`
`Case IPR2016-01656
`Patent 8,122,141
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`I.M.L. SLU
`Petitioner
`
`v.
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`WAG ACQUISITION, LLC
`Patent Owner.
`
`
`_______________________________________
`
`Inter Partes Review Case No. IPR2016-01656
`U.S. Patent No. 8,122,141
`_______________________________________
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`
`
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`PATENT OWNER’S RESPONSE TO PETITIONER’S LETTER MOTION
`FOR ADDITIONAL DISCOVERY
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`Case IPR2016-01656
`Patent 8,122,141
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`Facing RPI issues of its own, IML belatedly seeks to distract the Board with
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`a groundless RPI challenge against its own accuser.
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`WAG takes RPI designations seriously. IML’s RPI challenge is based on a
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`one-page letter from litigation adversaries in district court, and an article and press
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`release regarding a funding arrangement between the undersigned’s law firm and a
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`litigation funder. This alone is not sufficient to raise an RPI concern, or merit
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`additional discovery.
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`To support its contentions, IML cites to two decisions in its “letter,” Bio-Rad
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`Labs., Inc. v. Cal. Inst. Of Tech., IPR2015-00009 (Paper 9) (PTAB March 6, 2015)
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`and Motorola Mobility LLC v. Patent of Michael Arnouse, IPR2013-00010 (Paper
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`27) (PTAB April 5, 2013).1 As IML itself acknowledges, this authority pertains
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`only to “the question of the real party in interest when a patent has been assigned
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`or licensed.” (IML’s “letter” at 2 (emphasis added).)
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`Here, there is no allegation that WAG has assigned or licensed the
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`challenged patents to anybody. The full chain of title of the challenged patents is a
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`1 Despite repeated requests from WAG after IML generally raised the issue, IML
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`provided no authority to WAG on the question of Real Parties in Interest for Patent
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`Owners. This authority, which WAG provided to IML, is the only Board authority
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`of which WAG is aware regarding Real Parties in Interest for Patent Owners.
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`1
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`matter of public record with the USPTO and shows ownership vested solely in
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`Case IPR2016-01656
`Patent 8,122,141
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`WAG. IML points to no assignments or exclusive licenses of the challenged
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`patents.
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`IML instead cites to a letter from opposing counsel in separate WAG
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`litigations that purports to reserve those defendants’ right to challenge WAG’s
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`standing in the district court. The defendants in question (many of which have
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`joined in the present IPR2016-01658) have since made their (sealed) motion on
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`this issue in district court. WAG believes the district court motion to be unfounded
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`and is opposing it. Although some of these same defendants were petitioners in
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`their own recent IPRs concerning the patents now in dispute (IPR2016-01238 and
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`IPR2016-01239), none of them raised any issue concerning WAGs disclosure of
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`RPIs.2
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`2 To appreciate just how belated the present application is, the Board should note
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`that, as reflected in the public dockets of the related litigation, the defendants in
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`that litigation were aware of the involvement of a funder since at least the time
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`they moved for Hague discovery on the topic in December of 2016, which long
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`preceded the September 2017 oral argument in their two recent IPRs (IPR2016-
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`01238 and IPR2016-01239).
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`2
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`Case IPR2016-01656
`Patent 8,122,141
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`Board decisions regarding RPI disclosure for Patent Owners address that
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`issue in the context of standing. See Bio-Rad, IPR2015-00009 (Paper 9 at 3).
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`A patent plaintiff lacks “constitutional standing” when it would suffer no
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`legally cognizable injury due to infringement. WAG easily meets the requirements
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`for constitutional standing. It is the record owner of the U.S. patents at issue and as
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`such holds legal title. IML has not even questioned whether WAG retains the
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`exclusive rights to practice under the patents, to license third parties to practice
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`under the patents, or to sue third parties for infringement thereof. WAG alone, with
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`these exclusive rights, is constitutionally injured by infringers. See Prop. Dev., Inc.
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`v. TCI Cablevision of California, Inc., 248 F. 3d 1333, 1346-47 (Fed. Cir. 2001).
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`With no other party that can lawfully exercise or grant such rights, WAG is clearly
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`injured by an infringer that practices in the U.S. without permission.
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`In district court litigation, there is also a concept of “prudential standing,”
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`which comes into play, even where constitutional standing exists, when a third
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`party possess a sufficient ownership interest such that it must be joined as an
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`additional plaintiff to avoid injustice. The policies behind the prudential standing
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`requirement are (i) to avoid creating “a substantial risk of multiple suits and
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`multiple liabilities against an alleged infringer for a single act of infringement”
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`(Int’l Gamco, Inc. v. Multimedia Games, Inc., 504 F.3d 1273, 1278 (Fed. Cir.
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`2007)), and (ii) to avoid harm to an unrepresented third party that has substantial
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`3
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`rights in the patents, by reason or a ruling that might invalidate or render the
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`Case IPR2016-01656
`Patent 8,122,141
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`patents unenforceable (Luminara Worldwide, LLC v. Liown Electronics Co. Ltd.,
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`814 F.3d 1343, 1350 (Fed. Cir. 2016)). A successful challenge based on prudential
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`standing requires a third party that possesses ownership rights that rise to the level
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`of posing such threats.
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`Here, there is no such party or plausible allegation thereof. IML avers,
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`without more, that WAG has a litigation funder. This much is a publicly known
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`fact. Nevertheless, there is nothing inherent in such funding that would implicate
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`standing issues. It has long been held that merely financing the patent owner does
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`not make the funder a co-owner of a patent. Luminara Worldwide, 814 F.3d at
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`1351. There is no suggestion that the funder here holds or can exercise, by grant or
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`otherwise, any exclusionary right in the subject patents. There is thus no basis even
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`to postulate here that the funder could take any action that would give rise to
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`“multiple suits” or “multiple liabilities” against an alleged infringer.
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`Nor is the risk of invalidation posed by an IPR proceeding a reason to
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`require the Patent Owner to name its litigation funder as an RPI merely because of
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`its financial interest in any licensing or litigation enforcement proceeds. The
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`funder’s interest is 100% derivative from the Patent Owner’s; the funder has no
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`separate interest apart from the expectation of gain from participating in the Patent
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`Owner’s licensing or enforcement income. Because its rights derive from the
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`4
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`Patent Owner’s, the funder had the opportunity to protect itself in proceedings like
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`Case IPR2016-01656
`Patent 8,122,141
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`this one through contract with the Patent Owner. The situation is markedly
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`different than, for example, a restricted field of use license, where the licensor
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`retains enforcement rights in other fields of use, which would be threatened if the
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`patent was invalidated in the licensee’s separate action. See Int’l Gamco, 504 F.3d
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`at 1278-79. There is no such risk posed here.
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`IML cites to no Board authority granting discovery under circumstances
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`such as those found here, based on attorney argument in another forum. Beyond
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`that, IML presents only a press release and article regarding a funding arrangement
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`with the undersigned’s firm, which even taken at face value fall short of supporting
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`a case for making the funder a RPI.3
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`Of course, should the Board deem IML’s current evidence sufficient for
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`further discovery, WAG will comply, but the Board should not permit the hastily
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`asserted and unsupported insinuations that WAG somehow has its own hidden
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`“real parties” to distract from Petitioner’s real and serious RPI and privity issues
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`that have been before the Board for over a year.
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`3 It is also baffling that IML is asking for discovery from the Board after
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`stonewalling on discovery in these cases for over a year, which discovery WAG
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`looks forward to addressing at Oral Argument.
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`5
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`Case IPR2016-01656
`Patent 8,122,141
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` Dated: November 28, 2017
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`Respectfully submitted,
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`
`
`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-822-0163
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`
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that on
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`November 28, 2017, a complete and entire copy of this Patent Owner’s Response
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`to Petitioner’s Letter Motion for Additional Discovery was provided to the
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`Petitioner by filing through the PTAB E2E System and via email to
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`bjacob@kelleydrye.com and syovits@kelleydrye.com, as authorized in Petitioner’s
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`Amended Mandatory Notices.
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`
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`Dated: November 28, 2017
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`
`
`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-822-0163
`
`
`
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