 2002).
`
`On December 5, 2016, James W. Thompson testified both in his capacity as
`
`co-owner of Rubicon Communications, LP and Smallworks, LLC, and as those
`
`entities’ Fed. R. Civ. P. 30(b)(6) representative on, among others, the topic of
`
`Petitioner’s corporate structure.1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`-5-
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`
`
`
`
`
`
`
`
`III. Responses to the Petitioner’s Statement of Material Facts
`
`1. Paragraph 1 is admitted.
`
`2. Paragraph 2 is admitted.
`
`3. Paragraph 3 is admitted.
`
`4. Paragraph 4 is admitted.
`
`5. Paragraph 5 cannot be admitted or denied by the Patent Owner.
`
`6. Paragraph 6 cannot be admitted or denied by the Patent Owner.
`
`7. Paragraph 7 is admitted in that the caption of the case is recited
`
`correctly.
`
`8. Paragraph 8 cannot be admitted or denied by the Patent Owner, in part
`
`because it calls for legal conclusions, is vague, and refers to
`
`Petitioner’s alleged state of mind, about which Patent Owner lacks
`
`knowledge. Patent Owner admits that it noticed that Petitioner
`
`evidently changed its corporate structure after the filing of the
`
`complaint.
`
`9. Paragraph 9 is admitted.
`
`
`
`
`
`-6-
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`10. Paragraph 10 cannot be admitted or denied, because the Patent Owner
`
`lacks knowledge about what the Petitioner’s counsel became aware of.
`
`It is admitted that the Patent Owner received the letter on June 27,
`
`2016 and responded that it would oppose the motion.
`
`11. Paragraph 11 is admitted.
`
`
`
`IV. Discussion
`
`In its November 16 e-mail granting the Petitioner permission to file the
`
`Motion to Correct, the Board requested that the parties address “whether correction
`
`is appropriate based on 37 C.F.R. §§ 42.5 and/or 42.104” and “the impact of the
`
`Board’s precedential decision in Lumentum Holdings, Inc. v. Capella Photonics,
`
`Inc., Case IPR2015-00739 (PTAB March 4, 2016) (Paper 38).” 37 C.F.R. §
`
`42.104(c) allows for a motion “that seeks to correct a clerical or typographical
`
`mistake in the petition [without changing the filing date.]”2 37 C.F.R. § 42.5(a)
`
`governs conducts of the proceeding and directs that the Board “may determine a
`
`proper course of conduct in a proceeding for any situation not specifically covered
`
`
`2 Subsections (a) and (b) concern contents of the petition unrelated to real parties in
`
`interest.
`
`
`
`
`
`-7-
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`by this part [42] and may enter non-final orders to administer the proceeding.”3 In
`
`its precedential decision Lumentum Holdings, Inc., the Board held that it did not
`
`lack jurisdiction over an inter partes review proceeding, when the petitioner had
`
`failed to timely update its mandatory notice listing all real parties in interest, within
`
`21 days of the corporate change as required by 37 C.F.R. § 42.5(c)(3).
`
`The Board has broad discretion over conducts in inter partes review
`
`proceedings and may permit many types of lapses to be rectified. Furthermore,
`
`failure to list real parties in interest is not a jurisdictional defect that requires a
`
`dismissal at all stage of proceedings. Here, however, the Petitioner’s Motion to
`
`Correct does not warrant the Board’s consideration. First, the Motion to Correct
`
`itself confirms that the Petitioner did not make a clerical mistake. Second, the
`
`Motion to Correct falsely claims that the Patent Owner is not prejudiced. For these
`
`reasons, discussed in greater detailed below, the Patent Owner respectfully
`
`requests that the Board deny the Motion to Correct.
`
`
`3 Subsection (b) concerns suspension of “a requirement of parts 1, 41, and 42.”
`
`Subsection (c) governs timing of actions. Subsection (d) prohibits ex parte
`
`communications. Listing all real parties in interest is a statutory requirement under
`
`35 U.S.C. § 312, not of parts 1, 41, or 42 of the title 37 of Code of Federal
`
`Regulations, and the filing date of a petition is governed by 35 U.S.C. § 315(b).
`
`
`
`
`
`-8-
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`1. The Motion to Correct fails to establish the omission of Smallworks,
`
`LLC was a clerical error.
`
`The Motion to Correct confirms that the Petitioner made a substantive,
`
`instead of clerical, mistake in omitting Smallworks, LLC, as well as other real
`
`parties in interest, in the Petition. While not jurisdictional, listing all real parties in
`
`interest in a petition has been described as a significant issue due to its implications
`
`in, among others, 35 U.S.C. § 315(e)’s estoppel effect. Zoll Lifecor Corp. v.
`
`Philips Elecs. N. Am. Corp., Case IPR2013-00606, at *7–8 (PTAB Mar. 20, 2014)
`
`(Paper 13). Failure to list all real parties in interest renders a petition incomplete
`
`under 37 C.F.R. § 42.106 and has led to denials of institution. See e.g., Zerto, Inc.
`
`v. EMC Corp., Case IPR2014-01254, at *15 (PTAB Mar. 3, 2015) (Paper 35).
`
`The Petitioner explains “Smallworks, LLC” was omitted from the Petition
`
`because, Mr. Chris Thompson “had minimal involvement with the Lawsuit . . .
`
`limited to working on invalidity contentions” and “mistakenly overlook[ed] the
`
`fact that Smallworks LLC was a named defendant” in at least a dozen other
`
`pleadings submitted since October 22, 2015, including the invalidity contentions
`
`themselves, and relied on the original complaint, which does not list Smallworks,
`
`LLC, in preparing Section I.A of the Petition. The Motion to Correct at 9. The
`
`Petitioner’s statements demonstrate a fundamental lack of understanding of a
`
`
`
`
`
`-9-
`
`
`
`
`
`party’s duty in listing all real parties in interest and/or understanding of its own
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`client’s corporate structure.
`
`The Petitioner appears to believe that the Petitioner’s duty under 35 U.S.C. §
`
`312(a)(2) is simply to list the named parties of the related litigation. However, the
`
`Patent and Trademark Office and the Board have expressly stated that listing all
`
`real parties in interest is a broader and more substantive requirement. In Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012), the
`
`Patent and Trademark Office published that the “real party in interest” issue is
`
`governed by “the common law principles” of nonparty preclusion discussed in
`
`Taylor v. Sturgell, 553 U.S. 880 (2008). The Office then provided a non-
`
`exhaustive list of factors that may indicate a nonparty is a “real party in interest,”
`
`including but not limited to: control over a party’s participation in a proceeding;
`
`funding an inter partes review petition or proceeding; relationships with a party
`
`and to the petition, including the nature and/or degree of involvement in the filing;
`
`and the nature of the entity filing the petition. Id. at 48,759–48,760.
`
`The Petitioner does not even attempt to explain how an allegedly non-
`
`existent entity, Rubicon Communications, LP, is the named Petitioner here. (See
`
`Ex. 2003 at Paragraph 2.) Moreover, its attempt to “correct” an alleged “clerical”
`
`error only demonstrates that the Petitioner here made no effort to comply with
`
`§ 312(a)(2) to ascertain and identify all real parties in interest. There was no
`
`
`
`
`
`-10-
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`clerical or typographical mistake; the Petitioner lacked substantive understanding
`
`of the rules, substantive understanding of the facts, or both. Even still, the real
`
`parties in interest are still being obscured, with Petitioner making no mention of
`
`Rubicon Communications LLC or its co-owners, James and Jamie Thompson.
`
`These substantive mistakes by the Petitioner should be sufficient for the Board to
`
`deny the institution of an inter partes review proceeding here.
`
`While the Board has granted a petitioner permission to fix its clerical
`
`mistake of omitting real parties in interest in Coleman Cable, LLC v. Simon
`
`Nicholas Richmond, Case IPR2014-00935, (PTAB Aug. 28, 2014) (Paper 12), the
`
`facts therein are highly distinguishable from here, as discussed in the Preliminary
`
`Response at 12–13.4 In Lumentum Holdings, Inc., the Board specifically noted that
`
`
`4 In Coleman, the Board allowed the petitioners to add new real parties in interest
`
`without changing the filing date, because (1) counsel for the petitioners had
`
`obtained powers of attorney from the omitted parties prior to the filing of the
`
`petition, (2) the omitted parties were identified as petitioners in related co-pending
`
`IPR proceedings, and (3) the patent owner there did not oppose the motion to
`
`correct. Case IPR2014-00935, at *5 (Paper 12). As discussed in the Patent
`
`Owner’s Preliminary Response, the facts are drastically different here. For
`
`example, “[f]iling a document missing a real party-in-interest after learning of the
`
`omission in the Petition is highly distinguishable from the facts in Coleman, in
`
`
`
`
`
`-11-
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`the “the [p]etition, when filed, identified all real parties in interest, and
`
`therefore . . . was complete,” because the corporate transformation there took place
`
`months after the filing of the petition. Case IPR2015-00739 at *6 (Paper 38).
`
`
`
` thereby rendering it incomplete as
`
`of June 10, 2016. The Patent Owner respectfully submits that the Petitioner has
`
`failed to meet is burden as the moving party under § 42.104(c) to establish that it
`
`made a clerical or typographical mistake.
`
`
`
`2. The Motion to Correct falsely alleges the Patent Owner is not prejudiced.
`
`The Petitioner’s claim that the Patent Owner is not prejudiced is
`
`demonstrably false. The Petitioner is at least correct that the “purpose of the rules
`
`is to prevent a party who is a real party in interest from hiding itself from the patent
`
`owner and the Board, yet to be involved in the inter partes [review].” The Motion
`
`to Correct at 10. Yet, the Petitioner continues to hide at least one real party in
`
`interest, Rubicon Communications, LLC. According to the Petitioner itself,
`
`“Rubicon Communications, LP dba SmallWorks does not exist. There are now
`
`two separate companies: Rubicon Communications, LLC and SmallWorks, LLC.
`
`
`which a document predating the Petition correctly identified missing real parties-
`
`in-interest.” Preliminary Response at 12–13.
`
`
`
`
`
`-12-
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`Rubicon [Communications, LLC] no longer engages in any of the alleged
`
`infringing activities.” (Ex. 2003 at Paragraph 2 (emphasis added).)
`
`
`
`
`
`
`
`
`
`
`
`
`
`Indeed, the Answer (Ex. 2011), Corporate Disclosure Statement (Ex. 2012),
`
`First Amended Answer (Ex. 2003), Answer to Amended Complaint (Ex. 2013),
`
`and other documents submitted in the Connecticut litigation are submitted by
`
`“Defendants Rubicon Communications LLC and Smallworks LLC.” In effect,
`
`Rubicon took it upon itself to “substitute” corporate entity names in the
`
`Connecticut litigation. More troubling, the Petitioner does so inconsistently, for
`
`example answering discovery responses and interrogatories as “Rubicon
`
`Communications, LP” (Ex. 2014 at 1), and at other times, for example, submitting
`
`the Markman briefs only on behalf of Smallworks, LLC. (Ex. 2015 at 1.) It is
`
`precisely this moving target that § 312(a)(2) is designed to avoid. The Petitioner
`
`owes a duty of candor and good faith to the tribunal and the Board under 37
`
`C.F.R. § 42.11, and it has failed both.
`
`
`
`
`
`-13-
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`Consequently, the addition of Smallworks, LLC, while omitting the owners
`
`of the Petitioner, Jim and Jamie Thompson, Rubicon Communications, LLC, and
`
`potentially other corporate entities with common ownership, such as
`
`
`
`
`
`,) all without adjusting the filing date of the petition, will prejudice
`
`the Patent Owner with regard to this proceeding and the related litigation. This is
`
`why, unlike in Lumentum Holdings, Inc., the Patent Owner here has continued to
`
`raise the real party in interest issue from the beginning of this proceeding in its
`
`communications with the Petitioner and in its Preliminary Response. The
`
`Petitioner’s casual approach to complying with the real party in interest
`
`requirement and the significance of this issue has been an incessant source of
`
`current and future harm. Consequently, the Patent Owner respectfully requests the
`
`Board not exercise its discretion under § 42.5(a) and Lumentum Holdings, Inc. to
`
`allow the Petitioner to correct its non-clerical mistake.
`
`
`
`V. Conclusion
`
`For the foregoing reasons, the Patent Owner respectfully requests the Motion
`
`-14-
`
`
`
`to Correct be denied.
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`
`
`
`
` Respectfully submitted,
`
`
`
`
`/ Elizabeth A. Alquist/
`
`
`
`
`Andrew M. Riddles
`Registration No. 31,657
`ariddles@daypitney.com
`Elizabeth A. Alquist
`Admitted Pro Hac Vice
`eaalquist@daypitney.com
`Howard Grossman
`Registration No. 48,673
`hgrossman@daypitney.com
`Day Pitney LLP
`7 Times Square
`New York, NY 10036
`Tel: (212) 297-5855
`Fax: (203) 202-3896
`Counsel for Patent Owner
`
`
`
`-15-
`
`
`
`
`
`Dated: December 5, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 8,894,066
`Patent Owner’s Opposition to the Motion to Correct
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on December
`
`5, 2016, a true and correct copy of PATENT OWNER’S OPPOSITION TO
`
`PETITIONER’S MOTION TO CORRECT CLERICAL MISTAKE UNDER 37
`
`CFR § 42.104(C), via UPS Overnight, was served on the following counsel of
`
`record:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Eric B. Meyertons (Reg. No. 34,876)
`Chris D. Thompson (Reg. No. 43,188)
`Brian Mangum (Reg. No. 64,224)
`Ryan Beard (Admitted Pro Hac Vice)
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/ Elizabeth A. Alquist /
`
`
`
`
`Elizabeth A. Alquist
`Admitted Pro Hac Vice
`eaalquist@daypitney.com
`Day Pitney LLP
`242 Trumbull St.
`Hartford, CT 06103
`Counsel for Patent Owner
`
`
`
`
`
`
`
`-16-
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
