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`Filed: November 22, 2021
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`Case IPR2018-00044
`Patent No. 7,302,423 B2
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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 LLC,
`Petitioner
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`v.
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`VILOX TECHNOLOGIES, LLC,
`Patent Owner
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`PATENT OWNER’S REQUEST FOR DIRECTOR DE NOVO REVIEW
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`Filed: November 22, 2021
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`Case IPR2018-00044
`Patent No. 7,302,423 B2
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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 LLC,
`Petitioner
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`v.
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`VILOX TECHNOLOGIES, LLC,
`Patent Owner
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`PATENT OWNER’S REQUEST FOR DIRECTOR DE NOVO REVIEW
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`Case IPR2018-00044
`Patent No. 7,302,423
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`TABLE OF CONTENTS
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`BACKGROUND ........................................................................................... 1
`I.
`LEGAL STANDARDS ................................................................................. 3
`II.
`III. ARGUMENT ................................................................................................. 8
`A.
`The IPR Should Be Dismissed/FWD Vacated .................................... 8
`1.
`The Institution Decision Was Not Timely ................................ 8
`2.
`The Panel Failed to Follow Board Procedures and
`Applied Arbitrary and Capricious Standards in
`Rejecting Discovery as to Real Parties in Interest .................... 9
`Vilox Is Entitled to Additional Discovery with
`Respect to RPI ......................................................................... 11
`The Panel Did Not Follow Office Procedures and
`Precedent in Judging Claim Validity ...................................... 11
`IV. CONCLUSION ............................................................................................ 15
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`3.
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`4.
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`TABLE OF AUTHORITIES
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`Cases
`Cuozzo Speed Tech., LLC v. Lee,
`136 S.Ct. 2131 (2016) ...................................................................................... 5
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`Ex parte Golapan,
`Appeal 2017-007009, May 23, 2018
`Ex parte Schulhauser
`Appeal 2013-007847, April 28, 2016
`Free Enterprise Fund v. Public Company Accounting Oversight Bd.,
`561 U.S. 477 (2010)......................................................................................... 4
`Mobility Workx, LLC v. Unified Patents, LLC,
`2021 WL 4762265 (Fed. Cir. Oct. 13, 2021) .............................................. 1, 5
`Taylor v. Sturgell,
`533 U.S. 880 (2008); .................................................................................. 7, 10
`United States v. Arthrex, Inc.,
`141 S. Ct. 1970 (2021) ............................................................................. passim
`Worlds Inc. v. Bungie, Inc.,
`903 F.3d 1237 (Fed. Cir. 2018) ....................................................................... 6
`Statutes
`35 U.S.C. § 312(a)(2) ............................................................................................. 1, 6
`35 U.S.C. § 318(b) ..................................................................................................... 3
`37 C.F.R. § 42.11 ....................................................................................................... 6
`37 C.F.R. § 42.51(b)(1)(iii) ........................................................................................ 6
`Fed. R. Evid. 301 ....................................................................................................... 6
`Administrative Decisions
`Aerospace Commc’ns Holdings Co., Ltd. v. The Armor All/Step Prods. Co.,
`IPR2016-00441, Paper 12 at 10 ...................................................................... 9
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`I.M.L SLU v. WAG Acquisition, LLC,
`IPR2016-01658, 2018 WL 1128521 (PTAB Feb. 27, 2018) ......................... 6
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`Intel Corp. v. Hera Wireless S.A.,
`IPR2018-01543, 2019 WL 1224679 (PTAB March 14, 2019) ...................... 6
`Proppant Express Investments, LLC v. Oren Tech., LLC,
`IPR2017-01917, Paper 86 ............................................................................... 6
`RPX Corp. v. Applications in Internet Time, LLC,
`IPR2015-01750, Paper 128, -01751, Paper 128, -01752, Paper
`126 (PTAB Oct. 2, 2020) ................................................................................ 2
`Ventex Co., Ltd. v. Columbia Sportswear North America, Inc.,
`IPR2017-00651, 2019 WL 764130 (PTAB Jan. 24, 2019) ............................ 2
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`Per the Federal Circuit’s Oct. 22, 2021, Order in Appeal No. 2019-2057, Patent
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`Owner Vilox Technologies, LLC (“Vilox”) requests de novo rehearing by the
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`Director of the Board’s finding in its Final Written Decision (“FWD,” Paper 67).
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`Vilox respectfully requests that this IPR be dismissed because the Director failed to
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`comply with his Constitutional and statutory duties within the time frames required
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`by the AIA and/or because the IPR was not conducted in a manner consistent with
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`the Office’s procedures and binding precedent. Mobility Workx, LLC v. Unified
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`Patents, LLC, 2021 WL 4762265, at *8-*9 (Fed. Cir. Oct. 13, 2021). Further, Vilox
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`respectfully asserts that due process requires a de novo review by the Director of all
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`issues presented in the IPR, based on all evidence of record. See United States v.
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`Arthrex, Inc., 141 S. Ct. 1970, 1993 (2021) (Gorsuch J., dissenting).
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`Vilox requests the Director issue a certificate confirming validity of the
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`challenged claims. Alternatively, Vilox requests that the FWD be vacated. Finally,
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`Vilox should be allowed to take discovery regarding whether all real-parties-in-
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`interest (“RPI”) and privies were disclosed as required by 35 U.S.C. § 312(a)(2) and
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`should be allowed to present its evidence at a de novo hearing.
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`I.
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`BACKGROUND
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`Unified Patents Inc. (“Unified”), allegedly on its own initiative, filed a Petition
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`for Inter Partes Review on October 6, 2017 (Paper 1). An Institution Decision issued
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`on April 19, 2018 (Paper 9). However, the Director did not review the Institution
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`Decision. This failure of the Director to review the Institution Decision undeniably
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`was unconstitutional.
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`After institution, the Board issued RPX Corp. v. Applications in Internet Time,
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`LLC, e.g., IPR2015-01750, Paper 128, - 01751 (PTAB Oct 2, 2020). At
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`approximately the same time, Vilox came into possession of information bearing on
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`Unified’s duty to disclose all Real Parties in Interest (RPI). Accordingly, Vilox
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`notified the Panel of its desire for additional discovery related to RPI. In response,
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`Unified suggested voluntary discovery; Vilox, in good faith, agreed and submitted
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`discovery requests to Unified. Unfortunately, Unified slow-walked the response, and
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`the production was not responsive; in fact, Unified merely produced a canned set of
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`documents. However, Unified’s attorneys did not mark some documents as
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`confidential or in any way prohibit their distribution. This failure became a point of
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`contention during the subsequent Oral Hearing (See Record of Oral Hearing,
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`December 11, 2018, pages 48 – 50).
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`After institution, the Board designated as precedential the decision in Ventex
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`Co., Ltd. v. Columbia Sportswear North America, Inc., IPR2017-00651, 2019 WL
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`764130 (PTAB Jan. 24, 2019) regarding the assessment of disputed RPI and privity
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`issues. Vilox’s requested discovery was of the same scope as that permitted in Ventex.
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`On January 9, 2019, the Parties and the Panel discussed the discovery requests
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`and Patent Owner’s request for further discovery. See PTAB Conference Call
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`Transcript, January 9, 2019 (Paper 62). On February 6, 2019, the Panel denied all
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`further RPI discovery (Paper 64). Notably, Vilox was not allowed to depose a Unified
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`corporate representative on why Unified’s business development personnel were
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`contacting Vilox’s representative about a license to the Vilox patent portfolio.
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`On April 18, 2019, the Panel issued its FWD, Paper 67. However, as the Court
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`noted in Arthrex, “the Director cannot review that decision, it is appealable only to the
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`Federal Circuit … nor can the director grant a rehearing. Only the patent Trial and
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`Appeal Board may grant rehearings.” U.S. v. Arthrex, Inc., 141 S. Ct. 1970, 1998
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`(2021). Thus, issuance of the FWD in this IPR violated the Appointments Clause of
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`the U.S. Constitution in that the Director was prevented, under the AIA, from
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`supervising inferior officers (the APJs).
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`II. LEGAL STANDARDS
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`Statutory Obligations of the Director: The AIA requires the Director to take
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`various, specific actions. One such action is to review a Final Written Decision, when
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`requested to do so, after trial by a panel of APJs. 35 U.S.C. § 318(b). Another such
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`action is reviewing an Institution Decision. The Director’s statutory duties cannot be
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`delegated to APJs, who are inferior officers. Arthrex, Inc., 141 S. Ct. at 1987. Thus,
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`the U.S. Supreme Court recently found unconstitutional the AIA statutory provision
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`that precluded the Director from reviewing the APJ Final Written Decision or granting
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`a rehearing before issuing the certificate as required by statute. Id. Under Arthrex, a
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`scheme adopted by the Office that allows rehearing of statutorily mandated decisions
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`only by APJs
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`is unconstitutional because
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`it prevents
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`the Director from
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`reviewing/rehearing and reversing a final decision of inferior officers. Id. at 1986-87.
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`Maintaining the distinction between the Director’s acts and those of APJs is
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`critical. The power of officers to act in the name of the United States “acquires its
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`legitimacy and accountability to the public through ‘a clear and effective chain of
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`command’ down from the President, on whom all the people vote.” Id. at 1979
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`(quoting Free Enterprise Fund v. Public Company Accounting Oversight Bd., 561
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`U.S. 477, 498 (2010)). A scheme that allows the Director to “evade … responsibility
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`for the ultimate decision … blur[s] the lines of accountability demanded by the
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`Appointments Clause,” leaving the parties “with neither an impartial decision by a
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`panel of experts nor a transparent decision for which a politically accountable officer
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`must take responsibility.” Arthrex, 141 S. Ct. at 1981-82.
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`By statute, the Director also must determine whether to institute an IPR.
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`35U.S.C. § 314(b). That determination must be made within 3 months after receiving
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`the Patent Owner’s Preliminary Response. Id. The Director cannot simply take
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`direction from APJs regarding the institution decision without the right to review the
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`decision. Arthrex, 141 S. Ct. at 1987. The time limit for the institution is mandatory.
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`Id. Thus, if the Director fails to act in a manner that is consistent with the Constitution
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`and the express statutory requirements and that is within the required time, institution
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`is improper. Id.
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`Obligations of Consistency and Reliability: Director review is intended to
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`address, correct, and harmonize issues on which panel decisions are split, issues of
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`particular importance to the Office or patent community, or inconsistencies with office
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`procedures, guidance, or decisions. https://www.uspto.gov/patents/patent-trial-and-
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`appeal-board/pro-cedures/arthrex-qas. Such issues are to be reviewed de novo. Id. “The
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`procedure called ‘institution’ was established by the America Invents Act in response
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`to concerns that the proposed system of agency review would be subject to abuses such
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`as harassment, delay, and opportunistic attacks on valuable patents, for there is no
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`requirement of an Article III controversy for these agency proceedings, although the
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`statute provides for cancellation (or enforcement) of property rights.” Mobility Workx,
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`2021 WL 4762265, at *9 (Newman, J., dissenting in part). Prior to the enactment of
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`the AIA, “the patent bar expressed concern about the actual or perceived bias against
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`the patent owner because the [ALJs] are put in the position of defending their prior
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`decisions to institute the review.” Id., at *13. The Office therefore designates as
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`precedent binding on all IPR proceedings decisions concerning issues, such as those
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`related to institution, that are of exceptional importance. SOP 2 at 3-4. Adherence to
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`this binding precedent is crucial to avoid “shenanigans” that violate a patent owner’s
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`constitutional rights. Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131, 2141-42 (2016).
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`Statutory Obligations of Petitioners: It is a Petitioner’s statutory duty to
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`identify all RPIs/privies in an IPR proceeding. See 35 U.S.C. § 312(a)(2); Intel Corp.
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`v. Hera Wireless S.A., IPR2018-01543, 2019 WL 1224679 at *3 (PTAB March 14,
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`2019); I.M.L SLU v. WAG Acquisition, LLC, IPR2016-01658, 2018 WL 1128521 at *4
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`(PTAB Feb. 27, 2018). The presumption—if any—that Petitioner’s identification of
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`RPIs/privies is correct is weak and is quickly rebutted through evidence that reasonably
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`brings into question the accuracy of Petitioner’s identification of RPIs/privies. See
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`Proppant Express Investments, LLC v. Oren Tech., LLC, IPR2017-01917, Paper 86 at
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`4.
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`The burden of persuasion regarding compliance with § 312(a)(2) always
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`remains with Petitioner. I.M.L., 2018 WL 1128521 at *4; Worlds Inc. v. Bungie, Inc.,
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`903 F.3d 1237, 1242 (Fed. Cir. 2018); see also Fed. R. Evid. 301. The Petitioner must
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`“serve relevant information that is inconsistent with a position advanced by the
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`[petitioner] during the proceeding concurrent with the filing of the documents or
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`things that contain the inconsistency.” 37 C.F.R. § 42.11; 37 C.F.R. § 42.51(b)(1)(iii).
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`A challenge to Petitioner’s identification of RPIs/privies cannot be waived by lack of
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`timeliness, as compliance with § 312(a)(2) is the Petitioner’s statutory requirement,
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`not an affirmative defense to be asserted by the Patent Owner. Ventex, IPR2017-
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`00651, Paper 73 at 3, n. 2.
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`Rules Governing RPI/Privity: Who is an RPI is a “highly fact dependent
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`question” and an RPI relationship can exist based on numerous facts that must be
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`evaluated case-by-case. Ventex, IPR2017-00651, Paper 148 at 6. These types of facts
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`can include the length of the relationship between the parties; agreements between
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`the parties, particularly those that relate to the products accused of infringement; a
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`supplier/manufacturer relationship for the products accused of infringement; and
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`knowledge, involvement, or agency in suits based on the products accused of
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`infringement. Id. at 6-10. Direction and control are not necessary to establish an RPI
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`relationship. AIT, 897 F.3d at 1356.
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`Privity between two parties is a separate inquiry that can similarly be
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`established by many factors including: “(1) an agreement between the parties to be
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`bound; (2) pre-existing substantive legal relationships between the parties; (3)
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`adequate representation by the named party; (4) the non-party’s control of the prior
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`litigation; (5) where the non-party acts as a proxy for the named party to relitigate the
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`same issues; and (6) where special statutory schemes foreclose successive litigation
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`by the non-party (e.g., bankruptcy and probate).” Taylor v. Sturgell, 533 U.S. 880,
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`894-94 (2008); Ventex, IPR2016-00651, Paper 148 at 12.
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`III. ARGUMENT
`A. The IPR Should Be Dismissed/FWD Vacated
`1.
`The Institution Decision Was Not Timely
`The Institution Decision did not meet the requirements of the Appointments
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`Clause nor the statutory deadline for institution. The statue explicitly requires that the
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`Director make the institution decision within 3 months of the Preliminary Response,
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`paper 7, which in this IPR was filed on January 26, 2018. Here, the purported
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`institution decision was issued by inferior officers without review or the possibility
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`of review by the Director. See Paper 9. The politically accountable Director had no
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`recourse, in violation of Arthrex. Arthrex, 141 S. Ct. at 1987. Therefore, the Institution
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`Decision should be vacated as untimely and not in compliance with the plain language
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`of the statute.
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`Furthermore, Vilox was precluded from having a Director review of the IPR,
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`and/or a rehearing, by the unconstitutional provisions of the AIA and corresponding
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`Office practices. Vilox further contends that such a review cannot be perfunctory;
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`rather, the review must have addressed all issues raised in Vilox’s Response, Paper
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`26, July 9, 2018, and subsequent Replies and Sur-Replies.
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`2.
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`The Panel Failed to Follow Board Procedures and Applied
`Arbitrary and Capricious Standards in Rejecting Discovery as
`to Real Parties in Interest
`Petitioners “have no incentive to correctly name [RPI/privies] when their
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`failure to do so lacks consequence.” Aerospace Commc’ns Holdings Co., Ltd. v. The
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`Armor All/Step Prods. Co., IPR2016-00441, Paper 12 at 10. As discussed in the
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`January 9, 2019 PTAB Conference Call (Paper 62), actions taken by Vilox on the
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`patent-at-issue here may have led certain parties to have an interest in invalidating the
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`patent through the present IPR. See Ventex, IPR2017- 00651, Paper 148 at 9.
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`Specifically:
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`• Salesforce had an interest in invalidating Vilox patents;
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`• Salesforce has an agreement with Unified regarding support for IPRs;
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`• After an initial meeting between Salesforce and Vilox, Unified personnel
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`sent numerous emails to Vilox attorneys asking that Unified “take a license”
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`to the Vilox patent portfolio;
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`• After filing the Petition, Unified attempted to persuade Vilox to “provide a
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`license”;
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`• Unified’s own attorney did not deny the gist of the September 2018
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`conversation with an attorney for IP Valuation, Vilox’s representative
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`regarding licensing of its patents at that time but denies any knowledge of
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`email communications between Unified and Vilox’s attorneys. See PTAB
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`Conference Call Transcript, Paper 62, pages 20 – 22;
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`• Unified failed to produce relevant documents during the limited discovery
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`accorded Vilox; instead, Unified merely provided its standard, off the shelf,
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`discovery package. This package did not identify relevant prior email
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`communications and was non-responsive in other respects. Furthermore,
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`two of the produced documents were not marked as confidential, and both
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`of the non-marked documents clearly disclosed activities that Unified
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`engages in with its clients;
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`• The upshot – Vilox has provided sufficient documentary evidence of this
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`situation to warrant a finding that Unified failed to disclose RPIs and privies
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`as it was statutorily required to do.
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`IPRs have been dismissed on similar facts after a critical examination of the
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`RPI’s business model. See, e.g., Ventex, IPR2017-00651, Paper 148 at 7-9; AIT,
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`IPR2015-01750, Paper 128. These same facts also establish a privity relationship
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`between Unified and Salesforce. Taylor v. Sturgell. 533 U.S. 880, 894-94 (2008);
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`Ventex, IPR2016-00651, Paper 148 at 12.
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`Thus, under the Board’s binding precedent, Vilox has presented evidence that
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`Unified has not correctly identified all RPIs/privies.
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`3.
`Vilox Is Entitled to Additional Discovery with Respect to RPI
`In the event the Director does not dismiss this IPR entirely, the FWD should
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`be vacated and Vilox entitled to pursue additional RPI/privity discovery from Unified.
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`Other panels authorized similar requests in other IPRs where the disclosure of real-
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`parties-in-interest and privies was challenged. See Ventex, IPR2017-00651, -00789,
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`2018 WL 4040007, at *1 (PTAB Aug. 22, 2018); Ventex. The Panel’s reasoning for
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`denying Vilox’s requested discovery cannot be reconciled with decisions in other
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`cases. Thus, at a minimum the FWD should be vacated until Vilox has received the
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`discovery to which it is entitled.
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`4.
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`The Panel Did Not Follow Office Procedures and Precedent in
`Judging Claim Validity
`Ex parte Schulhauser/Ex parte Gopalan: In the FWD, the Panel began by
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`ignoring Gopalan because Gopalan is non-precedential and then asserting that
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`Gopalan “was decided on other facts.” While Gopalan may be non-precedential, it is
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`not the case that Gopalan is irrelevant; in fact, the opposite is true, and the Panel acted
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`in an arbitrary and capricious manner by ignoring Gopalan. Furthermore, the Panel’s
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`comment about “decided on other facts” is not correct. In the FWD, Vilox clearly
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`explained the differences between Schulhauser and Gopalan and their applicability to
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`the challenged claims. The Panel chose to ignore this explanation, chalking it up to
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`“attorney argument.” Id., 21. Yet, the Panel admits that claim 3 is “directed to
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`displaying data” and “formatting data for display.” Id., 41. Based on that finding,
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`Vilox illustrated that blind application of Schulhauser, and the concomitant summary
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`dismissal of Gopalan would result in claim 3 reciting no limitations relevant to the
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`very purpose of the claimed invention — “formatting data for display.” The alteration
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`of claim 3 under the Panel’s logic rendered claim 3 essentially meaningless because
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`all the steps for formatting data and for displaying data were eliminated by the Panel’s
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`application of Schulhauser and dismissal of Gopalan. This can be viewed only as
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`arbitrary and capricious.
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`Bertram’s Supposed disclosure of “Counting Characters” and Corresponding
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`Summary Dismissal of Patent Owner’s Expert Opinion: The second and third
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`arbitrary and capricious actions by the Panel dovetail with the first arbitrary and
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`capricious action noted above in the sense that the Panel stated that analysis under
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`Gopalan was unnecessary because Bertram discloses “counting characters.” FWD at
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`32 - 34. That is clearly not so. Bertram merely notes that in one entry in one table in
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`one Figure, five (5) characters are shown. There is no explicit disclosure in Bertram
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`for counting characters, but there is explicit disclosure for determining column width.
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`Determining column width does not necessarily nor inherently require counting
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`characters, and Petitioner did not so assert. Rather, Petitioner’s assertion as to Bertram
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`was that it discloses counting characters merely because the numeral 5 appears in one
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`paragraph to describe the content of one entry of one column of one table in one
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`Figure. Respectfully, the Panel’s conclusion as to “counting characters” based on this
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`vague disclosure was arbitrary and capricious.
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`The Panel also stated it would give no weight to Dr. Chu’s expert testimony as
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`to Bertram because Dr. Chu supposedly gave no factual basis for his opinions
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`regarding “counting the number of characters in an entry.” Vilox respectfully
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`disagrees with this decision to ignore Dr. Chu’s testimony. This is what Dr. Chu states
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`in paragraph 55 of his Declaration, Ex 2001:
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`A PHOSITA would further understand that determining a number of
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`characters [in an entry] does not mean determining a type of character;
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`that is, determining a number of characters does not mean determining if
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`a character is a capital letter or a lower-case letter, a “W” as opposed to
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`an “I,” an integer as opposed to a letter, etc. A PHOSITA would have
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`understood that an entry containing seven capital letters “W” would be
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`much wider than an entry containing seven capital letters “I”. For this
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`reason alone, a PHOSITA would have understood that determining the
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`width of a column [which is what Bertram explicitly discloses] by
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`determining a number of characters in an entry [which Bertram nowhere
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`explicitly or inherently discloses] may produce very inaccurate results,
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`and that more accurate measures likely would be intended and used to
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`determine column width, particularly where a reference [i.e., Bertram]
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`fails to disclose an explicit method for determining column width.
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`The substance of this factually-based analysis by Dr. Chu was presented to the Panel
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`during Oral Hearing (Transcript, Paper 63, p. 38, ll. 11 – 20). But the Panel ignored
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`this clear basis for explaining why exactly it is that Bertram does not “count
`
`characters” or “determine a number of characters.”
`
`
`
`The Panel also stated “[w]e also find that Dr. Chu’s testimony is entitled to little
`
`or no weight because Dr. Chu does not provide a factual basis for his conclusions.”
`
`FWD, 33. AND, “We find that Dr. Chu’s declaration testimony is entitled to little or
`
`no weight … as it is inconsistent with the combined teachings of Maloney and
`
`Bertram ….” FWD, 40. According to the Panel, what Maloney and Bertram allegedly
`
`teach are the sole province of Petitioner’s expert, Philip Greenspun. Thus, the Panel
`
`then stated “We credit Dr. Greenspun’s testimony, as it is consistent with …
`
`Bertram’s teachings …” [and] “Dr. Greenspun’s declaration testimony comports with
`
`the express description in Bertram …” FWD 38.
`
`
`
`
`
`
`
`
`
`
`
`14
`
`
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`
`IV. CONCLUSION
`The Director should vacate the FWD, issue a certificate confirming the
`
`challenged claims as valid, or, alternatively allow Vilox discovery regarding the
`
`RPI/privity issues.
`
`Dated: November 22, 2021
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/John K. Harrop/
`John K. Harrop
`Reg. No. 41,817
`
`Counsel for Patent Owner
`Vilox Technologies, LLC
`
`15
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`
`Certificate of Service
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the date
`
`indicated below, a complete and entire copy of this submission was provided by email
`
`to Petitioner’s counsel via email, as agreed to by Petitioner’s Service Information in
`
`the Petition submission, by serving the email address of record as follows:
`
`Counsel for Unified Patents LLC:
`David.odell.ipr@haynesboone.com
`
`David.mccombs.ipr@haynesboone.com
`
`Thomas.kelton.ipr@haynesboone.com
`
`Scott.cunning.ipr@haynesboone.com
`
`jonathan@unifiedpatents.com
`
`roshan@unifiedpatents.com
`
`russ.emerson@haynesboone.com
`
`
`
`
`
`
`
`Dated: November 22, 2021
`
`/John K. Harrop/
`John K. Harrop
`Reg. No. 41,817
`
`
`
`Counsel for Patent Owner
`Vilox Technologies, LLC
`
`xv
`
`
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