UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, INC.
`Petitioner
`v.
`UNILOC LUXEMBOURG, S.A.
`Patent Owner
`
`IPR2018-00199
`PATENT 7,092,671
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`Unified v Uniloc
`IPR2018-00199
`Unified 1026
`
`

`

`IPR2018-00199
`U.S. Patent 7,092,671
`
`In response to the Final Written Decision entered May 31, 2019 (Paper 33)
`and pursuant to 37 CFR § 42.71(d), Patent Owner hereby respectfully request a
`rehearing and reconsideration by the Patent Trial and Appeal Board of its Final
`Written Decision.
`I.
`APPLICABLE STANDARDS
`“A party dissatisfied with a decision may file a request for rehearing, without
`prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request must
`specifically identify all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was previously addressed in a motion,
`an opposition, or a reply.” Id. The Board reviews a decision for an abuse of
`discretion. 37 C.F.R. §42.71(c).
`II.
`ARGUMENT
`
`A. The Board appears to have overlooked or misunderstood argument and
`evidence responsive to Petitioner’s incorrect claim construction
`The Board recognizes in its Final Written Decision that independent claim 9
`expressly distinguishes the following separate and distinct steps: “c) transferring the
`specific telephone number from the handheld computer system to the telephone
`using a wireless communication” (the “transferring” step) and “d) controlling the
`telephone using the handheld computer system to cause the telephone to dial the
`specific number” (the “controlling” step). Paper 33 at 12.1 The Board appears to have
`overlooked or misunderstood, however, Patent Owner’s explanation of why
`
`1 The other challenged independent claims recite analogous claim language.
`
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`Petitioner’s claim interpretation would render the “controlling” step superfluous.
`Indeed, the word “superfluous” does not appear in the Final Written Decision.
`As detailed in Patent Owner’s briefing, a plain reading of the claim language
`reveals that it is the claimed “controlling” that must “cause the telephone to dial the
`specific telephone number.” Paper 12 at 25. To be clear, the separately-claimed
`“transferring” of the telephone number does not provide the claimed control by the
`handheld computer. To conclude otherwise would impermissibly attribute a causal
`relationship to the “transferring” step that the claim language expressly attributes to
`the separate and distinct “controlling” step. Such an interpretation would
`impermissibly render the “controlling” step superfluous. Id. (citing Digital-Vending
`Services Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012)).
`The Board appears to have based its interpretation, in part, on the
`understanding that “the claim language does not reference ‘commands’ at all and
`does not preclude the same command from accomplishing the two distinct steps.”
`Paper 33 at 12. The determinative issue here is not whether the claim language
`expressly references these two separate and distinct steps in the context of respective
`commands. Rather, Patent Owner’s Response explained why the recitation of two
`separate and distinct “transferring” and “controlling” steps precludes reliance upon
`the mere transfer of a telephone number to provide the requisite control of the
`handheld computer that must “cause the telephone to dial the specific telephone
`number.” Paper 12 at 23-28.
`Keeping in mind that Petitioner has the burden of proof, Patent Owner could
`have simply relied on a plain reading of the claim language itself to rebut Petitioner’s
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`IPR2018-00199
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`erroneous claim construction. Nevertheless, as further support of its position, Patent
`Owner demonstrated how the remainder of the intrinsic evidence supported the
`construction that the recitation of two separate and distinct “transferring” and
`“controlling” steps precludes reliance upon the mere transfer of a telephone number
`to provide the requisite control that must “cause the telephone to dial the specific
`telephone number.” Id.
`The Board appears to have misunderstood the explanation for why cited
`intrinsic evidence supports Patent Owner’s position and refutes the construction
`applied in the Petition. First, the Board acknowledges the teaching in the ’671 patent
`that “[t]he wireless link 20 enables an application executing on PID 12 to access
`telephone 14, communicate the desired telephone number, and control telephone 14
`to dial the number.” Paper 33 at 12 (quoting Ex. 1001, 8:17-21). This passage
`confirms that merely communicating the desired telephone number does not itself
`provide the control to dial the number. Paper 12 at 25-26. Patent Owner further
`supported this interpretation with reference to another passage in the ’671 patent
`specification (describing the negotiation of a control protocol). Id. (citing Ex. 1001,
`9:7-21). This additional passage is not mentioned in the Final Written Decision.
`Second, the Board acknowledges the “prosecution history passage asserting
`that ‘the mere exchange of data as described in [a prior art reference] is separate and
`distinct from the claim limitation of one wireless station controlling another.’” Paper
`33 at 12 (quoting Ex. 1015, 8). This is not the only passage Patent Owner had cited
`from the prosecution history.
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`The Board opted to not address the addition statement in the prosecution
`history explaining how the ’671 patent teaches that “the phone number to be dialed
`is transferred before the receiving wireless telephone is controlled or instructed to
`dial the telephone number.” Paper 12 at 27 (quoting Ex. 1015, 8). The applicant
`further explained this requirement is made explicit by reciting the “data exchange
`and control elements as separate limitations” in the claims that ultimately issued. Id.
`The Board also appears to have overlooked a cited passage from the
`prosecution history distinguishing certain art as teaching away from the claimed
`“controlling” step. Paper 12 at 26-27 (citing Ex. 1015, 8-9). Specifically, the
`applicant successfully argued that the transmitting station in a cited reference cannot
`“unilaterally control a receiving wireless station” and “force” it to receive
`information and dial a telephone number accordingly. Id.
`As explained in Patent Owner’s Response, a holistic view of these example
`passages from the prosecution history confirm, consistent with the remainder of the
`intrinsic evidence, that there is a meaningful distinction between merely exchanging
`data (e.g., a telephone number) and the separate and distinct “controlling” claim
`language. The Board appears to have overlooked or misunderstood the intrinsic
`evidence cited in the briefing and Patent Owner’s positions addressing the same.
`
`B. The Board appears to have overlooked or misunderstood argument and
`evidence responsive to Petitioner’s erroneous Yun mapping
`In finding that Yun renders obvious the “transferring” and “controlling” steps,
`the Board appears to have overlooked or misunderstood certain positions presented
`in Patent Owner’s Response. Paper 12 at 29-33. Patent Owner explained why Yun’s
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`“dial request” is distinguishable from the claim language for the same reasons
`articulated during prosecution when successfully distinguishing certain art of record.
`During prosecution, “the applicant successfully argued certain art not only fails to
`disclose, but also teaches away from the ‘controlling’ claim language because that
`art discloses the transmitting station could not ‘force’ the receiving station to dial;
`and, instead, the receiving station applies its own process to unilaterally determine
`whether or not it will receive and act upon communications from the transmitting
`station.” Id. at 32-33 (citing Ex. 1015 at 8-9) (emphasis original).
`Patent Owner further explained that Yun is deficient and teaches away from
`the claim language for analogous reasons: “Yun similarly states the telephone can
`and will ignore a ‘dial request’ received from the electronic pocketbook while the
`telephone is not in an off-hook state; and the telephone itself unliterally applies its
`own process to determine and control whether it is in an off-hook state.” Id. The
`Board acknowledges this teaching of Yun in its Final Written Decision. See Paper
`33 at 17. The Board neglected, however, to address the fact that this teaching in Yun
`is analogous to what the patentee had unambiguously distinguished during
`prosecution as teaching away from the “controlling” claim language. Id. The Board’s
`finding that this cumulative teaching of Yun is “irrelevant” cannot be squared with
`the cited prosecution history that the Board appears to have overlooked. Id.
`
`C. The Board appears to have overlooked or misunderstood argument and
`evidence responsive to Petitioner’s erroneous Harris mapping
`Regarding Harris, the Board summarizes the argument it adopted as follows:
`“[f]or the transfer and control limitations, Petitioner relies on Harris’s disclosure that
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`when a user selects an icon, the telephone phone number information associated with
`that contact information is sent wirelessly to a telephone, which then automatically
`dials the number.” Paper 33 at 23 (citations omitted).2 For the reasons explained in
`Patent Owner’s Response (Paper 12 at 23-28), and summarized above (§II.A, supra),
`this mapping renders certain claim language superfluous and impermissibly
`attributes a causal relationship to the “transferring” step that the claim language
`expressly attributes to the separate and distinct “controlling” step. The Board appears
`to have misunderstood or overlooked at least this argument and evidence.
`
`D. The Board appears to have overlooked or misunderstood argument and
`evidence responsive to Petitioner’s erroneous combinations with Dykes
`The Final Written Decision does not address or even acknowledge Patent
`Owner’s argument that “for at least claim 9 and its challenged dependent claims,
`Petitioner has waived any reliance on a combination of Yun with Dykes.” Paper 12
`at 40. This independently warrants rehearing and reconsideration.
`Regarding the proposed combinations of Dykes with Harris, the Board’s Final
`Written Decision appears to have overlooked or misunderstood argument and
`evidence presented in Patent Owner’s Response concerning certain deficiencies. The
`Petition cites to Dykes’ description of a hardwired interconnection over an interface
`cable 20 to accommodate what Dykes describes as an admittedly-limited
`communication protocol. Paper 12 at 38 (citing Pet. 50-51). Dykes illustrates this in
`Figure 1B, copied and annotated below to emphasize the hardwired connection.
`
`2 The Board offered the same summary of the argument presented in the petition
`filed by Apple in IPR2018-00282. See IPR2018-00282, Paper 30 at 19-20 (citations
`omitted).
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`.10
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`Patent Owner’s Response explains why this disclosure in Dykes bears no
`
`resemblance to the claim language (e.g., “the handheld computer system is
`
`configured to control the telephone via the wireless communication such that the
`
`telephone dials the specific telephone number,” as recited in claim 1). Paper 12 at
`
`37—41. Patent Owner had further argued that “[t]he Petition offers no argument or
`
`evidence, for example, to prove precisely how Dykes’ SEND command (designed
`
`specifically for a hardwired landline communication) would somehow be
`
`compatible with, instead, the infrared communication protocol used in Yun or the
`
`Bluetooth protocol used in Harris.” Id. at 40 n.23. Accordingly, Dykes does not cure
`
`the identified deficiencies. Id-
`
`The Board’s Final Written Decision suggests that it is “immaterial” that Dykes
`
`relies on a hardwired interconnection and a protocol specifically designed for the
`
`same- Paper 33 at 26. This overlooks the points summarized above and the
`
`undisputed fact that neither Dykes nor Harris disclose the claimed wireless control
`
`that is separate and distinct from merely transferring a telephone number.
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`IPR2018-00199
`U.S. Patent 7,092,671
`E. The Board majority should reconsider its finding that Unified Patents
`met its burden to prove its petition names all real parties in interest
`The majority opinion appears to have overlooked certain facts and
`misunderstood controlling authority
`in finding Petitioner Unified Patents
`(“Unified”) has satisfied its burden of persuasion to establish that it accurately
`named itself as the sole real party in interest (“RPI”). See 35 U.S.C. § 312(a)(2);
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018)
`(“AIT”), cert. denied, 139 S. Ct. 1366 (2019); accord, Worlds Inc. v. Bungie, Inc.,
`903 F.3d 1237, 1246 (Fed. Cir. 2018) (“Worlds”).
`As the concurring opinion correctly pointed out, “[t]he AIT Court faulted the
`Board’s consideration of the evidence as ‘shallow’ and criticized the lack of
`meaningful examination of two particular factors that the Board has touted
`previously as relevant to the RPI inquiry: (1) the relationship between a petitioner
`and the alleged RPI, and (2) the nature of the petitioner as an entity. Paper 33 at 3 (J.
`Quinn, concurring) (citing AIT, 897 F.3d at 1351).
`In an undivided opinion, the Federal Circuit favorably cited AIT as standing
`for the proposition that the “expansive formulation” of RPI “demands a flexible
`approach that takes into account both equitable and practical considerations, with an
`eye toward determining whether the non-party is a clear beneficiary that has a
`preexisting, established relationship with the petitioner.” Worlds, 903 F.3d at 1246
`(quoting AIT, 897 F.3d at 1351).3 The Court further reiterated that a petitioner bears
`
`
`3 Worlds Inc. further explained that merely filing a petition does not give rise to a
`presumption that the petition complied with the requirement of 35 U.S.C. § 312(a)(2)
`to “identif[y] all real parties in interest”. Worlds Inc., 903 F.3d at 1243.
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`the ultimate burden of persuasion to show that its identification of real parties in
`interest is correct. Id. at 1242-43. The Court also stated “an IPR petitioner will
`usually be in a better position, at least relative to the patent owner, to access evidence
`relevant to the real-party-in-interest.” Id.
`Under the AIT analysis, a number of undisputed facts are particularly relevant
`here. It is undisputed that both Apple
` have a preexisting, established
`relationship with Unified based on Apple’s
`
`with Unified. Paper 12 at 4; see also Paper 33 at 3 (J. Quinn, concurring). It is also
`undisputed that Apple
`
`. Paper 33 at 3 (J. Quinn, concurring). While the majority opinion recognizes
`these facts, it appears to have misunderstood their significance; and the majority
`opinion did not consider these facts in view of other significant argument and
`evidence that is likewise not in dispute.
`First, as the concurring opinion correctly observed, “there is no discussion of
`the evidence that Patent Owner presented regarding the nature of Unified’s
`business.” Paper 33 at 3 (J. Quinn, concurring). Patent Owner had cited multiple
`party admissions taken directly from Unified’s public website advertising its
`services. The concurring opinion offered the following summary of evidence that
`the majority opinion overlooked:
`
`Unified markets itself as a subscription-based business, where
`entities join a “micro-pool” and in turn Unified “protects each
`Micro-Pool from [Non Practicing Entity (NPE)] encroachment
`by deterring NPEs from approaching a protected technology in
`the first place.” Ex. 2001. The offensive strategies to deter NPEs
`include reexamining patents in the protected technology that are
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`owned by NPEs. Id.; see also Ex. 2003. Because member
`companies only join the “micro-pools” that align with the
`companies’ interests, Unified claims that “[c]ompanies can be
`confident that their subscription fees are exclusively used to
`reduce the risk of NPEs targeting their key technologies.” Id.
`Unified’s deterrence approach includes other strategies, such as
`competing against NPEs to purchase or license patents that are
`sought by NPEs. Id. However, it is unquestionable that Unified
`seeks to either purchase or invalidate patents that are asserted
`against its members as an “effective and far less costly solution
`than litigating against NPEs.” Id.; see also Ex. 2002, 4 (“Unified
`uses each Zone’s subscription fees to monitor troll activity,
`investigate prior art, challenge troll-owned patents in the U.S.
`Patent and Trademark Office through ex-parte reexamination
`and inter partes review, and purchase patents before trolls can
`(but never to purchase patents from trolls).”).
`Paper 33 at 3-4 (J. Quinn, concurring). The nature of Unified as a business entity is
`a significant factor in the RPI inquiry and supports a finding that Unified failed to
`name all real parties in interest. AIT, 897 F.3d at 1351.
`Second, the majority opinion appears to have not adequately considered
`whether either Apple
` “is a clear beneficiary” under these
`circumstances. AIT, 897 F.3d at 1351; Worlds Inc., 903 F.3d at 1246. The analysis
`requires “prob[ing] the extent to which [either Apple
`]—as
`[Unified’s] client—has an interest in and will benefit from [Unified’s] actions, and
`inquire whether [Unified] can be said to be representing that interest after examining
`its relationship with [its client].” AIT, 897 F.3d at 1353.
`In addressing this dispositive consideration, the concurring opinion offered
`the following analysis that it found lacking in the majority opinion:
`
`[T]here is evidence in the record that Unified seeks to file inter
`partes reviews to benefit its members. For instance, I am
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`U.S. Patent 7,092,671
`particularly persuaded that Unified’s business specifically
`targets patents that have been asserted against its members. An
`official email from Unified to certain members reveals that
`Unified advertised when it filed the instant Petition for inter
`partes review. Ex. 2005, 44. In particular, the email noted that
`that
`
`Apple
` by Uniloc, “a well-known NPE responsible
`for filing 95 new patent litigations since January 2017.” Id. This
`email is evidence that Unified indeed expects to extract value
`directly for its members when filing inter partes review. The
`majority does not give any weight to this email communication,
`which I find particularly persuasive.
`Paper 33 at 4 (J. Quinn, concurring).
`The email cited by the Judge Quinn, together with the remainder of evidence
`advanced by Patent Owner, reveals that Unified’s members Apple
`
`expected to benefit from Unified filing petitions for inter partes reviews. Indeed,
`this expectation is memorialized in the contract language itself:
`
`
`
`
`
` Ex. 2005 at UP-006; see also id. at UP-023. As the
`email evidence confirms, this contractual expectation was realized when Unified
`filed the instant petition against the ’671 patent, in response to that patent being
`asserted against both paying clients of Unified.
`In view of the record evidence, including the evidence summarized above, the
`concurring opinion correctly concluded that “[b]y contractually engaging Unified
`for the purpose of litigating inter partes reviews of patents in the subscribed micro-
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`pool, . . . Apple and Unified are real parties in interest in this proceeding.” Paper 33
`at 6 (J. Quinn, concurring). The concurring opinion based its conclusion, in part, on
`the finding that “member companies, such as Apple
`, upon agreeing to
`be members in a particular zone, have expectations that Unified will file petitions
`for inter partes review of patents in those zones.” Id. at 5. The concurring opinion
`also observed that “Unified’s business and actions in the furtherance of the business
`is, at least in part, to file inter partes reviews of patents that Unified sees value in
`having invalidated” and that “members in the micro-pool involving those patents
`undoubtedly benefit, either directly or indirectly.” Id. at 6. Patent Owner submits the
`evidence and analysis set forth in the concurring opinion warrant reconsideration by
`the remainder of the Board.
`Third, the majority opinion appears to have overlooked argument and
`evidence supporting the finding of the concurring opinion that “Unified’s broader
`interest in providing members with freedom to operate in the micro-pools is designed
`to avoid a ‘real party in interest’ problem for its members.” Paper 33 at 4-5 (J. Quinn,
`concurring). Patent Owner’s Response pointed, for example, to multiple admissions
`from Unified’s publicly-available website, including the advertised fact that
`Unified’s business model is designed to “allow members to benefit from inter partes
`review of dubious patents without becoming the ‘real party-in-interest’ of the
`review.”4 Paper 12 at 9 (quoting Ex. 2002 at 5) (underlining original); see also Paper
`33 at 4-5 (J. Quinn, concurring) (quoting the same).
`
`
`4 Unified has since attempted to downplay this quoted party admission ostensibly
`
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` were not making charitable contributions
`To be clear, Apple
`when they paid respective membership fees to Unified (totaling
`).
`Rather, the record evidence at least shows: (1) Apple
` chose the
` for which they desired protection in the form of IPR filings;
`(2) they each paid sizeable sums proportional to the zones elected; (3) these paying
`clients each derived the specific and expected benefit of its respective bargain when
`Unified filed the instant Petition; (4) and Unified followed its repeated pattern of
`filing an inter partes review petition in response to, and within months of, Uniloc
`asserting a patent against paying clients of Unified.5
`The majority opinion suggests AIT is distinguishable on its facts and thus not
`applicable here. In doing so, the majority opinion appears to have overlooked, or
`unduly discounted, the astonishing overlap in facts considered relevant to the
`beneficiary analysis in AIT. Under AIT, at least the following factors, which are all
`present here, are relevant to the beneficiary analysis and weigh in favor of finding a
`sufficient beneficiary relationship exists. See, e.g., Paper 12 at 13-15.
`
`
`because its source is an article that Unified had merely posted to its website. But
`nothing in Unified’s website suggested this article contained false information. On
`the contrary, Unified adopted this information as being correct by overtly displaying
`the article and making its contents publicly accessible on web pages advertising and
`explaining Unified’s services.
`5 Accord Paper 33 at 5-6 (J. Quinn, concurring) (“There is no doubt in my mind that
`Unified carefully established its business structure and operations to avoid any
`activity that may indicate an RPI relationship. But Unified’s business and actions in
`the furtherance of the business is, at least in part, to file inter partes reviews of
`patents that Unified sees value in having invalidated. And members in the micro-
`pool involving those patents undoubtedly benefit, either directly or indirectly.”)
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`(1) Unified had a pre-existing contractual relationship with both Apple
`
` that pre-dated and continued through this IPR. Compare Paper
`12 at 14 with AIT, 897 F.3d at 1353 and 1364 (RPX had a pre-existing
`relationship with
`, the undisclosed real party in interest, which
`predated and continued through the IPR).
`(2) Unified is a for-profit company whose members (like Apple
`
`) pay fees for Unified’s patent risk solutions. Compare Paper 12
`at 6 with AIT, 897 F.3d at 1353 (“RPX . . . is a for-profit company whose
`clients pay for its portfolio of ‘patent risk solutions.’”)
`(3) Unified publicly advertised that the protection it provides to its members
`includes reducing the so-called “risk and cost of NPE litigation” through
`filing IPRs targeting the patents of those companies which Unified
`classifies as an NPE.6 Compare Paper 12 at 7 (citing Ex. 2001-2006) with
`AIT, 897 F.3d at 1352 (“a key reason clients pay RPX is to benefit from
`this practice [of RPX filing IPR petitions] in the event they are sued by an
`NPE”); see also id. at 1351 (“one of RPX’s publicly stated business
`solutions is to file IPRs where its clients have been sued by non-practicing
`entities to ‘reduce expenses for [its] clients[.]’”) and 1353 (“These [patent
`risk solutions] help paying members ‘extricate themselves from NPE
`lawsuits.’”).
`
`
`6 Unified uses the acronym “NPE” to refer to those companies that Unified deems
`to be non-practicing entities.
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`(4)
`
`It is undisputed that Apple
`
`
`, and that Apple
` are both significant clients of Unified Patents. Compare
`Paper 12 at 14 with AIT, 897 F.3d at 1353 (“RPX did not point to any
`other clients whom it believed might be at risk of infringement claims
`arising out of the patents on which the IPR was instituted.”).
`(5) Unified publicly advertised that it provides “complete alignment” with its
`member’s interests, as Unified’s very name suggests. Compare Paper 12
`at 13-14 (quoting EX2002) with AIT, 897 F.3d at 1357 (“RPX’s public
`statement that its ‘interests are 100% aligned with those of [its] clients’”
`is evidence of at least apparent authority to file IPR petitions to benefit
`those clients).
`(6) Unified publicly advertised that its business model is intended to “allow
`members to benefit from inter partes review . . . without becoming the
`‘real parties-in-interest’ in the review.” Compare Paper 12 at 1 (quoting
`EX2005) (emphasis added) with AIT, 897 F.3d at 1343, 1355 (RPX
`employed
`a
`strategy
`of
`“willful
`blindness”,
`“intentionally
`circumvent[ing]” the Board’s RPI case law by ascertaining its member’s
`desires while taking measures to avoid obtaining an express statement of
`such desires).
`(7) Unified publicly advertised that “[c]ompanies can be confident their
`subscription fees are exclusively used to reduce the risk of NPEs targeting
`their key technologies.” Compare Paper 27 at 8 (quoting EX2002) with
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`AIT, 897 F.3d at 1340 (“RPX ‘work[s] to ensure that each RPX client
`avoids more in legal costs and settlements each year than they pay RPX
`in subscription fees[.]’”); see also id. at 1351 and 1353 (quoted in
`parentheticals above).
`(8) Unified has a documented history of filing IPR petitions challenging only
`those patents Uniloc asserts against Unified’s members, while ignoring
`the remainder of Uniloc’s expansive patent portfolio. Compare Paper 12
`at 14-17 with AIT, 897 F.3d at 1364 (RPX had a “documented history” of
`filing IPR petitions against patents asserted against its paying members.)
`(9) Unified is not a competitor of either Apple
`. Compare Paper
`12 at 14 with AIT, 897 F.3d at 1363 (observing that RPX and Salesforce
`were not competitors.) Furthermore, Unified did not and could not put
`forth any evidence that it has ever challenged any patent of either Apple
` (because Unified has not).
`(10) Unified Patents licenses patents to its members, creating the beneficiary
`relationship of patentee and licensee. Compare Paper 12 at 18 with AIT,
`897 F.3d at 1362 (RPX’s business model involves licensing patents to
`their members).
`Borrowing from the wording in AIT, “these facts, which taken together, imply
`that [Unified] can and does file IPRs to serve its clients’ financial interests, and that
`a key reason clients pay [Unified] is to benefit from this practice in the event they
`are sued by an NPE.” AIT, 897 F.3d at 1352. Nothing in AIT suggests there must be
`a complete unity of all facts in order for the same holding to apply.
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`The majority opinion also states that “[t]he record also contains no evidence
`of client-specific or pre-filing communications between Petitioner and Apple
`
` regarding this proceeding or the preparation of the Petition filed in this
`proceeding.” The majority opinion also emphasizes that “Petitioner offers
`undisputed evidence that Unified alone directed, controlled, and funded this IPR,
`and that Unified did not communicate or coordinate with Apple
`
`regarding the challenged patent in this proceeding.”
`The analysis in the majority opinion appears to have misunderstood the
`“expansive formulation” of RPI set forth in AIT. To borrow from the instruction in
`AIT, a petitioner’s alleged business practice to not discuss specific IPRs with its
`clients “do[es] not bear on whether [Unified] files IPR petitions to benefit specific
`clients that previously have been accused of patent infringement.” AIT, 897 F.3d at
`1352 (emphasis original).
`In addition, the majority analysis implausibly dismisses as mere coincidence
`the striking similarity between the petitions filed by Uniloc and Apple within days
`of each other, each with its own expert declaration. It is highly unlikely that these
`two petitions were independently written, with similar doubled-up redundant
`grounds, which are presented in both petitions in the same order, and which apply
`virtually the same arguments to the same primary references. See, e.g., Paper 12 at
`9-10; Paper 31, p. 33 lines 6-13. The Board clearly recognized the overlapping nature
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`IPR2018-00199
`U.S. Patent 7,092,671
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`of these petitions by repeating verbatim in its final written decisions the same
`summary of certain arguments contained in both petitions.7
`Uniloc offered these facts as evidence that prior communication almost
`certainly occurred, including possibly between the experts. Indeed, the fact that
`Apple filed a strikingly similar petition within days of the instant petition filed by
`Unified only underscores the fact that Apple stood to possibly benefit from any
`argument and evidence Unified successfully raised in the instant Petition. This is
`precisely what happened. For example, the Board improperly imported an argument
`from the instant Petition concerning Yun’s “dial request” into the separate trial
`involving Apple’s petition, though Apple had not raised that specific argument in its
`own petition. See IPR2017-00282, Paper 11 at 13-14.
`For the forgoing reasons, Patent Owner respectfully requests that the Board
`grant a rehearing and reconsider the finding of the majority opinion concerning the
`issue of whether Unified satisfied the statutory requirement of naming all real parties
`in interest.
`
`II. CONCLUSION
`In view of the foregoing, Patent Owner respectfully requests that the Board
`grant a rehearing and reconsider its Final Written Decision.
`
`
`
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`
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`7 See, e.g., n.2, supra.
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`Date: June 27, 2019
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`
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`
`
`IPR2018-00199
`U.S. Patent 7,092,671
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
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`IPR2018-00199
`U.S. Patent 7,092,671
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing was served electronically on
`
`counsel of record for Petitioner.
`
`Date: June 27, 2019
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`
`
`
`
`Respectfully submitted,
`
`
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`i
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`