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` October 16, 2014
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`TrialsRFC2014@uspto.gov
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`Via Email:
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`The Honorable Michelle K. Lee
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`Deputy Under Secretary of Commerce for Intellectual Property
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`and Deputy Director of the United States Patent and Trademark Office
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`U.S. Patent and Trademark Office
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`RE: Response to the Request for Comments on “Trial Proceedings Under the America
`Invents Act Before the Patent Trial and Appeal Board,” Fed. Reg. Vol. 79, No. 124,
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`June 27, 2014
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`Dear Deputy Director Lee:
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`Unified Patents (“Unified”) appreciates the opportunity to provide comments to the United States
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`patent and Trademark Office (“USPTO”) in response to the Request for Comments on Trial
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`Proceedings Under the America Invents Act (“AIA”) Before the Patent Trial and Appeal Board
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`(“the Request”).
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`Unified was founded over concerns with the increasing risk of non-practicing entities (“NPEs”)
`asserting poor quality patents against strategic technologies and industries. Unified was created
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`with the sole purpose of deterring NPE litigation by protecting technology sectors. Companies
`in a technology sector subscribe to Unified’s technology specific deterrence, and in turn, Unified
`performs many NPE-deterrent activities, such as analyzing the technology sector, monitoring
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`patent activity (including patent ownership and sales, NPE demand letters and litigation, and
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`industry companies), conducting prior art research and invalidity analysis, providing a range of
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`NPE advisory services to its subscribers, sometimes acquiring patents, and sometimes
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`challenging patents at the USPTO. Over the past year, Unified has challenged six patents at the
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`USPTO in inter partes review proceedings.
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`Unified supports the USPTO’s commitment to revisit the rules and practice guide after initial
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`experience with the new AIA trials. The following comments are submitted in response to the
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`Office in response to the Request.
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`Claim Construction Standard
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`Under what circumstances, if any, should the Board decline to construe a claim in an
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`unexpired patent in accordance with its broadest reasonable construction in light of the
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`specification of the patent in which it appears?
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`1
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`Fall Line Patents, LLC
`Unified Patents Inc. v. Fall Line Patents, LLC
`IPR2018-00043
`Ex 2001-001
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`

`

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` One of the main purposes of the AIA’s implementation of trial proceedings was to make
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`the proceedings adjudicative as opposed to examinational.1 In adjudicative proceedings
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`at the district court, the Phillips standard is applied to claim construction.2 In the Rules
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`promulgated by the USPTO, however, the USPTO set forth that the broadest reasonable
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`interpretation (“BRI”) standard should be applied in review proceedings. This was
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`because the patent owner is given the opportunity to amend the claims during the review
`proceedings.3
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`There has been mention of the possibility that the Board could potentially remove
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`amendments as an option during review proceedings. Although Unified does not take a
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`position on the removal of amendments, Unified submits that the BRI standard should
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`still be applied so long as amending the claims at issue is possible.
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`Patent Owner Preliminary Response
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`Should new testimonial evidence be permitted in a Patent Owner Preliminary Response?
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`If new testimonial evidence is permitted, how can the Board meet the statutory deadline
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`to determine whether to institute a proceeding while ensuring fair treatment of all
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`parties?
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`Unified advocates no change to the current standards regarding testimonial evidence.
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`Obviousness
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`Under what circumstances should the Board permit discovery of evidence of non-
`4.
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`obviousness held by the petitioner, for example, evidence of commercial success for a
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`product of the petitioner? What limits should be placed on such discovery to ensure that
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`the trial is completed by the statutory deadline?
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`Unified advocates no change to the discovery of evidence of non-obviousness held by the
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`petitioner.
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`Real Party in Interest
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`Should a patent owner be able to raise a challenge regarding a real party in interest at
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`any time during a trial?
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`Unified suggests that the Board could provide additional guidance regarding issues of
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`real party in interest, including the possibility of identifying specific questions and factors
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`that petitioners should consider when assessing real party in interest. Such guidance
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`would allow all petitioners and patent owners to evaluate issues related to real party in
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` 1 H.R. Rep. No. 112-98, pt. 1, 46-47 (June 11, 2011) (“The Act converts inter partes reexamination from an
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` examinational to an adjudicative proceeding, and renames the proceeding ‘inter partes review.’”).
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`2 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
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`3 “Office Patent Trial Practice Guide,” Fed. Reg., Vol. 77, No. 157, Aug. 14, 2012 at 48764 (“Since patent owners
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`have the opportunity to amend their claims during IPR, PGR, and CBM trials, unlike in district court proceedings,
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`they are able to resolve ambiguities and overbreadth through this interpretive approach.”).
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`2
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`Fall Line Patents, LLC
`Unified Patents Inc. v. Fall Line Patents, LLC
`IPR2018-00043
`Ex 2001-002
`
`

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` interest early and in a more efficient manner. Unified suggests that petitions could
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` include a verified statement from the Petitioner addressing the Board’s list of questions
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` and factors related to real party in interest. The Board’s guidance would allow for early
`resolution of issues involving real party in interest and would prevent needless discovery.
`Many different parties would benefit from additional guidance on how to appropriately
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`determine real party in interest and include companies with complex corporate structures
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`and joint defense groups. Additionally, an increasing number of third party petitioners
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`and public interest groups would also benefit from additional guidance. A non-exclusive
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`list of third-party petitioners already dealing with this issue includes: the Electronic
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`Frontier Foundation, Unified, Patent Quality Initiative, RPX Corp., Printing Industries of
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`America, as well as other trade associations and industry groups.
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` Unified suggests that if a patent owner can show a reasonable basis for challenging real
` party in interest, the patent owner should be required to do so in its preliminary response,
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`and the Board should make a determination on real party in interest prior to institution.
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`Making this determination prior to institution would save the Board and the parties both
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`time and money. While real party in interest can be challenged at any point during the
`proceeding, Unified suggests that if the patent owner wishes to challenge real party in
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`interest post-institution, the patent owner must have a reasonable basis for the additional
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`challenge.
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`Unified suggests that the same standard should govern additional discovery for real party
`in interest issues both pre- and post-institution. For inter partes reviews, the interests of
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`justice standard should apply and for covered business method reviews, the good cause
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`standard should apply.
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`Additional Discovery
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`Are the factors enumerated in the Board's decision in Garmin v. Cuozzo, IPR2012-
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`00001, appropriate to consider in deciding whether to grant a request for additional
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`discovery? What additional factors, if any, should be considered?
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`Unified believes that the Garmin factors are appropriate as limited discovery focusing on
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`the validity of the challenged patent claims is one of the benefits of review proceedings
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`as an alternative to district court litigation.
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`Multiple Proceedings
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`How should multiple proceedings before the USPTO involving the same patent be
`7.
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`coordinated? Multiple proceedings before the USPTO include, for example: (i) Two or
`more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an
`AIA trial and a reissue proceeding.
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`3
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`Fall Line Patents, LLC
`Unified Patents Inc. v. Fall Line Patents, LLC
`IPR2018-00043
`Ex 2001-003
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` Unified urges that the Board should have a more liberal policy for joinder in review
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` proceedings. Often times multiple parties have an interest in requesting review of the
` same patent but may have different reasons for challenging the patent’s validity.
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`Accordingly, Unified submits that the Office should consider additional factors when
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` determining whether to join a second petition to the first. These factors include:
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`(A)
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`(B)
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`The interests of the second petitioner in being heard
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`The interests of the Office and the public in efficiency of trial proceedings
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`and quality of patents
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`Joinder of separately filed but identical or similar review proceedings would be especially
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`useful for ensuring that multiple parties are heard regarding the validity of a patent
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`without burdening the Board. Joinder, in the case where the first petitioner and a patent
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`owner reach a settlement agreement and terminate a proceeding, the second, joined
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`petitioner would still be able to present its arguments with respect to the validity of the
`patent in a timely and efficient manner. Unified suggests that joinder is particularly
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`warranted where the second petitioner files an identical petition to the one filed in the
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`already instituted proceeding and agrees to be bound by the same trial schedule of the
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`first proceeding.
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`General
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`What other changes can and should be made in AIA trial proceedings? For example,
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`should changes be made to the Board's approach to instituting petitions, page limits, or
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`request for rehearing practice?
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`A. The Board should implement a word count requirement as implemented by the
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`Federal Circuit as opposed to the current page limit approach
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`The current page limit restrictions are overly restrictive and prevent the petitioner from
`presenting its argument in an effective and easy to read format. Unified believes that
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`implementing a word limit is more appropriate than the current page count requirement.
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`By switching to a word limit approach and requiring the parties to submit a certification
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`of the word count with the petition, both the Board and parties will be saved time and
`effort in complying with these page limits.
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`Unified leaves the appropriate word limit to the discretion of the Board. Unified notes
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`that the Federal Circuit has a word count requirement that limits the principal brief to
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`14,000 words. For reference, Unified’s petitions contain, on average, 15,100 words with
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`the largest petition having a word count of approximately15,800 words. Unified suggests
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`that a word limit of 16,000 words would be appropriate. Unified also suggests that the
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`table of contents and mandatory notices pursuant to 37 C.F.R. § 42.8 should not be
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`included in the word limit. Further, Unified suggests that to make the word limit easier to
`calculate, the mandatory notices should be submitted as an addendum to the petition
`instead of being part of the petition itself.
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`4
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`Fall Line Patents, LLC
`Unified Patents Inc. v. Fall Line Patents, LLC
`IPR2018-00043
`Ex 2001-004
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`Unified appreciates the opportunity to provide feedback to the Office on the Request. Unified
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` looks forward to further dialog with the Office with respect to the issues raised above.
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`Sincerely,
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`Kevin Jakel
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`CEO
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`Unified Patents
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`5
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`Fall Line Patents, LLC
`Unified Patents Inc. v. Fall Line Patents, LLC
`IPR2018-00043
`Ex 2001-005
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