FILED UNDER SEAL – PROTECTIVE ORDER MATERIAL
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner
`__________________
`
`Case IPR2018-00043
`Patent 9,454,748
`__________________
`
`PATENT OWNER’S OBSERVATIONS REGARDING
`RPI CROSS-EXAMINATION
`
`1
`
`Unified Patents v. Fall Line
`IPR2018-00043
`Unified Exhibit 1031
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner
`__________________
`
`Case IPR2018-00043
`Patent 9,454,748
`__________________
`
`PATENT OWNER’S OBSERVATIONS REGARDING
`RPI CROSS-EXAMINATION
`
`1
`
`Unified Patents v. Fall Line
`IPR2018-00043
`Unified Exhibit 1031
`
`
`
`FILED UNDER SEAL – PROTECTIVE ORDER MATERIAL
`
`Pursuant to the Board’s Order Regarding the Conduct of the Proceeding
`
`(Paper 19), Patent Owner Fall Line Patents, LLC provides the following
`
`Observations on Cross-Examination of Petitioner’s RPI witness, Kevin Jakel. Mr.
`
`Jakel’s original declaration (Exhibit 1026) and Petitioner’s Voluntary Interrogatory
`
`Responses (Exhibit 1027) were attached as exhibits to Petitioner’s RPI Response
`
`(Paper). The transcript of the cross-examination deposition of Mr. Jakel is attached
`
`to this paper as Exhibit 2009. Patent Owner’s observations are set forth below.
`
`Observation #1: In exhibit 2009, beginning on page 26, line 21 through page 27,
`
`line 22, the witness testified that IPRs are Petitioner’s biggest expense. This
`
`testimony is relevant to Patent Owner’s argument that Petitioner’s members are the
`
`real parties in interest, which is found in Paper 5, pages 28-32. The testimony is
`
`relevant because it shows that a majority of Petitioner’s revenue, which is almost
`
`entirely derived from membership fees, is spent on IPRs.
`
`Observation #2: In exhibit 2009, beginning on page 31, line 16 through page 33,
`
`line 5, the witness testified that membership fees account for about
`
` of
`
`Petitioner’s annual revenue. This testimony is relevant to Patent Owner’s argument
`
`that Petitioner’s members are the real parties in interest, which is found in Paper 5,
`
`pages 28-32. The testimony is relevant because Petitioner’s members must renew
`
`2
`
`CONFIDENTIAL MATERIAL REDACTED
`
`
`
`FILED UNDER SEAL – PROTECTIVE ORDER MATERIAL
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`their subscription for Petitioner to continue to receive its primary source of
`
`revenue.
`
`Observation #3: In exhibit 2009, beginning on page 35, lines 4-16, the witness
`
`testified that Petitioner has a contractual obligation to use the
`
` to
`
`generate a deterrence impact on behalf of a zone. This testimony is relevant to
`
`Patent Owner’s argument that Petitioner’s members are the real parties in interest,
`
`which is found in Paper 5, pages 28-32. The testimony is relevant because it shows
`
`that Petitioner is obligated to act on behalf of its zone members’ interests.
`
`Observation #4: In exhibit 2009, beginning on page 66, line 23 through page 67,
`
`line 20, and page 90, lines 1-13, the witness testified that Petitioner is hired to do
`
`deterrence work. This testimony is relevant to Patent Owner’s argument that
`
`Petitioner’s members are the real parties in interest, which is found in Paper 5,
`
`pages 28-32. The testimony is relevant because it shows that the members hire
`
`Petitioner to perform deterrence services, including filing IPRs.
`
`Observation #5: In exhibit 2009, beginning on page 64, line 14 through page 65,
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`line 7, the witness testified that Petitioner has a contractual obligation to use “
`
`” to reduce NPE activity in a zone. This testimony is relevant to
`
`3
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`CONFIDENTIAL MATERIAL REDACTED
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`
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`FILED UNDER SEAL – PROTECTIVE ORDER MATERIAL
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`Patent Owner’s argument that Petitioner’s members are the real parties in interest,
`
`which is found in Paper 5, pages 28-32. The testimony is relevant because it shows
`
`that Petitioner has a legal obligation to perform deterrence efforts on behalf of its
`
`zone members.
`
`Observation #6: In exhibit 2009, beginning on page 109, line 24 through page
`
`111, line 2, the witness testified that Petitioner meets with every member, during
`
`which Petitioner describes the work done on behalf of the zone and tries to
`
`convince the member to renew. This testimony is relevant to Patent Owner’s
`
`argument that Petitioner’s members are the real parties in interest, which is found
`
`in Paper 5, pages 28-32. The testimony is relevant because it shows that Petitioner
`
`tells its members what work was done on their behalf, including filing IPRs.
`
`Observation #7: In exhibit 2009, beginning on page 35, line 17 through page 36,
`
`line 24, the witness testified that IPRs are Petitioner’s most cost-effective way to
`
`achieve its business goals. This testimony is relevant to Patent Owner’s argument
`
`that Petitioner’s members are the real parties in interest, which is found in Paper 5,
`
`pages 28-32. The testimony is relevant because it shows that Petitioner maintains
`
`memberships by filing IPRs.
`
`4
`
`
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`FILED UNDER SEAL – PROTECTIVE ORDER MATERIAL
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`Observation #8: In exhibit 2009, beginning on page 38, line 24 through page 39,
`
`line 4, the witness testified that IPRs are Petitioner’s best way to achieve its
`
`business goals. This testimony is relevant to Patent Owner’s argument that
`
`Petitioner’s members are the real parties in interest, which is found in Paper 5,
`
`pages 28-32. The testimony is relevant because it shows that Petitioner believes its
`
`best way to generate deterrence—which is Petitioner’s stated purpose and the basis
`
`on which it convinces members to join or review—is by filing IPRs.
`
`Observation #9: In exhibit 2009, beginning on page 45, line 14 through page 47,
`
`line 7 the witness testified that Petitioner provides regular reports to its members,
`
`which include which IPRs were filed, the results of those IPRs, and the money
`
`spent on each individual IPR. This testimony is relevant to Patent Owner’s
`
`argument that Petitioner’s members are the real parties in interest, which is found
`
`in Paper 5, pages 28-32. The testimony is relevant because it shows that
`
`Petitioner’s members are regularly provided with exact, detailed breakdowns of
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`how their subscription fees are being spent on their behalf.
`
`Observation #10: In exhibit 2009, beginning on page 100, line 12 through page
`
`101, line 13, the witness testified that when Petitioner obtains a license, such as
`
`part of settling an IPR, Petitioner also obtains a right to sublicense the patent to its
`
`5
`
`
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`FILED UNDER SEAL – PROTECTIVE ORDER MATERIAL
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`members. This testimony is relevant to Patent Owner’s argument that Petitioner’s
`
`members are the real parties in interest, which is found in Paper 5, pages 28-32.
`
`The testimony is relevant because it shows that Petitioner obtains licenses in order
`
`to provide a sublicense to its members.
`
`Observation #11: In exhibit 2009, beginning on page 102, lines 1-5, the witness
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`testified that any
`
` by Petitioner
`
`. This testimony is relevant to Patent Owner’s argument that Petitioner’s
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`members are the real parties in interest, which is found in Paper 5, pages 28-32.
`
`The testimony is relevant because it shows that
`
` by
`
`Petitioner benefits its members.
`
`Observation #12: In exhibit 2009, beginning on page 124, lines 13-23, the witness
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`testified that Petitioner works to obtain licenses on behalf of its zones. This
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`testimony is relevant to Patent Owner’s argument that Petitioner’s members are the
`
`real parties in interest, which is found in Paper 5, pages 28-32. The testimony is
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`relevant because the zones are comprised on Petitioner’s members.
`
`Observation #13: In exhibit 2009, beginning on page 105, line 24 through page
`
`106, line 11 the witness testified that a majority of the licenses obtained by
`
`6
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`CONFIDENTIAL MATERIAL REDACTED
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`
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`FILED UNDER SEAL – PROTECTIVE ORDER MATERIAL
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`Petitioner were for patents on which Petitioner had filed an IPR. This testimony is
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`relevant to Patent Owner’s argument that Petitioner’s members are the real parties
`
`in interest, which is found in Paper 5, pages 28-32. The testimony is relevant
`
`because it shows that Petitioner’s most effective method for obtaining licenses is to
`
`file IPRs.
`
`Observation #14: In exhibit 2009, beginning on page 109, line 24 through page
`
`110, line 21, and page 112, lines 1-11, the witness testified that Petitioner reports
`
`its deterrence work to each member as part of the process to convince each
`
`member to renew. This testimony is relevant to Patent Owner’s argument that
`
`Petitioner’s members are the real parties in interest, which is found in Paper 5,
`
`pages 28-32. The testimony is relevant because it shows that Petitioner uses the
`
`success of its IPR filings and other deterrence work to convince members to renew
`
`their membership.
`
`Observation #15: In exhibit 2009, beginning on page 114, lines 16-25, the witness
`
`testified that Petitioner emphasizes its work to each member in order to convince
`
`them to renew. This testimony is relevant to Patent Owner’s argument that
`
`Petitioner’s members are the real parties in interest, which is found in Paper 5,
`
`pages 28-32. The testimony is relevant because it shows that Petitioner uses the
`
`7
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`
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`FILED UNDER SEAL – PROTECTIVE ORDER MATERIAL
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`success of its deterrence work, which includes filing IPRs, to convince members to
`
`renew their membership.
`
`Observation #16: In exhibit 2009, beginning on page 188, line 21 through page
`
`189, line 5 the witness testified that money obtained by membership fees is used to
`
`fund IPRs. This testimony is relevant to the witness’s other testimony that the IPRs
`
`are not funded by the members, which is found at page 160, line 3 through page
`
`167, line 23, and more specifically at page 164, lines 5-23. The testimony is
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`relevant because it shows that Petitioner actively seeks to deny that the
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`membership fees it collects are used to fund IPRs.
`
`Dated: February 22, 2019
`
`Respectfully submitted,
`
`
`
`/Michael D. Ellis/
`Michael D. Ellis
`Reg. No. 72,628
`Counsel for Patent Owner
`
`8
`
`
`
`IPR2018-0043
`Patent 9,454,748
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on February 22,
`
`2019, the foregoing document was served via email on counsel for Petitioner:
`
`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)
`
`UNIFIED PATENTS INC.
`Jonathan Stroud (jonathan@unifiedpatents.com)
`Roshan Mansinghani (roshan@unifiedpatents.com)
`Jonathan Bowser (jbowser@unifiedpatents.com)
`
`_
`
`/Michael D. Ellis/
`Michael D. Ellis
`Counsel for Patent Owner
`Reg. No. 72,628
`
`9
`
`
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