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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
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`Petitioner
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`- vs. -
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`FALL LINE PATENTS, LLC
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`Patent Owner
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`———————
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`IPR2018-00043
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`U.S. Patent 9,454,748
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION
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`TO ADDRESS RPI ARGUMENTS
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`I.
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`Introduction
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`Petitioner’s Opposition to Patent Owner’s Motion
`IPR2018-00043 (U.S. Patent 9,454,748)
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`Petitioner Unified Patents Inc. (“Unified”) submits this Opposition to: (i) the
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`portion of Patent Owner’s Motion Regarding Real Party in Interest (“Motion”)
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`requesting that the Board address its real party-in-interest (“RPI”) arguments and
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`exhibits presented in its Patent Owner Preliminary Response (“POPR”), and (ii)
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`Patent Owner’s RPI arguments made at the oral hearing and in the associated
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`demonstratives. Motion (Paper 21) at 1–2.
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`For the following reasons, the Board should find that Patent Owner Fall Line
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`Patents, LLC (“Fall Line”) waived its arguments regarding real party-in-interest.
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`The Board should not countenance Fall Line’s attempt to belatedly present
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`arguments it has waived in the instituted trial.1
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`A. Counsel’s Actions Support a Finding of Waiver.
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`If it were interested in having its RPI arguments considered, Fall Line should
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`have raised those arguments in a paper filed during the trial (e.g., in its Patent Owner
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`Response). Counsel for Fall Line should have been well aware of this requirement
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`based on its experiences in previous PTAB proceedings, including those involving
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`Unified Patents, where it has raised RPI arguments during the trial phase.
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`1 Even if the Board considers Fall Line to have not waived its arguments, the Board
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`should confirm that Unified is the sole real party-in-interest, as set forth in Unified’s
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`concurrently-filed RPI Reply.
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`-1-
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`Petitioner’s Opposition to Patent Owner’s Motion
`IPR2018-00043 (U.S. Patent 9,454,748)
`In particular, in its final written decision of IPR2016-00174, the Board found
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`that patent owner Nonend Inventions N.V. had waived its RPI arguments because it
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`did not present its RPI contentions in its patent owner response. Unified Patents Inc.
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`v. Nonend Inventions N.V., IPR2016-00174, Paper 26 at 6–7 (PTAB May 8, 2017).
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`As with Fall Line in this proceeding, Nonend’s counsel presented RPI arguments in
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`its preliminary response but failed to include those arguments in the patent owner
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`response. Id. And just as patent owner Fall Line argues in its Motion, Nonend
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`argued in a request for rehearing that its “argument regarding the real-party in
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`interest cannot fairly be characterized as an ‘argument for patentability…’” that
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`could be waived. Unified Patents Inc. v. Nonend Inventions N.V., IPR2016-00174,
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`Paper 28 at 3 (PTAB July 25, 2017). The Board disagreed, finding that Nonend had
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`indeed “waived its arguments relating to real party in interest,” and cited the Federal
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`Circuit’s In re Nuvasive decision as further supporting its determination of waiver.
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`Id. at 4 (citing In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016)). Nonend
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`did not appeal the final written decision’s finding of waiver (or any other issue).
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`Here, Fall Line is represented by the same law firm and two of the same
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`attorneys of that firm as Nonend. The Nonend decision on rehearing was entered
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`eleven months before Fall Line filed its Patent Owner Response in this proceeding.
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`Based on the Board’s guidance in the Nonend final written decision and rehearing
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`decision, counsel for Fall Line should have known to raise any RPI arguments in its
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`-2-
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`Petitioner’s Opposition to Patent Owner’s Motion
`IPR2018-00043 (U.S. Patent 9,454,748)
`Patent Owner Response lest they be deemed waived. It deliberately chose not to,
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`and it should be held to that waiver.
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`Even if, as Fall Line asserted, Applications in Internet Time v. RPX (“AIT”)
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`and Worlds v. Bungie (“Worlds”) represented an “intervening change in the
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`interpretation of” the law (Paper 20 at 20:26–21:5), Fall Line did not seek any
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`briefing in light of the intervening decisions, and did not mention either case until
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`the oral argument, nearly four months after the Federal Circuit issued the AIT
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`decision, and three months after Worlds, as Judge Kenny noted at oral hearing. Paper
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`20 at 22:8–10, 21:9–16.
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`Counsel for Fall Line was undoubtedly aware of both cases. In its November
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`2018 final written decision in IPR2017-01430 (Unified Patents Inc. v. Plectrum,
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`LLC), where the patent owner was represented by the same law firm (and two of the
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`same attorneys of that firm) as here, the Board considered patent owner Plectrum’s
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`RPI arguments and supporting evidence in light of both AIT and Worlds, and found
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`Unified to be the sole real party-in-interest to the proceeding. Unified Patents Inc.
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`v. Plectrum, LLC, Case IPR2017-01430, Paper 30 at 9–14 (PTAB Nov. 13, 2018).
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`Based on the Board’s consideration of the facts in light of both AIT and
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`Worlds, counsel for Fall Line should have been aware of the cases and their
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`pertinence to any belatedly-presented RPI arguments and should have sought
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`additional briefing if it wanted those arguments considered. But it did not do so,
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`even after issuance of the Update to the Trial Practice Guide granting patent owners
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`-3-
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`Petitioner’s Opposition to Patent Owner’s Motion
`IPR2018-00043 (U.S. Patent 9,454,748)
`an opportunity to file a sur-reply. Fall Line admittedly did not seek additional
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`briefing and should be held to its waiver on the issue.
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`B.
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`Precedent Supports a Finding of Waiver.
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`In an analogous situation, in which the Federal Circuit reviewed a final written
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`decision finding waiver of a claim construction argument that had not been raised
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`during trial, the court quoted Interactive Gift Exp., Inc. v. Compuserve Inc. (256 F.3d
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`1323, 1347 (Fed. Cir. 2001)) as stating:
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`The argument at the trial and appellate level should be consistent, thereby
`ensuring a clear presentation of the issue to be resolved, an adequate
`opportunity for response and evidentiary development by the opposing
`party, and a record reviewable by the appellate court that is properly
`crystallized around and responsive to the asserted argument.
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`See Google Inc. v. SimpleAir, Inc., 682 Fed. Appx. 900, 905 (Fed. Cir. 2017) (non-
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`precedential).
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`The Board should find that Fall Line waived its argument for similar reasons.
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`By strategically delaying presentation of its RPI contentions until oral argument, Fall
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`Line attempted to circumvent Unified’s opportunity for response and evidentiary
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`development. Indeed, counsel acknowledged during oral argument that, because
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`Fall Line did not raise its RPI arguments in the response, Unified had no opportunity
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`to respond. Paper 20 at 23:1–24:11. Although the Board has provided Unified the
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`ability to respond to Fall Line’s belatedly-presented arguments, the Board need not
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`-4-
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`Petitioner’s Opposition to Patent Owner’s Motion
`IPR2018-00043 (U.S. Patent 9,454,748)
`consider that argument and evidence, as it should find Fall Line to have waived its
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`argument in the first instance.
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`II. Conclusion
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`Because Fall Line failed to pursue its RPI arguments properly during trial, it
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`should be held to have waived those arguments.
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`Respectfully submitted,
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`/David W. OBrien/
`David W. O’Brien
`Counsel for Petitioner
`Registration No. 40,107
`HAYNES AND BOONE, LLP
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`February 1, 2019
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`-5-
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Unified Patents, Inc.
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`Petitioner
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`§
`§
`§
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`§
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`Petition for Inter Partes Review
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`IPR2018-00043
`U.S. Patent No. 9,454,748
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that service
`was made on the Patent Owner as detailed below.
`Date of service February 1, 2019
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`Manner of service Electronic Service by E-Mail
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`Documents served Petitioner’s Opposition to Patent Owner’s Motion
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`Persons served Terry L. Watt (terry.watt@crowedunlevy.com)
`Matthew J. Antonelli (matt@ahtlawfirm)
`Michael E. Ellis (michael@ahtlawfirm.com)
`Larry D. Thompson, Jr. (larry@ahtlawfirm.com)
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`/Raghav Bajaj/
`Raghav Bajaj
`Counsel for Petitioner
`Registration No. 66,630
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`-6-
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