IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
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`
`
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`
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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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`__________________________
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`UNIFIED PATENTS INC.
`
`Petitioner
`
`v.
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`FALL LINE PATENTS, LLC
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`Patent Owner
`
`__________________________
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`CASE IPR2018-00043
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`PATENT 9,454,748
`
`________________________
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`
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`PATENT OWNER’S PETITION FOR DIRECTOR REHEARING
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`

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`IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
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`
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`Table of Contents
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`Fall Line’s RPI Challenge ....................................................................................................1
`
`The Final Written Decision Should Be Set Aside By A Properly Appointed
`Director ................................................................................................................................3
`
`Unified Failed To Identify The Proper Real Parties In Interest ...............................3
`
`Fall Line Did Not Waive Its Challenge To Unified’s Identification Of The
`Real Parties In Interest ...........................................................................................10
`
`The Real Parties In Interest Issue Was Properly Raised ........................................11
`
`A.
`
`B.
`
`
`C.
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`D.
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`Rehearing Is Important Given The Board’s Failure To Critically Assess
`Unified Patents’ Assertions Regarding The RPI Issue ..........................................12
`
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`Because The Patent Office Cannot Provide The Rehearing Required Under
`Arthrex, The Final Written Decision Should Be Vacated And The IPR Should Be
`Dismissed ...........................................................................................................................13
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`Conclusion .........................................................................................................................14
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`
`
`
`
` i
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`I.
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`II.
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`
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`III.
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`IV.
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`

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`IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
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`
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`Table of Authorities
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`Cases
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`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018) ...........1, 3, 4, 6
`
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
`IPR2013-00453, Paper 88 (PTAB Jan. 6, 2015) ............................................................................12
`
`Click-To-Call Techs., LP v. Ingenio, Inc., YellowPages.com, LLC,
`899 F.3d 1321 (Fed. Cir. 2018)......................................................................................................11
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`Dell Inc. v. Acceleron, LLC, 818 F.3d 1293 (Fed. Cir. 2016) .......................................................14
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`Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313 (Fed. Cir. 2020) ........................14
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`Fall Line Patents, LLC v. Unified Patents, LLC, 818 Fed. Appx. 1014 (Fed. Cir. 2020) ...............1
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`Fall Line Patents, LLC v. Unified Patents, LLC,
`No. 19-1956, Dkt. 103 (Fed. Cir. Sept. 13, 2021) ...........................................................................1
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`GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir. 2015) .......................................................11
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`Guedes v. Bureau of Alcohol, Tobacco, Firearms, 920 F.3d 1, 11 (D.C. Cir. 2019) .............. 13-14
`
`Iancu v. Fall Line Patents, LLC, 141 S.Ct. 2843 (2021) .................................................................1
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`LM-M v. Cuccinelli, 442 F. Supp. 3d 1 (D.D.C. 2020) ..................................................................13
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`United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021) ....................................................................1
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`United States v. Cotton, 535 U.S. 625 (2002) ................................................................................11
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`Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) ....................................10, 11
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`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018) ...............................................3, 11, 12
`
`
`
`Statutes
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` 5
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` U.S.C. § 3345 ..............................................................................................................................13
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`35 U.S.C. § 312(a)(2) .......................................................................................................................3
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` ii
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`IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
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`35 U.S.C. § 314(a)(4) .....................................................................................................................14
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`
`Other
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`Z. Silbersher, “The Federal Circuit cannot say who constitutes a real-party-in-interest in
`an IPR” (May 20, 2020) .................................................................................................................12
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`Unified Patents Press Release, “200th PTAB Challenge Filed By Unified” (June 2, 2020) ..........13
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` iii
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`IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
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`The Federal Circuit remanded this case so that Fall Line could seek Director rehearing of
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`
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`the Board’s final written decision under United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021).
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`See Fall Line Patents, LLC v. Unified Patents, LLC, No. 19-1956, Dkt. 103 (Fed. Cir. Sept. 13,
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`2021).
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`
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`The Board’s final written decision was incorrect and should be set aside on rehearing by
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`a properly appointed Director. The Board failed to conduct the “critical assessment of
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`[Unified’s] assertions regarding the real-party-in-interest issue,” which the Federal Circuit
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`explained is “especially warranted in a case in which a petitioner’s entire business model is to
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`challenge patents on behalf of others.” See Fall Line Patents, LLC v. Unified Patents, LLC, 818
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`Fed. Appx. 1014, 1018 n.1 (Fed. Cir. 2020), vacated, Iancu v. Fall Line Patents, LLC, 141 S.Ct.
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`2843 (2021) (citing Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1352 (Fed.
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`Cir. 2018)).
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`
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`Unfortunately, the Board is not currently led by a properly appointed Director, or even an
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`Acting Director, who is qualified to provide the rehearing required by Arthrex. Given this
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`circumstance, the Board should vacate its final written decision and dismiss this IPR.
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`I.
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`
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`Fall Line’s RPI Challenge
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`This IPR was filed by Unified Patents, LLC. Unified was formed to file IPR petitions on
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`behalf of its members in a transparent attempt to avoid the IPR estoppel provisions that apply to
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`actual IPR petitioners. In both written communications and in-person meetings with them,
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`Unified informs its members of exactly what IPRs it has filed in specific technology zones that
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`concern them, how much of their membership fees were spent on filing IPRs in those zones, and
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`the licenses—which specifically protect Unified’s members—that Unified was able to obtain by
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` 1
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`IPR2018-00043
`U.S. PATENT 9,454,748
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`settling IPRs with patent owners. Unified tells their members that if they like what Unified has
`
`done for them, they should re-subscribe and Unified will do it again:
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`[W]e work on behalf of the zone, we give all of the information and we just say
`basically, you know, like, here is what we did for the zone, if you like the work
`we do on behalf of the zone, then pay us again, renew, and we are going to
`work on behalf of the zone for another year.
`
`Ex. 2009 at 110:10-15 (testimony of Kevin Jakel, CEO of Unified Patents) (emphasis added).
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`
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`Fall Line challenged Unified’s right to prosecute this IPR as the sole named party in
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`interest. Specifically, Fall Line argued that Unified’s members (or members subscribed to a
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`particular technology zone offered by Unified) were the RPIs and they could not avoid RPI
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`status merely by coordinating with Unified on an annual basis rather than an IPR-by-IPR basis.
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`Fall Line raised the issue both in its preliminary response and at the IPR trial. Pursuant to the
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`Board’s rule that only “arguments for patentability” are waived if not raised again in the Patent
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`Owner’s response—and the undisputed fact that Fall Line’s RPI challenge was not an argument
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`for patentability—Fall Line did not re-raise its RPI challenge in its Patent Owner’s response.
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`
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`In its Final Written Decision, the Board ruled that Fall Line waived its RPI challenge by
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`not re-raising the issue in its response brief. The Board also ruled in the alternative that Fall Line
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`failed to establish an RPI violation solely because it did not identify by specific name a particular
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`member of Unified Patents, even though nothing about Fall Line’s RPI challenge (or Unified’s
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`response to it) turned on the specific identify of any particular member.
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` 2
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`IPR2018-00043
`U.S. PATENT 9,454,748
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`The Final Written Decision Should Be Set Aside By A Properly Appointed Director
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`II.
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`
`
`A.
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`Unified Failed To Identify The Proper Real Parties In Interest
`
`An IPR petition “may be considered only if…the petition identifies all real parties in
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`interest.” 35 U.S.C. § 312(a)(2). Because Unified failed to identify the members of its
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`technology zone as real parties in interest, the Board’s decision instituting review and final
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`written decision finding claims unpatentable should be vacated.
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`The members of Unified’s technology zone are real parties in interest because they hire
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`Unified to deter patent enforcement efforts. Ex. 2009 at 66:23-67:20. In fact, Unified has
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`contractual obligations to its members to engage in deterring patent enforcement efforts. Id. at
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`35:5-16; 64:14-65:7. Unified meets these obligations mainly by filing IPRs. Id. at 26:21-27:22;
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`35:17-36:-24; 38:19-39:4. So the real parties in interest in the IPR are the members of Unified’s
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`technology zone.
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`In evaluating Fall Line’s real party in interest challenge, the Board was “required to make
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`factual determinations necessary to evaluate whether [Unified] had satisfied its burden to
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`demonstrate that” it was the only real party in interest. Worlds Inc. v. Bungie, Inc., 903 F.3d
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`1237, 1246 (Fed. Cir. 2018). And the Board had to “consider the evidence that justifies and
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`detracts from its conclusions” and to explain its rationale for rejecting Fall Line’s arguments.
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`Applications in Internet Time, 897 F.3d at 1358. But the Board did not make any factual
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`determinations or explain its rationale. Instead, the Board concluded that Fall Line did not
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`identify any “particular third party” that should be named a real party in interest. Final Written
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`Decision at 19. The Board erred when it failed to consider critical evidence. Particularly where
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`Unified bore the burden of proving that it identified all real parties in interest.
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`If the Board had made the factual determinations it should have made, it would have
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`IPR2018-00043
`U.S. PATENT 9,454,748
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`determined that Unified had not met its burden under the “expansive formulation of ‘real party in
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`interest’ dictated by the language, structure, purpose and legislative history of 315(b).”
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`Applications in Internet Time, 897 F.3d at 1351.
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`The RPX decision is particularly instructive here. The RPX court held that the real party
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`in interest analysis “demands a flexible approach that takes into account both equitable and
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`practical considerations, with an eye toward determining whether the non-party is a clear
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`beneficiary that has a preexisting, established relationship with the petitioner.” Id. (emphasis
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`added)
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`In determining that RPX had not met its burden, the RPX court noted that RPX was a for-
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`profit company whose clients pay for its “portfolio of ‘patent risk solutions,’” including the
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`facilitation of challenges to patent validity. Id. at 1351-52. And the Board noted that one intent
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`of RPX is to “reduce expenses for [RPX’s] clients.” Id. The court determined that these facts
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`alone “imply that RPX can and does file IPRs to serve its clients’ financial interests….” Id.
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`These same facts apply to Unified here. Just like RPX, Unified earns a profit by
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`collecting subscription fees from its clients to deter non-practicing entities (NPEs) from asserting
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`patents. Ex. 2001 at 1; Ex. 2002 at 1-2; Ex. 2003 at 3-5, 8; Ex. 2005 at 1-3; Ex. 2009 at 31:16-
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`33:5, 66:23-67:20. Also just like RPX, Unified designed its business model to help companies
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`reduce expenses. Ex. 2003 at 5. And Unified’s members pay these annual subscription fees
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`expressly to fund Unified’s defensive patent activities, which mainly include filing IPR petitions.
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`Ex. 2003 at 4; Ex. 2004 at 1-3; Ex. 2005 at 1-3; Ex. 2009 at 26:21-27:22, 35:17-36:24; 38:24-
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`39:4; 188:21-189:5.
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`Just like RPX, Unified can and does file IPRs to serve its members’ interests. For
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`example, Unified meets with the members of its technology zone every year, describes the work
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` 4
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`IPR2018-00043
`U.S. PATENT 9,454,748
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`Unified did for the zone during the past year, and tries to persuade its members to renew their
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`subscription based on what Unified did the prior year. Ex. 2009 at 109:24-111:2, 114:16-25.
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`Unified tells its members “here is what we did for the zone, if you like the work we do on behalf
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`of the zone, then pay us again, renew, and we are going to work on behalf of the zone for another
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`year.” Id. at 110:10-15.
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`Unified also provides regular reports to its members that detail the IPRs filed in the zone,
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`the results of those IPRs, and how much money it spent on each IPR. Id. at 45:14-47:7. So
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`Unified arms its subscribers with information about how it spends their membership fees so they
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`can decide if they want to renew their subscriptions.
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`Of course, the sophisticated technology companies that comprise Unified’s membership
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`would not agree to pay large annual subscription fees to Unified unless those companies saw
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`Unified’s filing of IPR petitions as serving the technology companies’ interests. So Unified
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`makes sure that it is serving its members’ interests.
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`From its inception in 2012, Unified has made clear that its purpose and business model is
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`to undertake activities that serve the beneficial interests of its members in defending against
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`patents. For example, in one of its earliest press releases, Unified boasted: “In the world of
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`fighting patent trolls, there is a new player named Unified Patents, Inc. that aims to level the
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`playing field for companies such as Google, NetApp and others.” Ex. 2002 at 1 (emphasis
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`added). Unified also advertised that it “tightly aligns its deterrent solution with its participating
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`companies” and that it would implement a “collaborative deterrent strategy” “to protect [its]
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`members’ most important technology investments.” See id (emphasis added).
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`Unified itself has no technology investments to protect. Indeed, Unified has no
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`technology product or service that it sells to the public at all. Exs. 2003, 2004, 2005. Its sole
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` 5
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`IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
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`business is offering deterrence work to its members “in technology areas companies care the
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`most about.” Ex. 2003 at 8; Ex. 2009 at 66:23-67:20, 90: 1-13. Unified does not itself practice
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`any of the patents that it challenges in IPR, including the 748 Patent, and thus Unified is at no
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`risk of being sued for infringing the 748 Patent. Unified’s only “interest” in challenging the 748
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`Patent is to serve the interest of its members—the same members that pay subscription fees that
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`fund Unified’s preparation, filing and prosecution of the IPR from which Fall Line now appeals.
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`As additional evidence that Unified’s zone members are real parties in interest, Unified’s
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`members “do get licenses when we settle” when Unified obtains rights and licenses to patents,
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`often as a result of settling IPRs. Ex. 2009 at 94:8-25, 100:12-101:13, 102:1-5, 124:13-23,
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`105:24-106:11.
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`Unified’s members also understand that Unified’s IPR activities promote the members’
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`own beneficial interests. For example, the chief IP counsel for one of Unified’s first clients,
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`NetApp Inc., stated that “Unified’s business model represents a ‘cost-effective way’ to challenge
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`‘dubious patents.” Ex. 2005 at 3.
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`Unified argues that its members are not real parties in interest because Unified “does not
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`communicate with members as to litigation or IPR strategy.” Petitioner’s Reply to Patent
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`Owner’s RPI Arguments at 5. But Unified does communicate with its members as to strategy on
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`an annual basis. Ex. 2009 at 109:24-111:2, 114:16-25, 110:10-15, 45:14-47:7. And even if
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`Unified did not communicate with its members about its strategy, its argument still fails because
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`RPX does not require communication of strategy. Applications in Internet Time, 897 F.3d at
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`1355. In fact, RPX had a policy of not communicating with its members about filing IPRs. Id.
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`The RPX court noted that RPX’s policy does not negate the fact that its acting on behalf of its
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`members for the members’ benefit. Id. at 1355. The court further noted that RPX’s policy might
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` 6
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`IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
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`even amount to willful blindness. Id. So, like RPX, Unified’s policy of not communicating
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`strategy with its members does nothing to negate the strong showing that Unified’s zone
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`members are real parties in interest.
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`Fall Line put forward a plethora of evidence in its preliminary response showing that
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`Unified has a pre-existing relationship with its members and that it files IPR petitions for their
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`benefit. Patent Owner’s Preliminary Response at 28-33. For example, Fall Line pointed to a
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`letter that Unified’s CEO submitted to the Patent Office in which he explained that “Unified was
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`created with the sole purpose of deterring NPE litigation by protecting technology sectors.
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`Companies in a technology sector subscribe to Unified’s technology specific deterrence, and in
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`turn, Unified performs many NPE-deterrent activities . . . .” Ex. 2001 at 1-5 (emphasis added).
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`Fall Line also submitted a post from Unified’s own website in which Unified explained
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`its business model:
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`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.
`
`* * *
`
`Unified Patents attacks the NPE business model one technology at a time. Its
`solution groups startups, small and medium-sized businesses, and large
`companies in protected technologies, called Micro-Pools, and then fiercely
`protects each Micro-Pool from NPE encroachment. Because companies only
`participate in (and pay for) those Micro-Pools they choose, Unified Patents
`tightly aligns its deterrent solution with its participating companies.
`
`***
`
`By partnering companies of all sizes, Micro-Pools can help make defensive
`collaboration much more effective by reducing the number of easy targets
`vulnerable to NPEs.
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`IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
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`Ex. 2002 at 1-3 (emphasis added).
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`
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`Fall Line also submitted a press release in which Unified Patents explained that its
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`“micro-pool” approach “introduces a cost-effective solution for companies to protect strategic
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`technologies from NPE encroachment . . . .” Ex. 2004 at 1-4 (emphasis added). In that press
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`release, Unified explained that “Unified’s unique solution partners startups, SMBs and large
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`companies and then proactively deters patent troll activity” and that “[b]y protecting a strategic
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`technology, Unified mitigates patent troll risk for its member’s most important products and
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`services.” Id. (emphasis added).
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`
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`Fall Line also submitted an article from the Wall Street Journal showing how others
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`understood Unified’s business model. Ex. 2005 at 1-4 (“Unified Patents Inc. plans to recruit
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`companies for a collective effort to deter patent lawsuits or legal threats against its members.”)
`
`(emphasis added).
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`In addition to this evidence that was submitted with its preliminary response, Fall Line
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`was permitted to depose Mr. Jakel when Unified chose to submit his declaration after the
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`hearing. Cross examination of Mr. Jakel established that Unified’s business model continues to
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`be filing IPRs for its members in return for their paying Unified their membership fees. Patent
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`Owner’s Observations Regarding Cross-Examination at 2-8.
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`Despite Unified’s careful efforts to avoid saying it, Mr. Jakel eventually admitted that
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`Unified is “hired to do deterrence work against MPE [sic: NPE] activity.” Ex. 2009 at 90:1-13
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`(emphasis added). Indeed, Mr. Jakel described specific contractual obligations it has to its
`
`members to perform deterrence work. Id. at 35:4-16, 64:14-65:7, 66:23-67:20. Mr. Jakel also
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` 8
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`IPR2018-00043
`U.S. PATENT 9,454,748
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`testified that Unified satisfies these contractual obligations to its members by filing IPRs. Id. at
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`35:17-37:4; 38:24-39:4. And Mr. Jakel explained that the fees it collects from members are used
`
`to pay for the IPRs, Unified’s greatest expense by far. Id. at 31:16-33:5, 26:1-27:22.
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`Mr. Jakel’s testimony also makes clear that Unified ensures that its members will benefit
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`in the particular areas of technology that are important to them. For example, Mr. Jakel
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`explained that the fees paid by members to join a particular zone are used to fund IPRs in
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`specific zones they select. Ex. 2009 at 188:21-189:5. Similarly, when Unified settles an IPR in
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`return for a patent license, “[m]embers do get licenses[.]” Ex. 2009 at 94:8-25, 100:12-101:13,
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`102:1-5, 105:24-106:11, 124:13-23.
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`Finally, Mr. Jakel’s testimony establishes that Unified in fact closely coordinates with its
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`members—it just does so on an annual basis rather than on an IPR-by-IPR basis. Each year,
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`Unified meets with its members to convince them that they should continue their membership for
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`another year. Unified provides them with detailed information about each individual IPR that
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`Unified filed, including exactly how much money Unified has expended on each IPR. Unified
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`then makes its pitch: if the member likes what Unified did last year, re-subscribe and Unified
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`will do it again. See Ex. 2009 at 45:14-47:7, 109:24-111:3, 112:1-11, 114:16-25.
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`Cross examination of Mr. Jakel plainly showed that Unified has a pre-existing contractual
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`relationship with its members, that Unified satisfies its contractual obligations to its members by
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`filing IPRs, that Unified allows its members to fund IPRs in specific zones they select, that
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`Unified settles IPRs and members get licenses when Unified settles, and that Unified coordinates
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`on an annual basis with its members. This is more than sufficient to establish that Unified—who
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`IPR2018-00043
`U.S. PATENT 9,454,748
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`indisputably has no interest of its own in filing IPR petitions—is not the real party in interest. In
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`any event, the Board never considered Fall Line’s evidence, nor did it consider Unified’s
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`responsive arguments. Instead, the Board erroneously ruled that the RPI issue had not even been
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`put in dispute because Fall Line did not identify a real party in interest by specific name.
`
`
`
`B.
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`Fall Line Did Not Waive Its Challenge To Unified’s Identification Of The
`Real Parties In Interest
`
`Fall Line did not waive its challenge to Unified’s identification of the real parties in
`
`interest because Fall Line raised the issue in its first paper – its preliminary response. In that
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`preliminary response, Fall Line submitted evidence showing that Unified should have also
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`identified its members as real parties in interest. Patent Owner Preliminary Response at 28-33;
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`Exs. 2002, 2003, 2004, 2005.
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`Fall Line challenged Unified’s identification of the real parties in interest again during
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`the oral hearing. Final Written Decision at 12. But, despite Fall Line having raised its real party
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`in interest challenge twice, the Board determined that Fall Line had waived the argument
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`because it did not raise it in the patent owner response. Id. at 13-14.
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`That was error. The Board’s own Scheduling Order stated that “arguments for
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`patentability not raised in the [patent owner] response will be deemed waived.” Scheduling
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`Order at 3. A challenge to the identification of real parties in interest is not an “argument for
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`patentability.” Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1373-74 (Fed. Cir. 2018) (en
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`banc). And neither Unified nor the Board have disagreed with that. So Fall Line was not
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`required to raise the challenge in its response. Raising it in the preliminary response and at the
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`hearing was enough.
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`IPR2018-00043
`U.S. PATENT 9,454,748
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`Fall Line did not waive its challenge to Unified’s identification of real parties in interest
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`for another reason—statutory requirements necessary to determine jurisdiction cannot be waived.
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`The requirement to identify real parties in interest is a statutory requirement necessary to
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`determine jurisdiction under 35 U.S.C § 315. Wi-Fi One, 878 F.3d at 1374 (§ 315 “sets limits
`
`on the Director’s statutory authority to institute”); accord Click-To-Call Techs., LP v. Ingenio,
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`Inc., YellowPages.com, LLC, 899 F.3d 1321, 1325 (Fed. Cir. 2018) (“Because the subject
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`petition was time-barred, the Board lacked jurisdiction to institute [inter partes review]
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`proceedings.”). And statutory jurisdiction cannot be waived. United States v. Cotton, 535 U.S.
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`625, 630 (2002) (“[S]ubject matter jurisdiction . . . can never be forfeited or waived.”); see
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`GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1311–12 (Fed. Cir. 2015) (rejecting an argument
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`that the bar against institution of a post-grant review under § 325(a)(1) had been waived). So,
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`even if Fall Line had not raised its challenge in its preliminary response and at the oral hearing, it
`
`still would not have waived the challenge.
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`C.
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`The Real Parties In Interest Issue Was Properly Raised
`
`The Board considered none of the RPI evidence put forward by Fall Line as laid out
`
`above. Instead, it determined that Fall Line did not put the RPI issue into dispute merely because
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`Fall Line did not identify a particular Unified member by name. Final Written Decision at 19-
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`20. According to Unified and the Board, the Federal Circuit’s decision in Worlds Inc. v. Bungie,
`
`Inc., 903 F.3d 1237 (Fed. Cir. 2018) requires an alleged real-party-in-interest to be specifically
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`identified by name before the RPI issue can even be taken up.
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`A properly appointed Director should reverse the Board’s erroneous application of
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`Worlds. In Worlds, the Board (apparently) applied the burden-shifting framework for
`
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` 11
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`IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
`
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`determining RPI issues as set forth in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
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`IPR2013-00453, Paper 88 (PTAB Jan. 6, 2015). Worlds, 903 F.3d at 1241-42. Under that
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`framework, the Board accepted, as a rebuttable presumption, the petitioner’s identification of the
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`real party in interest. The Federal Circuit held in Worlds that the Board was wrong to treat the
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`petitioner’s identification of the real party in interest as a presumption that must be rebutted. Id.
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`at 1241-42. Instead, the petitioner’s identification could only be accepted “unless and until
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`disputed by the patent owner.” Id. at 1242. In so concluding, the court noted “that a patent
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`owner must produce some evidence to support its argument that a particular third party should be
`
`named a real party in interest.” Id. That is all. In rejecting the Board’s rebuttable presumption
`
`standard, the Federal Circuit in no way held that an RPI challenge cannot even be heard unless
`
`the patent owner identifies—by specific name—the real party in interest. The ample evidence
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`put forward by Fall Line showing that Unified is acting on behalf of—and coordinating on an
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`annual basis with—its members is more than sufficient to show the existence of particular real
`
`parties in interest—Unified’s members—and to put the RPI issue into dispute.
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`D.
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`Rehearing is important given the Board’s failure to critically assess Unified
`Patents’ assertions regarding the RPI issue
`
`
`
`Rehearing is especially important because the Board failed to follow the Federal Circuit’s
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`decision in AIT not only in this case, but also in many others involving Unified. As one
`
`commentator noted, “despite the Federal Circuit’s expressed concerns that third-party
`
`challengers may be circumventing Congress’s policy for including estoppel provision in the IPR
`
`statute, the PTAB instituted numerous petitions over RPI challenges that arguably fell within the
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`scope of the concerns expressed in AIT.” Z. Silbersher, “The Federal Circuit cannot say who
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`constitutes a real-party-in-interest in an IPR” (May 20, 2020) (available at www.markman
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`
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` 12
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`IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
`
`
`advisors.com/blog/2020/5/20/the-federal-circuit-cannot-say-who-constitutes-a-real-party-in-
`
`interest-in-an-ipr). The Board has simply “brush[ed] aside the Federal Circuit’s admonishments
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`from its lengthy AIT decision.” Id. And the Board’s repeated decisions allowing Unified to file
`
`appeals in only its own name—despite clearly acting for the benefit of its members—has resulted
`
`in Unified becoming one of the most prolific filers of IPR petitions. See Unified Patents Press
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`Release, “200th PTAB Challenge Filed By Unified” (June 2, 2020) (available at
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`www.unifiedpatents.com/insights).
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`III. Because The Patent Office Cannot Provide The Rehearing Required Under Arthrex,
`The Final Written Decision Should Be Vacated And The IPR Should Be Dismissed
`
`
`
`The Arthrex decision found that Administrative Patent Judges were unconstitutionally
`
`appointed. The Supreme Court determined that this appointment may be corrected by the
`
`Director of the PTO being provided with the opportunity to review the APJs’ final written
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`decisions. Unfortunately, this remedy cannot be provided by the PTO because there is no
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`Director or Acting Director of the PTO.
`
`Mr. Hirshfeld has not been appointed and confirmed as required by the Appointments
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`Clause. Nor has he been appointed as Director of the PTO, or even as Acting Director.
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`Moreover, any rehearing by Mr. Hirshfeld cannot lawfully implement the Supreme Court’s
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`remedy of the Article II problem with unappointed APJs in view of the Federal Vacancies
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`Reform Act of 1998, which makes clear that Mr. Hirshfeld is not qualified to serve as Acting
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`Direcotr. See 5 U.S.C. § 3345; see also LM-M v. Cuccinelli, 442 F. Supp. 3d 1, 36 (D.D.C.
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`2020) (setting aside rules promulgated under a “functions and duties” interim officer who was
`
`not appointed by the President and confirmed by the Senate); Guedes v. Bureau of Alcohol,
`
`
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`IPR2018-00043
`U.S. PATENT 9,454,748
`______________________________________________________________________________
`
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`Tobacco, Firearms, 920 F.3d 1, 11 (D.C. Cir. 2019) (discussing requirements of the Federal
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`Vacancies Reform Act of 1998).
`
`Additionally, the PTO’s proposed procedures for implementing Arthrex must proceed
`
`through rulemaking because IPR proceedings, including this proceeding, are “formal
`
`adjudications” under the Administrative Procedure Act (“APA”). 35 U.S.C. § 314(a)(4); Dell
`
`Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016). The general rule is that procedural
`
`requ