IPR2018-0043
`Patent 9,454,748
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`UNIFIED PATENTS INC.
`Petitioner
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`v.
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`FALL LINE PATENTS, LLC
`Patent Owner
`__________________
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`Case IPR2018-00043
`Patent 9,454,748
`__________________
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`PATENT OWNER’S MOTION REGARDING REAL PARTY IN INTEREST
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`Patent 9,454,748
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`UNIFIED PATENTS INC.
`Petitioner
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`v.
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`FALL LINE PATENTS, LLC
`Patent Owner
`__________________
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`Case IPR2018-00043
`Patent 9,454,748
`__________________
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`PATENT OWNER’S MOTION REGARDING REAL PARTY IN INTEREST
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`IPR2018-0043
`Patent 9,454,748
`THE BOARD SHOULD CONSIDER PATENT OWNER’S REAL-
`PARTY-IN-INTEREST ARGUMENTS
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`A.
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`Patent Owner Timely Challenged Petitioner’s Identification of the
`Real Parties in Interest
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`Petitioner Unified Patents, Inc. is required to identify all real parties in
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`I.
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`interest in its petition for inter partes review. See, 35 U.S.C. § 312(a)(2). In its
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`Preliminary Response, Patent Owner Fall Line Patents, LLC argued that Petitioner
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`has failed to identify all real parties in interest to this IPR. Paper 5 at 28-33. Patent
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`Owner presented evidence showing that Petitioner’s clients (also referred to as
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`members) should be named as real parties in interest. Id. That argument and
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`supporting evidence was rejected by the Board. Paper 6 at 10-11.
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`From its opening brief, Patent Owner has maintained that Petitioner has not
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`satisfied its statutory obligation to identify all real parties in interest. Patent
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`Owner’s arguments and supporting evidence remain the same, and the Board
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`should consider these arguments.
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`B.
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`Patent Owner Has Not Waived Its Challenge
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`Patent Owner has not waived its argument that Petitioner has failed to
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`identify all the real parties in interest to this IPR. The waiver argument appears to
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`be based on a sentence in the Scheduling Order: “The patent owner is cautioned
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`that any arguments for patentability not raised in the response will be deemed
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`waived.” Paper 7 at 3 (emphasis added). That warning, however, clearly states that
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`1
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`IPR2018-0043
`Patent 9,454,748
`only certain arguments are waived: those pertaining to patentability. Whether
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`Petitioner has named all real parties in interest in no way affects the patentability
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`of the ‘748 Patent. Instead, it goes to whether Petitioner has satisfied the statutory
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`requirements for challenging an issued patent using the inter partes review
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`procedure. Thus, the real-party-in-interest argument cannot be waived pursuant to
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`this clause in the scheduling order because it is not an argument for patentability.
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`Furthermore, the Board has stated that the requirement to identify all real
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`parties in interest cannot be waived. See, Motorola Mobility LLC v. Intellectual
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`Ventures II LLC, IPR2014-00504, Paper 12 at 8 (PTAB Sep. 10, 2014) (“We agree
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`with Patent Owner that identification of all real parties-in-interest is an express
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`statutory requirement that cannot be waived.”).
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`II.
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`FEDERAL CIRCUIT PRECEDENT SHOWS THAT PETITIONER
`HAS FAILED TO NAME ALL REAL PARTIES IN INTEREST
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`A. The Board Used the Wrong Standard
`After this IPR was instituted, and after Patent Owner filed its Response, the
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`Federal Circuit held that the Board had been applying an “unduly restrictive test
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`for determining whether a person or entity is a ‘real party in interest.’”
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`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1339 (Fed. Cir.
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`2018) (“AIT”). In that case, petitioner RPX Corporation’s petition identified RPX
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`as the sole real party in interest. Id. The patent owner in that case challenged this
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`allegation and, after taking additional discovery, presented facts showing that a
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`2
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`IPR2018-0043
`Patent 9,454,748
`client of RPX should also be listed as a real party in interest. Id. The Board
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`rejected the patent owner’s argument and instituted the IPR. Id. at 1342.
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`On appeal, the Federal Circuit addressed whether “the Board relied on an
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`erroneous understanding of the term ‘real party in interest’” in the context of IPR
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`petitions. Id. at 1344. The court analyzed “the meaning of the term ‘real party in
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`interest’ in the context of the AIA” by examining the relevant common law and
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`applicable statutory history. Id. at 1346-1351. The Federal Circuit concluded that
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`the real-party-in-interest analysis “demands a flexible approach that takes into
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`account both equitable and practical considerations, with an eye toward
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`determining whether the non-party is a clear beneficiary that has a preexisting,
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`established relationship with the petitioner.” (emphasis added) Id. at 1351.
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`The Federal Circuit then highlighted two facts pertaining to the petitioner: 1)
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`“RPX, unlike a traditional trade association, is a for-profit company whose clients
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`pay for its portfolio of ‘patent risk solutions,’” and 2) “one of its ‘strategies’ for
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`transforming the patent market is ‘the facilitation of challenges to patent validity.”
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`Id. at 1351. The court found that those two facts alone where sufficient to imply
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`that the clients were clear beneficiaries with a preexisting relationship and real
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`parties in interest. Id. at 1351-52.
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`Those same two facts apply to Petitioner Unified Patents in this IPR. First,
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`Petitioner is a for-profit company that collects subscription fees from its clients in
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`3
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`IPR2018-0043
`Patent 9,454,748
`order to “track any NPE activity and NPE risks.” Ex. 2003 at 4. Second, one of
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`Petitioner’s strategies to deter NPE activity is via USPTO challenges, such as this
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`IPR. Ex. 2004 at 3. Therefore. using the analytical framework set forth in AIT, it is
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`clear that the Petitioner in this IPR is not the only real party in interest.1
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`After the AIT case, the Federal Circuit addressed which party has the burden
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`of persuasion in the real-party-in-interest analysis and how the Board had applied
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`that burden. Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1241 (Fed. Cir. 2018). In
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`that case, the Federal Circuit first affirmed that the petitioner has the burden to
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`show that it “complied with the statutory requirement to identify all the real parties
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`in interest.” Id. at 1242. The court also agreed that it was practical for a petitioner’s
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`initial identification to be “accepted unless and until disputed by a patent owner,”
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`but did not view this as a presumption. Id. at 1243.
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`The court then analyzed what a patent owner must do to sufficiently dispute
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`the issue. Id. at 1244. The Board had previously explained that a patent owner must
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`“provide[] sufficient rebuttal evidence that reasonably brings into question the
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`1 The court discussed other facts pertaining to the particular relationship between
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`RPX and its client, but did not hold that additional facts were necessary for a non-
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`party to be a real party in interest. AIT, 897 F.3d at 1352 (“This implication
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`becomes stronger when one considers the discovery produced in this case.”).
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`4
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`IPR2018-0043
`Patent 9,454,748
`accuracy of a petitioner’s identification of the real parties in interest” for the
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`burden to remain with petitioners. Id. But the Federal Circuit “disagree[d] with the
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`use of a presumption in this context” because by presuming that a petitioner’s
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`identification of the real parties in interest was correct, the Board was improperly
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`shifting the burden to patent owners. Id.
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`Similarly, in this IPR, the Board incorrectly presumed the accuracy of
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`Petitioner’s identification of the real parties in interest and, therefore, improperly
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`shifted the burden of persuasion to Patent Owner. In the Institution Decision, the
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`Board stated that “Patent Owner has not provided sufficient evidence to reasonably
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`bring into question the accuracy of Petitioner's identification.” Paper 6 at 11. This
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`is the same application of a presumption that was rejected in Worlds.
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`B.
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`Petitioner Has Failed to Satisfy the Statutory Requirements
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`When applying the correct standard for determining the real parties in
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`interest and keeping the burden on Petitioner, it is clear that Petitioner has not met
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`the statutory requirement to identify all real parties in interest. Unlike other IPR
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`petitions filed by Petitioner, and as stated in the Preliminary Response, Petitioner
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`has provided no evidence to support its assertion that it is the only real party in
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`interest. Paper 5 at 31-32. Petitioner has offered only a bare statement in the
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`petition, which Patent Owner has disputed with evidence showing that Petitioner’s
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`clients are also real parties in interest.
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`5
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`Dated: January 11, 2019
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`IPR2018-0043
`Patent 9,454,748
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`Respectfully submitted,
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`__/Michael D. Ellis/__
`Michael D. Ellis
`Reg. No. 72,628
`Counsel for Patent Owner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on January 11,
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`2019, the foregoing document was served via email on counsel for Petitioner:
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`IPR2018-0043
`Patent 9,454,748
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`HAYNES AND BOONE, LLP
`David O’Brien (David.obrien.ipr@haynesboone.com)
`Raghav Bajaj (Raghav.bajaj.ipr@haynesboone.com)
`David McCombs (David.mccombs.ipr@haynesboone.com)
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`UNIFIED PATENTS INC.
`Jonathan Stroud (jonathan@unifiedpatents.com)
`Roshan Mansinghani (roshan@unifiedpatents.com)
`Jonathan Bowser (jbowser@unifiedpatents.com)
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`__/Michael D. Ellis/___
`Michael D. Ellis
`Counsel for Patent Owner
`Reg. No. 72,628
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