UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`PLECTRUM LLC.
`Patent Owner
`
`
`Case: IPR2017-01430
`Patent 5,978,951
`
`
`PATENT OWNER’S RESPONSE
`
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`PLECTRUM LLC.
`Patent Owner
`
`
`Case: IPR2017-01430
`Patent 5,978,951
`
`
`PATENT OWNER’S RESPONSE
`
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ................................................................................................. 1
`
`Relevant Legal Standards .......................................................................... 3
`
`III.
`
`The Petitioner Fails To Meet Its Burden Because It Provides, At Most,
`
`“Conclusory Statements” Regarding Multiple Claim Elements ............ 5
`
`A. Ground IV: The Petition Fails To Adequately Explain How Claims 8 And
`
`11 Are Rendered Obvious By Cheriton In View Of Jain .............................. 5
`
`1. The Petition Fails To Adequately Explain A Rationale For
`
`Combining Cheriton And Jain ............................................................. 5
`
`2.
`
`Input Packetizer/Output Packetizer Of Claim 8 .................................. 7
`
`IV.
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`Additional Grounds Regarding Institution .............................................. 8
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`A. The Petition Fails To Name All Real Parties-In-Interest, Contrary To 35
`
`U.S.C. § 312(a)(2) And 37 C.F.R. § 42.8(b)(1) ............................................ 8
`
`B. An Inter Partes Review Should Not Have Been Instituted Because Such
`
`Proceedings Are Unconstitutional ..............................................................15
`
`V.
`
`
`
`
`
`Conclusion .................................................................................................. 15
`
`
`
`ii
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`
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`TABLE OF AUTHORITIES
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`Cases
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`Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-
`
`00440 .....................................................................................................................11
`
`DirecTV, LLC v. Qurio Holdings, Inc., IPR2015-02006 .......................................5, 8
`
`General Foods Corp. v. Massachusetts Department of Public Health, 648 F.2d
`
`784, 788 (1st Cir. 1981) ........................................................................................15
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) ................ 3
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) ..... 5, 6, 8
`
`Jiawei Tech. Ltd. v. Simon Nicholas Richmond, IPR2014-00935 ...........................10
`
`Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, S. Ct. No. 16-
`
`712 (certiorari granted June 12, 2017). .................................................................18
`
`RPX and General Foods cases .................................................................................16
`
`RPX Corp. IPR2014-00171 .....................................................................................17
`
`RPX Corp. v. VirnetX, Inc., IPR2014-00171 ...........................................................14
`
`Samsung Electronics Co. v. Image Processing Technologies LLC, IPR2017-01189,
`
`Paper No. 9 at 18-19 (2017)........................................................................... 3, 4, 5
`
`Unified Patents Inc. v. Societa Italiana Per Lo Sviluppo Dell’Elettronica S.P.A.,
`
`IPR2017-00565 .............................................................................................. 4, 8, 9
`
`
`
`
`
`iii
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`
`
`Statutes
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`35 U.S.C. § 312(a)(3) ................................................................................................. 3
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`35 U.S.C. § 314(a) ..................................................................................................... 3
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`35 U.S.C. § 315(e)(2) ...............................................................................................17
`
`
`
`Rules
`
`37 C.F.R. § 42.104 ..................................................................................................... 4
`
`37 C.F.R. § 42.120(a) ................................................................................................. 1
`
`37 C.F.R. § 42.8(b)(1) ..............................................................................................10
`
`
`
`
`
`Other Authorities
`
`
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48759 .........................................10
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`
`
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`
`
`
`
`iv
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`
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`EXHIBIT LIST
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`
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`Exhibit 2002
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`Unified Patents Press Release Dated 9/23/2013
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`Exhibit 2003
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`Unified Patents, Frequently Asked Questions
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`Exhibit 2004
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`Unified Patents Press Release Dated 9/17/2013
`
`Exhibit 2005
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`New Venture Enters Patent Fray, Wall Street Journal
`
`
`
`
`
`
`
`
`
`v
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`
`
`I.
`
`Introduction
`
`Pursuant to 37 C.F.R. § 42.120(a), patent owner, Plectrum LLC (“Patent
`
`Owner”), submits this Response to the Petition for Inter Partes Review of U.S.
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`Patent No. 5,978,951 (“the ‘951 patent”) filed by Unified Patents Inc.
`
`(“Petitioner”). The Petition (IPR2017-01430) challenges claims 1-6, 8, 11-14, and
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`21-24 of the ‘951 patent, which include independent claims 1, 2, 8, and 21. And
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`Inter Partes Review was partially granted on Ground IV (with respect to claims 8
`
`and 11), which the Petition argues are obvious over Cheriton and Jain. Ground IV
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`fails with respect to both challenged claims.
`
`The Petition fails to provide the “full statement of the reasons for the relief
`
`requested, including a detailed explanation of the significance of the evidence...”
`
`required by 37 C.F.R. § 42.22(a)(2). The petition’s “explanation” for several claim
`
`elements consists of a couple of conclusory statements without any further
`
`explanation or supporting evidence.
`
`And although the petition is based solely on obviousness grounds, Petitioner
`
`fails to explain, in more than a conclusory manner, why certain limitations would
`
`have been obvious to a person of ordinary skill in the art or why (and how) a
`
`person of ordinary skill in the art would have combined the cited references. For
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`example, the petition’s entire explanation of obviousness regarding a CRC hashing
`
`function consists of Petitioner stating a few legal standards without explaining why
`
`
`
`1
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`
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`those standards apply to these particular references:
`
`Jain describes the use of a CRC hashing function as an
`alternative to the use of XOR-based hashing for hashing a
`network address. (Seshan ¶176 (EX1007)). Cheriton
`itself notes that the XOR function “is used for illustration
`only” and that “it will be apparent to anyone skilled in the
`art that other hash functions from the one shown can be
`used.” (Cheriton, 9:48-51 (EX1002)).
`
`Accordingly, it would have been obvious to use the CRC
`hashing of Jain in place of the XOR-based hashing of
`Cheriton. Such a combination would be nothing more
`than the routine substitution of one known element for
`another known element, with both elements performing
`their known and well-understood function. (Seshan ¶177
`(EX1007)). This is particularly true in light of Cheriton’s
`explicit note that alternative hash functions might be
`employed, and Jain’s explicit teaching that a CRC-based
`hashing function is an alternative to an XOR-based
`hashing function. (Seshan ¶177 (EX1007)).
`
`(Petition at 58) (emphasis added). Both the PTAB and the Federal Circuit routinely
`
`reject such conclusory statements made to support a case of obviousness.
`
`Finally, the Declaration of Dr. Srinivasan Seshan (“Seshan Declaration”),
`
`cited throughout the petition, contains nothing more than verbatim copies of each
`
`paragraph of the petition. For that reason alone, the Seshan Declaration is entirely
`
`unhelpful. In sum, the petition does not come close to meeting its burden to show a
`
`reasonable likelihood of prevailing with respect to even a single claim. Thus,
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`Patent Owner respectfully requests that the Board reject the Petition’s arguments in
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`Ground IV of the Petition on the merits, and find that claims 8 and 11 are not
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`
`
`2
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`
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`obvious over Cheriton and Jain.
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`II. Relevant Legal Standards
`
`“[T]he petitioner has the burden from the onset to show with particularity
`
`why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc.,
`
`815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); Samsung
`
`Electronics Co. v. Image Processing Technologies LLC, IPR2017-01189, Paper
`
`No. 9 at 18-19 (2017) (“It is Petitioner’s burden to explain how the asserted prior
`
`art[] renders the claims unpatentable.”). For the petitioner to meet its burden of
`
`proof, the petition must contain sufficient evidence and argument, including “[a]
`
`full statement of the reasons for the relief requested, including a detailed
`
`explanation of the significance of the evidence including material facts, the
`
`governing law, rules, and precedent.” See 37 C.F.R. § 42.22(a)(2). See also 37
`
`C.F.R. § 42.104 (requiring IPR petitions to meet the requirements of §§ 42.6, 42.8,
`
`42.22 and 42.23).
`
`While a petition may rely on declaration evidence to provide the required
`
`specific reasoning, a declaration that simply repeats the language of a deficient
`
`petition does not cure that petition. See, e.g., Unified Patents Inc. v. Societa
`
`Italiana Per Lo Sviluppo Dell’Elettronica S.P.A., IPR2017-00565, Paper No. 13 at
`
`13 (2017) (rejecting declaration evidence where declaration “merely repeats,
`
`verbatim, the language of the Petition.”) (citing 37 C.F.R. § 42.65(a) (“Expert
`
`
`
`3
`
`
`
`testimony that does not disclose the underlying facts or data on which the opinion
`
`is based is entitled to little or no weight”)); see also Samsung Electronics Co. v.
`
`Image Processing Technologies LLC, IPR2017-01189, Paper No. 9 at 18-19 (2017)
`
`(“Dr. Hart’s testimony is also unavailing, adding nothing beyond the statements
`
`already in the Petition.”); DirecTV, LLC v. Qurio Holdings, Inc., IPR2015-02006,
`
`Paper No. 6 at 10-11 (2016). Likewise, in a petition asserting obviousness grounds,
`
`“a petitioner cannot employ mere conclusory statements” to satisfy its burden of
`
`proving obviousness. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380
`
`(Fed. Cir. 2016). Rather, the petitioner must “articulate specific reasoning, based
`
`on evidence of record, to support the legal conclusion of obviousness.” Id; see also
`
`Samsung Electronics Co. v. Image Processing Technologies LLC, IPR2017-01189,
`
`Paper No. 9 at 18-19 (2017) (“Petitioner’s conclusory statement, without further
`
`explanation as to how the cited disclosures in [prior art reference] Pirim support
`
`that conclusion, is insufficient to meet its burden.”).
`
`Where the petition fails to meet this burden, the Board is not “free to adopt
`
`arguments on behalf of petitioners that could have been, but were not, raised by the
`
`petitioner.” See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`
`2016) (noting that while “[i]t is true that the entire IPR process is one designed as
`
`an ‘efficient system for challenging patents that should not have issued,’” “it is still
`
`a system that is predicated on a petition followed by a trial in which the petitioner
`
`
`
`4
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`
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`bears the burden of proof.”).
`
`III. The Petitioner Fails To Meet Its Burden Because It Provides, At Most,
`
`“Conclusory Statements” Regarding Multiple Claim Elements
`
`The petition proposes one non-denied ground of unpatentability, based on
`
`obviousness: Ground IV (Claims 8 and 11 allegedly rendered obvious by Cheriton
`
`in view of Jain). (Petition at 62-69). As explained further below, the petition fails
`
`to meet its burden of showing, with particularity, the unpatentability of claims 8
`
`and 11 in Ground IV.
`
`A. Ground IV: The Petition Fails To Adequately Explain How
`
`Claims 8 And 11 Are Rendered Obvious By Cheriton In View
`
`Of Jain
`
`
`
`As explained further below, claims 8 and 11 should not be found
`
`unpatentable under Ground IV because the petition does not sufficiently explain a
`
`rationale for combining Cheriton and Jain and because the combination, even if
`
`made, would not meet all of the claim limitations of claims 8 and 11.
`
`1. The Petition Fails To Adequately Explain A Rationale For
`
`Combining Cheriton And Jain
`
`The petition contends that “it would have been obvious to use the CRC
`
`generator of Jain as the hash function logic of Cheriton.” (Petition at 58, 59.) As
`
`support for this contention, the petition notes (1) Cheriton’s statement that other
`
`hash functions can be used, and (2) Jain’s alleged description of CRC hashing as
`
`
`
`5
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`
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`an alternative to XOR-based hashing. Id. Without further explanation or support,
`
`the petition concludes that “[s]uch a combination would be nothing more than the
`
`routine substitution of one known element for another known element, with both
`
`elements performing their known and well-understood function.” Id (citing Seshan
`
`¶ 177).
`
`While these statements may suggest that it would have been possible for one
`
`of ordinary skill in the art to use Jain’s CRC hashing in place of hash function
`
`logic, the petition does nothing to address a number of questions relevant to
`
`determining obviousness, including (a) how Jain’s CRC hashing would be
`
`incorporated into the system of Cheriton, (b) what effects such incorporation might
`
`have, (c) why one of skill in the art would seek to change Cheriton’s hash function
`
`logic, or (d) why replacing the hash function logic with Jain’s CRC hashing would
`
`have been “a routine substitution of one known element for another known
`
`element, with both elements performing their known and well-understood
`
`function.” Simply stating various legal standards without providing explanation or
`
`evidence, as Petitioner does here, is not a sufficient explanation of obviousness.
`
`See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); see
`
`also DirecTV, LLC v. Qurio Holdings, Inc., IPR2015-02006, Paper No. 6 at 10-11
`
`(2016). Nor do the cited paragraphs of the Seshan declaration provide a sufficient
`
`explanation, as they only repeat the deficient petition language and should thus be
`
`
`
`6
`
`
`
`given little weight (if any). See, e.g., Unified Patents Inc. v. Societa Italiana Per
`
`Lo Sviluppo Dell’Elettronica S.P.A., IPR2017-00565, Paper No. 13 at 13 (2017)
`
`(rejecting declaration evidence where declaration “merely repeats, verbatim, the
`
`language of the Petition.”)
`
`2. Input Packetizer/Output Packetizer Of Claim 8
`
`Claim 8 recites “an input packetizer in communication with said CRC
`
`generator and said input register for formatting said CRC encoded addresses and
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`for receiving said received source and destination addresses from said input
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`register” and “an output packetizer in communication with said cache lookup unit
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`for receiving and formatting retrieved source and destination address information
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`from said cache.” Petitioner fails to adequately explain how Cheriton and/or Jain
`
`discloses the claimed “input packetizer” and “output packetizer” of claim 8.
`
`The petition points to the “hash function logic” of Cheriton as disclosing the
`
`claimed “input packetizer” and points to “tri-state buffer and/or data bus interface
`
`circuitry” in Cheriton as disclosing the claimed “output packetizer,” (Petition at
`
`65-66, 68), but it provides no explanation as to how those portions of Cheriton are
`
`“packetizers.” For example, the petition does not identify how any of the hash
`
`function logic, the tri-state buffer, or the data bus interface circuitry of Cheriton
`
`“packetizes” anything, nor does the petition even identify something that is
`
`“packetized” at all. And because the cited paragraphs of the Seshan declaration (¶¶
`
`
`
`7
`
`
`
`199-201 and 207-209) repeat the same conclusory language in the petition, they
`
`add nothing of substance and should be given little to no weight. See, e.g., Unified
`
`Patents Inc. v. Societa Italiana Per Lo Sviluppo Dell’Elettronica S.P.A., IPR2017-
`
`00565, Paper No. 13 at 13 (2017) (rejecting declaration evidence where declaration
`
`“merely repeats, verbatim, the language of the Petition.”)
`
`IV. Additional Grounds Regarding Institution
`
`A. The Petition Fails To Name All Real Parties-In-Interest,
`
`Contrary To 35 U.S.C. § 312(a)(2) And 37 C.F.R. § 42.8(b)(1)
`
`35 U.S.C. § 312(a)(2) states that “[a] petition filed under section 311 may be
`
`considered only if … the petition identifies all real parties in interest.” 35 U.S.C. §
`
`312(a)(2). See also 37 C.F.R. § 42.8(b)(1) (requiring identification of each real
`
`party-in-interest in the petition). In this case, there is strong evidence suggesting
`
`that the Petition is defective because Petitioner is not the sole real party-in interest.
`
`As such, Petitioner bears the burden of showing with evidence that it is the sole
`
`real party-in-interest; and Petitioner has not met that burden.
`
`The “‘real party-in-interest’ is the party that desires review of the patent,”
`
`and may be the petitioner itself, and/or it may be the party or parties “at whose
`
`behest the petition has been filed.” Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48759-60 (emphasis added). The identification of real parties-in-interest is a
`
`“highly fact-dependent question.” Id.
`
`The Board ordinarily accepts a petitioner’s certification regarding the
`
`
`
`8
`
`
`
`identification of real parties-in-interest at the time the petition is filed–i.e. there is a
`
`rebuttable presumption that the petitioner has correctly identified all real parties in-
`
`interest. See Jiawei Tech. Ltd. v. Simon Nicholas Richmond, IPR2014-00935,
`
`Paper No. 52 at 5 (2015). “However, when a patent owner provides sufficient
`
`rebuttal evidence that reasonably brings into question the accuracy of the
`
`petitioner’s identification, the ultimate burden of proof remains with the petitioner
`
`to establish that it has complied with the statutory requirement of 35 U.S.C.
`
`§312(a) to identify all real parties in interest.” Id. See also, Corning Optical
`
`Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00440, Paper No. 68
`
`at 5-6 (2015).
`
`Unified certifies that it “is the real party-in-interest, and further certifies that
`
`no other party exercised control or could exercise control over Unified’s
`
`participation in this proceeding, the filing of [the] petition, or the conduct of any
`
`ensuing trial.” Petition, Paper No. 3 at 1. But Patent Owner herewith submits
`
`sufficient evidence to rebut this certification and any rebuttable presumption that
`
`arises from it.
`
`Unified was formed in 2012 for the sole purposes of combatting so-called
`
`“patent trolls.” See Ex. 2002; 2003 at 3-5, 8; Ex. 2005.1 See also Ex. 1020 at 2
`
`
`1 To the extent the Board views any of the exhibits submitted by Patent Owner on
`the real party-in-interest issue to be hearsay, the statements made by Unified and/or
`its management (including the entirety of Unified’s press releases) fall within
`
`
`
`9
`
`
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`(Unified’s “sole purpose is to deter NPE litigation by protecting technology
`
`sectors.”) Unified’s primary (or perhaps sole) source of revenue is from
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`subscription fees or other payments made by its member companies. See Ex. 2003
`
`at 3-5, 8; Ex. 2005; Ex. 1020 at 2, 5. Unified’s members pay these annual
`
`subscription fees expressly for the purpose of funding Unified’s defensive patent
`
`activities, such as filing IPR petitions. See Ex. 2003 at 4; Ex. 2005. Apart from its
`
`patent-related activities, Unified has no other business activities or source of
`
`revenue. See Ex. 2003 at 2-5.8; Ex. 2005; Ex. 1020 at 2.
`
`From the earlies days of its existence, Unified has made clear that its
`
`purpose and business model is to undertake activities in order to serve the
`
`beneficial interests of its members in defending against patents. For example, in
`
`one of its earliest press releases, Unified boasted: “In the world of fighting patent
`
`trolls, there is a new player named Unified Patents, Inc. that aims to level the
`
`playing field for companies such as Google, NetApp and others.” See Ex. 2002
`
`(emphasis added). The same press release unveiled what it referred to as a
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`“collaborative deterrent strategy” Unified would implement in connection with its
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`members. See id. That strategy involves organizing its members into groups of
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`“Micro-Pools” that would allow for Unified to “align[] its deterrent solution with
`
`
`exceptions to the hearsay rule because they are statements made by a party
`opponent. See Fed. R. Evid. 801(d)(2).
`
`
`
`10
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`
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`its participating companies.” Id. (emphasis added) Unified CEO Kevin Jakel
`
`stated in the press release: “We provide a comprehensive solution of offense and
`
`defense to protect our member’s most important technology investments.” Id.
`
`(emphasis added).
`
`Unified also has made clear that filing IPR Petitions is an important aspect
`
`of its collaborative defense strategy that it executes in coordination with and on
`
`behalf of its members. See, e.g., Ex. 2003 at 6-7, 10; Ex. 2004; Ex. 2005. Unified
`
`filed the first of its many IPR petitions in September 2013. In its press release to
`
`announce the filing, Unified again made clear that the filing was being done to
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`protect the beneficial interests of its members. CEO Jakel stated: “We are pleased
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`to be at the forefront of protecting strategic technologies from NPE activity.” See
`
`Ex. 2004.
`
`Unified itself, of course, has no such strategic technologies to protect.
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`Indeed, Unified has no technology product or service that it sells to the public at
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`all. See Ex. 2005; Ex. 1020 at 3. Its sole business is offering “patent troll” defense
`
`services to its member technology companies. Unified does not itself practice any
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`of the patents that it challenges in IPR, including the ‘951 Patent at issue in this
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`IPR, and thus Unified is at no risk of being sued for infringing the ‘951 Patent.
`
`Unified’s only “interest” in challenging the ‘951 Patent is to serve the beneficial
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`interests of its members – the same members that provided subscription fees that
`
`
`
`11
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`
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`allowed Unified to file and prosecute the instant IPR Petition.
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`Unified’s members also understand that Unified’s IPR activities promote the
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`members’ own interests. NetApp’s chief intellectual property counsel, for example,
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`is quoted as saying that “Unified’s business model represents a ‘cost-effective
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`way’ to challenge ‘dubious’ patents.” See Ex. 2005 Of course, these sophisticated
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`technology companies would not agree to pay large annual subscription fees to
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`Unified unless those companies saw Unified’s filing of IPR petitions as serving the
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`technology companies’ interests.
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`The foregoing evidence presented by Patent Owner is sufficient to rebut any
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`presumption that arises from Petitioner’s bare certification that it is the sole real
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`party-in-interest for purposes of this IPR. Unified’s third-party members are in fact
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`funding this IPR – Unified has no other sources of revenue apart from the money it
`
`is given by its members to undertake defensive patent activities. Unified clearly
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`has filed this IPR at the behest of its members, and/or to protect its members’
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`beneficial interests. Unified itself has no interest whatsoever in the outcome of this
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`IPR proceeding, except for its interest in serving the interests of its members. This
`
`is sufficient for a finding that Unified’s members are also real parties-in-interest
`
`for this IPR. See RPX Corp. v. VirnetX, Inc., IPR2014-00171, Paper No. 52 at 9
`
`(2014) (“On this record, RPX is, at most, a ‘nominal plaintiff’ with ‘no substantial
`
`interest’ in this IPR challenges apart from those of its client, Apple, further
`
`
`
`12
`
`
`
`supporting the finding that RPX is a proxy of Apple . . . .”). At a minimum, these
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`facts give rise to a strong inference that Unified’s members have “implicitly
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`authorized” the filing of this IPR. See id. (finding “implicit authorization”
`
`sufficient for finding that a third party is a real party-in-interest). See also General
`
`Foods Corp. v. Massachusetts Department of Public Health, 648 F.2d 784, 788
`
`(1st Cir. 1981) (cited in the RPX opinion).
`
`In addition to its certification in the Petition that it is the sole real party-in
`
`interest, Petitioner also provided “Voluntary Interrogatory Responses” that are
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`verified by its CEO, Kevin Jakel. See Ex. 1020.2 But when considered against the
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`evidence presented by Patent Owner, these interrogatory responses are insufficient
`
`to carry Petitioner’s ultimate burden of proof to establish that it has named all real
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`parties-in-interest in the Petition. This is true for several reasons.
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`First, the Interrogatories are carefully worded to narrowly focus on “THE
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`INSTANT IPR” or this single “PETITION” (defined terms). Interrogatory No. 1,
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`for example, relates to the “financing, preparation, editing, prior review, or
`
`approval of the PETITION.” But the question and response avoid any discussion of
`
`
`2 It is unclear why Petitioner submitted this testimony in the form of “Voluntary
`Interrogatories” as opposed to a declaration. But this evidence is in all respects
`substantively equivalent to a declaration. Patent Owner intends to depose Mr. Jakel
`as part of its routine discovery under 37 C.F.R. § 42.51(b)(1)(ii). Patent Owner
`also reserves its right to seek additional discovery on the real parties-in-interest
`issue pursuant to 37 C.F.R. § 42.51(b)(2).
`
`
`
`13
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`
`
`communications related to the selection of which patent to challenge in the first
`
`place, and leaves open the possibility of communication between Unified and its
`
`members on the selection of which patent to challenge. This would be an important
`
`fact under the RPX and General Foods cases cited above.
`
`Second, the claims in the interrogatory responses that the instant IPR
`
`petition is not “funded” by Unified’s members are highly suspect. This statement
`
`can be true only if it means direct funding of this specific IPR petition. But
`
`Unified’s members, at a minimum, are indirectly funding this Petition. Unified has
`
`no other source of revenue. Unified’s members know with a certainty that the
`
`subscription fees paid to Unified will be used to fund IPRs that Unified files for the
`
`benefit of its members.
`
`Third, and perhaps most importantly, Unified’s interrogatory responses
`
`entirely avoid the topic of whose beneficial interest is being served by the filing of
`
`this IPR. As discussed above, Unified has no beneficial interest at stake here, other
`
`than serving the beneficial interest of its members. To the extent the interrogatory
`
`responses address this topic at all, they confirm Patent Owner’s contention that
`
`Unified is not the sole real party-in-interest. See Ex. 1020 at Response No. 1 (“The
`
`founders thus created a first-of-its kind company whose sole purpose is to deter
`
`NPE litigation by protecting technology sectors.”) (emphasis added). Unified itself
`
`has no interest in these technology sectors, apart from the interests of its members.
`
`
`
`14
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`
`
`For the foregoing reasons, Patent Owner has presented sufficient evidence to
`
`rebut any presumption that arises from the certification in the petition. Petitioner’s
`
`evidence is not sufficient to carry its burden to show that it has named all real
`
`parties-in-interest. Indeed, Unified’s IPR strategy appears to be carefully crafted to
`
`assist its members in enjoying the benefits of filing an IPR, while also avoiding the
`
`estoppel effects of an unsuccessful IPR petition. See 35 U.S.C. § 315(e)(2)
`
`(applying estoppel to the petitioner and also real parties-in-interest or privies of the
`
`petitioner). This is a frustration of Congressional purpose under the IPR statutes
`
`and should not be tolerated. The Petition should have been denied for this reason
`
`alone. See, e.g., RPX Corp. IPR2014-00171, Paper No. 52 at 9.
`
`B. An Inter Partes Review Should Not Have Been Instituted
`
`Because Such Proceedings Are Unconstitutional
`
`Plectrum objects to the use of inter partes review to analyze the validity of
`
`existing patents as being unconstitutional for at least the reasons presented in the
`
`petition for certiorari recently granted in Oil States Energy Services, LLC v.
`
`Greene’s Energy Group, LLC, S. Ct. No. 16-712 (certiorari granted June 12, 2017).
`
`Plectrum respectfully submits that the Petition should have been denied on that
`
`basis alone.
`
`V. Conclusion
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`find that Petitioner’s reasoning in Ground IV is insufficient to show that claims 8
`
`
`
`15
`
`
`
`and 11 of the ‘951 patent are obvious over Cheriton in view of Jain.
`
`
`Dated: February 5, 2018
`
`
`Respectfully submitted,
`
`/s/ Zachariah S. Harrington
`Zachariah S. Harrington (Reg. No. 44,742)
`ANTONELLI, HARRINGTON &
`THOMPSON LLP
`4306 Yoakum Blvd., Ste. 450
`Houston, TX 77006
`Phone: (713) 581-3000
`Email: zac@ahtlawfirm.com
`
`
`
`16
`
`
`
`
`
`CERTIFICATION UNDER 37 CFR § 42.24(d)
`
`Under the provisions of 37 CFR § 42.24(d), the undersigned herby certifies
`
`that the word count for the foregoing Patent Owner’s Response totals 4,141, which
`
`is less than the 14,000 allowed under 37 CFR § 42.24(b)(1).
`
`Dated: February 5, 2018
`
`
`Respectfully submitted,
`
`/s/ Zachariah S. Harrington
`Zachariah S. Harrington (Reg. No. 44,742)
`ANTONELLI, HARRINGTON &
`THOMPSON LLP
`4306 Yoakum Blvd., Ste. 450
`Houston, TX 77006
`Phone: (713) 581-3000
`Email: zac@ahtlawfirm.com
`
`
`
`17
`
`
`
`
`
`The undersigned herby certifies that a copy of the foregoing PATENT
`
`CERTIFICATE OF SERVICE
`
`OWNER’S RESPONSE was served on February 5, 2018, by delivering a copy via
`
`electronic mail to the attorneys of record for Petitioners as follows:
`
`David L. Cavanaugh
`David.Cavanaugh@wilmerhale.com
`
`Daniel V. Williams
`Daniel.Williams@wilmerhale.com
`
`Roshan Mansinghani
`roshan@unifiedpatents.com
`
`Jonathan Stroud
`jonathan@unifiedpatents.com
`
`Dated: February 5, 2018
`
`/s/ Zachariah S. Harrington
`Zachariah S. Harrington (Reg. No. 44,742)
`ANTONELLI, HARRINGTON &
`THOMPSON LLP
`4306 Yoakum Blvd., Ste. 450
`Houston, TX 77006
`Phone: (713) 581-3000
`Email: zac@ahtlawfirm.com
`
`
`
`
`
`18
`
`
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