UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.1
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`Patent Owner
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`IPR2018-00199
`PATENT 7,092,671
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.1
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`Patent Owner
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`
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`IPR2018-00199
`PATENT 7,092,671
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Table of Contents
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`
`I.
`II.
`
`III.
`IV.
`V.
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`2.
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`3.
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`4.
`5.
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`INTRODUCTION .................................................................................... 1
`PETITIONER FAILED TO NAME AND REFUSES TO
`NAME ALL REAL PARTIES IN INTEREST ........................................ 1
`A. Burden of proof lies with Petitioner who has no benefit of
`a presumption ...................................................................................... 2
`B. Federal Circuit precedential analysis in RPX applies here ................. 4
`1.
`Apple and Samsung each has a preexisting,
`established relationship with Unified ................................... 4
`Apple and Samsung are each clear beneficiaries
`of the Petition ....................................................................... 6
`Unified acted as a proxy for its clients Apple and
`Samsung ............................................................................. 13
`Unified has a history of acting as a proxy .......................... 15
`Unified has substantial legal relationships with
`Apple and Samsung ............................................................ 17
`The membership agreement language provides no
`magical safe harbor ............................................................ 19
`THE ’671 PATENT ................................................................................ 20
`LEVEL OF ORDINARY SKILL IN THE ART .................................... 22
`PETITIONER DOES NOT PROVE OBVIOSNESS OF ANY
`CHALLENGED CLAIM ........................................................................ 22
`A. Claim construction of the “controlling” limitations ......................... 23
`B. No Proof of obviousness of the “controlling” claim
`language ............................................................................................ 28
`1.
`Yun’s “electronic pocketbook” fails to disclose,
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`6.
`
`ii
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`
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`VI.
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`VII.
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`
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`2.
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`IPR2018-00199
`U.S. Patent 7,092,671
`and teaches away from, the “controlling”
`limitations ........................................................................... 29
`Harris’ disclosure of a “PDA” transmitting a
`phone number does not render obvious the
`“controlling” claim language ............................................. 34
`Dykes does not cure the deficiencies of either
`Yun or Harris concerning the “controlling” claim
`language .............................................................................. 37
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 41
`CONCLUSION ....................................................................................... 42
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`3.
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`
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`iii
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`IPR2018-00199
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`US. Patent 7,092,671
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`TABLE OF EXHIBITS
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`Exhibit No.
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`2001
`
`Screenshot of the home page for Unified Patents, Inc. for the
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`date, April 13, 2013, as retrieved from the Internet Archive’s
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`Wayback Machine (WBM), available at
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`https://web.archive.org/web/20130413073000/http://Www.
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`unifiedpatents-com:80/solution/unified_patents.html.
`
`An article by Marta Belcher and John Casey entitled Hacking
`
`the Patent System: A Guide to Alternative Patent Licensing for
`
`Innovators. Juelsgaard Intellectual Property & Innovation
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`Clinic, Stanford Law School (2014), as archived by the Internet
`
`Archive’s Wayback Machine (WBM), available at
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`https://web-archive.org/web/20140905000728/httpzl/unifiedpate
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`nts.com:80/wp—content/uploads/2014/06/hacking_the_patent_sy
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`stempdf.
`
`
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`
`Screenshot of Unified Patents’ public webpage entitled Benefits
`
`for Large Company Members, as archived by the WBM,
`
`available at
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`https://web.archive.org/web/20l30907064849/http://www.unifie
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`dpatentscom:80/benefits/large_companies.html.
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`Screenshot of Unified Patents’ public webpage entitled
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`Compare Unified Patents to Other Options, as archived by the
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`WBM, available at
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`https://web.archive.org/web/20140606010956/http://unifiedpate
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`nts.com:80/.
`
`A collection of documents produced and Bates Labeled by
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`Petitioner Unified Patents
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`2006
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`Declaration of Brett A. Mangrum
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`iv
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`IPR2018-00199
`U.S. Patent 7,092,671
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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Response to Petition IPR2018-00199 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 7,092,671 (“the ’671 patent” or “EX1001”) filed by
`Unified Patents (“Unified” or “Petitioner”). The instant Petition is procedurally and
`substantively defective for at least the reasons set forth herein.
`
`II.
`
`PETITIONER FAILED TO NAME AND REFUSES TO NAME ALL
`REAL PARTIES IN INTEREST
`The Petition should be denied as procedurally deficient because Unified, a
`non-practicing entity, failed to name (and has refused to name) all privies and real
`parties in interest. Since its formation in 2012, Unified has received substantial funds
`from its subscribing clients to mount inter partes review (“IPR”) challenges in
`instances where those clients have been sued for patent infringement. This
`questionable business model is intended to “allow members to benefit from inter
`partes review of dubious patents without becoming the ‘real parties-in-interest’ in
`the review.”1 Hiding behind their proxy Unified, these fee-paying clients can then
`seek to avoid the estoppel provisions of 35 U.S.C. § 315, in contravention of the
`express intent of Congress.
`
`
`
` 1
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` EX2005, Marta Belcher and John Casey, Hacking the Patent System: A Guide to
`Alternative Patent Licensing for Innovators, Juelsgaard Intellectual Property &
`Innovation Clinic, Stanford Law School (2014), as archived by the WBM,
`available at https://web.archive.org/web/20140905000728/http://unifiedpatents
`.com:80/wp−content/uploads/2014/06/hacking_the_patent_system.pdf.
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`1
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`IPR2018-00199
`U.S. Patent 7,092,671
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`The nature of Unified as an entity, and its contractual relationships with its
`clients Apple Inc. (“Apple”) and Samsung Electronics America, Inc. et. al
`(“Samsung”), reveal that (1) Apple and Samsung each should have been named as a
`real party in interest and (2) Unified acted as proxy for Apple and Samsung in filing
`the instant Petition. See Applications in Internet Time, LLC v. RPX Corp. (“RPX”),
`897 F.3d 1336, 1351 (Fed. Cir. 2018) (“Determining whether a non-party is a ‘real
`party in interest’ 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.”).
`
`A. Burden of proof lies with Petitioner who has no benefit of a
`presumption
`Parties filing an IPR petition must identify all the privies and real parties in
`interest. 35 U.S.C. § 312(a)(2);2 37 C.F.R. § 42.8(b)(1). Citing § 312(a)(2), the Board
`has placed the burden of identifying all privies and real parties in interest on the
`petitioner.3 Among other purposes, this requirement assists “members of the Board
`
`
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` 2
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` While Section 312(a)(2) is akin to a pleading requirement that, under certain
`circumstances, may be corrected, the Petitioner here has refused to do so. Unified’s
`refusal to correct this defect taints the Petition as failing to comply with the statute.
`Furthermore, Unified should not be allowed to lie behind the log and wait until it
`can make a best guess as to the expected outcome here, much less wait until after a
`final decision has been reached.
`3 See, e.g., Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., No. IPR2013-
`00453, slip op. at 6–8 (P.T.A.B. Jan. 6, 2015), Paper No. 88 (“[T]he burden remains
`
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`2
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`IPR2018-00199
`U.S. Patent 7,092,671
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`in identifying potential conflicts” and assures “proper application of the statutory
`estoppel provisions.” Trial Practice Guide, 77 F.R. 48759 (Aug. 14, 2012). The latter
`reason “seeks to protect patent owners from harassment via successive petitions by
`the same or related parties, to prevent parties from having a ‘second bite at the
`apple,’ and to protect the integrity of both the USPTO and Federal Courts by assuring
`that all issues are promptly raised and vetted.” Id. (emphasis added).
`The Federal Circuit recently held that there is no presumption that an IPR
`petitioner identified all real parties in interest—especially a presumption that would
`disfavor the party that likely has inferior access to potential sources of proof. Worlds
`Inc. v. Bungie, Inc., No. 2017-1481, __ F.3d. __, 2018 WL 4262564, at *3 (Fed. Cir.
`Sept. 7, 2018). The Federal Circuit further disagreed with the Board’s practice of
`creating a presumption by its acceptance of a petitioner’s initial identification of the
`real parties in interest that shifts the burden of production to the patent owner. Id.
`The Federal Circuit did agree, however, that in order to put the issue into dispute “a
`patent owner must produce some evidence that tends to show that a particular third
`party should be named a real party in interest.” Id. (emphasis original).
`Patent Owner clearly offers in this Response more than enough evidence to
`sufficiently put this issue into dispute; and while Unified has the burden of proof,
`the record evidence is sufficient to show that, at a minimum, Apple and Samsung
`
`
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`with the petitioner to establish that it has complied with the statutory requirement to
`identify all the real parties in interest.” (emphasis added)); see also RPX, 897 F.3d
`at 1351 (citing the same).
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`3
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`IPR2018-00199
`U.S. Patent 7,092,671
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`each should have been named as a real party in interest.
`
`B.
`Federal Circuit precedential analysis in RPX applies here
`The Federal Circuit recently provided precedential instruction in RPX on the
`“expansive” meanings of “real party in interest” and “privy,” as used in the AIA
`statutes. 897 F.3d at 1351. The Court held the inquiry “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.” Id.; see also id. at 1353 (“The point is . . . to probe the extent to which
`Salesforce—as RPX’s client—has an interest in and will benefit from RPX's
`actions.”). The present facts are sufficiently analogous to those emphasized by the
`Court in addressing this inquiry to reach the same conclusion here.
`
`1. Apple and Samsung each has a preexisting, established
`relationship with Unified
`It is undisputed that Apple and Samsung each “has a preexisting, established
`relationship with the petitioner” Unified. RPX, 897 F.3d at 1351. Unified and Apple
`entered into a membership agreement as early as
`. See EX2005 at UP-
`02‒UP-19.5 The record evidence further reveals Unified and Apple
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` 5
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` Uniloc’s Exhibit 2005 (“EX2005”) is a collection of documents produced and
`Bates labeled by Unified in this matter. Petitioner alleges that these documents
`contain its confidential information. No protective order has been filed in this matter.
`Patent Owner’s lead counsel, Brett Mangrum, signed only an acknowledgement of
`the PTAB’s default protective order. Brett Mangrum is the only counsel of record to
`have done so; and he has fully complied with the default protective order terms.
`
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`4
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`IPR2018-00199
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`US. Patent 7,092,671
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`
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`—. EX2005 at UP—00048. Unified and Samsung
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`entered into a membership agreement as early as_ Id. at UP-20—
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`UP-35.
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`-. Id. at UP-49—UP-50.
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`The following pending proceedings concern the ’671 patent:
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`
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`Case Caption
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`Case
`Number
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`Forum
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`Case Filed
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`Uni/0c USA, Inc. et a]. v.
`Apple Inc.
`Uniloc USA, Inc. et a]. v.
`Samsun;
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`May 26, 2017
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`Aug. 1, 2017
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`
`
`Petition for Inter Partes
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`December 6,—---
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`IPR2018—
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`PTAB
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`December 11,
`PTAB
`IPR2018-
`Petition for Inter Partes
`
`
`Review by Apple Inc. 2017 00199
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`However, on September 11, 2018, Petitioner’s counsel waived the alleged
`confidentiality of all Petitioner’s produced documents by twice voluntarily sending
`the entire production (77 pages in total) not only to Brett Mangrum, but also to those
`who have not signed an acknowledgment of the default protective order, including
`in-house counsel for Uniloc and counsel who is not of record. Notably, the default
`protective order has no claw-back provision; and, in any event, Petitioner has made
`no attempt to claw back its September 11 productions. While it is Patent Owner’s
`position that Unified has waived confidentiality, Patent Owner presently files
`EX2005 under seal because the Board has not yet had the opportunity to address the
`waiver issue.
`5 The Yun patent is assigned to Samsung (a paying client of Unified), as indicated
`in the USPTO Assignment database at Reel/Frame 008911/0743.
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`5
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`IPR2018-00199
`U.S. Patent 7,092,671
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`As shown in the table above, Uniloc first asserted the ’671 patent against
`Apple in a lawsuit filed May 26, 2017. See, e.g., Uniloc USA, Inc. et al v. Apple, Inc.
`2:17-cv-00457 (filed in TXED). On December 6, 2017, Apple filed an inter partes
`review petition challenging the ’671 patent. Within days of that filing, Unified filed
`the instant inter partes review Petition (IPR2018-00199) against the ’671 patent,
`asserting the same primary references, in the same order, and in presenting virtually
`identical redundant arguments.
`As was the case in RPX, these undisputed facts irrefutably confirm that Apple
`and Samsung each has “a preexisting, established relationship with the petitioner”
`that predates and continued through the filing of the instant Petition.
`
`2. Apple and Samsung are each clear beneficiaries of the Petition
`The record evidence further reveals that, not only did Apple and Samsung
`each have a preexisting, established relationship with Unified, each non-party is “a
`clear beneficiary” of the instant Petition and “has an interest in and will benefit from
`[Unified’s] actions.” RPX, 897 F.3d at 1351; 1353.
`In RPX, the Federal Circuit identified certain factors as being relevant to the
`analysis of whether a non-party is a clear beneficiary. The evidence revealed that
`RPX, unlike a traditional trade association, is a for-profit company whose clients
`pay for its portfolio of patent risk solutions. Id. Those solutions help paying members
`mitigate the risk of what RPX refers to as non-practicing-entity or “NPE” lawsuits.
`Id. The evidence showed that RPX strategized to transform the patent market by its
`facilitation of challenges to patent validity, one intent of which is to reduce expenses
`for RPX’s clients. Id. The Court repeatedly emphasized (in both the majority and
`
`6
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`IPR2018-00199
`U.S. Patent 7,092,671
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`concurring opinions) the fact that RPX has advertised that its “interests are 100%
`aligned with those of [its] clients.” See, e.g., id. at 1340, 43, 57, 62, and 64.
`Those factors are equally applicable here. Unified is a for-profit company
`whose clients pay annual subscription fees to join “Micro-Pools” or “Zones” that
`each protect a respective technology area. The advertised protection includes, for
`example, reducing the so-called “risk and cost of NPE litigation” by monitoring such
`litigation activity against subscribing clients and challenging before the USPTO the
`validity of those patents asserted in the protected technology areas. See, e.g.,
`EX2001−EX2006.
`Further, in promoting its own services via its public-facing website, Unified
`described its “collaborative deterrence approach” (in part) as follows: “[b]ecause
`Unified Patents offers its Micro-Pool solution on a technology-by-technology basis,
`companies can subscribe to and pay for only those Micro-Pools they need. This
`structure provides complete alignment between Unified Patents and its member
`companies. Companies can be confident that their subscription fees are exclusively
`used to reduce the risk of NPEs targeting their key technologies.”5,6
`
`
`
` 5
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` EX2001 (emphasis added), Screenshot of Unified’s public webpage entitled
`Unified Patents’ Collaborative Deterrence Approach, as archived by the Internet
`Archive’s Wayback Machine (WBM), available at https://web.archive.org/web/
`20130413073000/http://www.unifiedpatents.com:80/solution/unified_patents.html;
`see also EX2006.
`6 Unified considers Uniloc a non-practicing entity (“NPE”). See, e.g., EX2005 at
`UP-44; see also RPX, 897 F.3d at 1353 (finding it relevant to the analysis that “RPX
`
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`7
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`IPR2018-00199
`U.S. Patent 7,092,671
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`In addition, in advertising its services to large companies in particular, such
`as Apple and Samsung, Unified again claimed to have “complete business alignment
`between Unified patents and its Micro-Pool members.”7 As noted above, both the
`majority and concurring opinions in RPX repeatedly emphasized the fact that RPX
`similarly advertised its “interests are 100% aligned with those of [its] clients.” See,
`e.g., RPX, 897 F.3d at 1340, 43, 57, 62, and 64.
`Unified also prominently featured on its website8 an article entitled “Hacking
`the Patent System: Alternative Patent Licensing for Innovators,” which further
`establishes that Unified and RPX provided comparable services to subscribing
`clients.9 Among other similarities, the article identifies Unified and RPX as both as
`providing the service of “challeng[ing] patents in inter partes review.” EX2002 at
`
`
`
`considered AIT a non-practicing entity.”).
`7 EX2003 (emphasis added), Screenshot of Unified’s public webpage entitled
`Benefits for Large Company Members, as archived by the WBM, available at
`https://web.archive.org/web/20130907064849/http://www.unifiedpatents.com:80/b
`enefits/large_companies.html (emphasis added); see also EX2006.
`8 See, e.g., EX2004, Screenshot of Unified’s public webpage entitled Compare
`Unified Patents to Other Options, as archived by the WBM, available at
`https://web.archive.org/web/20140606010956/http://unifiedpatents.com:80/;
`see
`also EX2006.
`9 See EX2002, which is an article by Marta Belcher and John Casey entitled Hacking
`the Patent System: A Guide to Alternative Patent Licensing for Innovators.
`Juelsgaard Intellectual Property & Innovation Clinic, Stanford Law School (2014),
`as archived by the Internet Archive’s Wayback Machine (WBM), available at
`https://web.archive.org/web/20140905000728/http://unifiedpatents.com:80/wp−co
`ntent/uploads/2014/06/hacking_the_patent_system.pdf; see also EX2006.
`
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`8
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`IPR2018-00199
`U.S. Patent 7,092,671
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`16. The article also identifies one of the so-called “pros” of Unified’s business model
`is that “it should allow members to benefit from inter partes review of dubious
`patents without becoming the ‘real parties-in-interest’ in the review.” EX2002 at 5
`(underlining added).
`Thus, as was the case in RPX, the record evidence reveals that “a key reason
`clients pay [Unified] is to benefit from this practice [of filing IPR petitions] in the
`event they are sued by [what Unified considers to be] an NPE”—i.e., precisely what
`happened here. RPX, 897 F.3d at 1351‒52. The implication that Apple and Samsung
`both are beneficiaries of the present Petition becomes even stronger when one
`considers the surrounding circumstances here and the discovery Unified produced
`in this trial.10
`There is strong circumstantial evidence here that Unified and at least Apple
`(if not also Samsung)11 collaborated and shared work product with each other prior
`to those parties filing their respective IPR petitions in IPR2018-00199 and IPR2018-
`00282, respectively. The fact that the petitions were filed within days of each other
`is itself suspicious. This suspicion of collaboration is compounded, however, when
`one considers the astonishing amount of overlapping content of the petitions. Both
`petitions first present obviousness challenges against all claims of the ’671 patent
`
`
`
`10 See n.4, supra.
`11 See n.12, infra.
`
`
`
`9
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`IPR2018-00199
`U.S. Patent 7,092,671
`based primarily on U.S. Patent 6,084,949 (“Yun”).12 Both petitions then opt to
`present redundant challenges against all claims based primarily on U.S. Patent
`6,738,643 (“Harris”).
`The thought that Unified and Apple independently came up with virtually
`identical strategies asserting the same primary references in the same order—without
`any collaboration—defies probability. Moreover, there can be no question that at
`least Apple “desire[d] review of the [’671] patent” and derives benefit from the
`instant Petition, given that Apple advances very similar (if not identical) arguments
`in its own petition. See RPX, 897 F.3d at 1351; see also id. at 1355 (finding it
`significant that the “the very challenges to validity included in the [RPX] IPR
`petitions were challenges Salesforce would like to have made.”).
`Any communication between Unified and Apple that would at least suggest
`collaboration before or after the petition filing date should have been produced
`automatically pursuant to Rule 52.51(b)(iii), which provides that “a party must serve
`relevant information that is inconsistent with a position advanced by the party during
`the proceeding concurrent with the filing of the documents or things that contains
`the inconsistency.” Uniloc brought this rule to the attention of opposing counsel and,
`in response, Unified produced—nothing. Indeed,
`
`, Unified did not produce a single client-specific
`
`
`
`12 The Yun patent is assigned to Samsung, as indicated in the USPTO Assignment
`database at Reel/Frame 008911/0743.
`
`
`10
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`IPR2018-00199
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`US. Patent 7,092,671
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`communication (in the form of email or otherwise) involving either Apple and
`
`Samsung. This intentional withholding of documents should create an inference
`
`against Unified.l3
`
`While Unified refused to produce any client—specific email communication
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`with either Apple and Samsung, Unified cherry-picked for its production what it
`
`-. 0200000 00 000000-47.—
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`— 00. 00 0004.
`
`Unified has effectively admitted, therefore, that at least Apple and Samsung
`
`stand to benefit from escaping pending litigation in the event the Board reaches a
`
`final decision invalidating the asserted ’67] patent. See RPX, 897 F.3d at 1353.
`
`Indeed, as was the case in RPX, “[Unified] did not point to any other clients whom
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`it believed might be at risk of infringement claims arising out of the patents on which
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`the IPR was instituted.” Id.
`
`The produced membership agreements also reveal that Apple and Samsung
`
`—. 000 00000000
`
`
`
`ll
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`IPR2018-00199
`U.S. Patent 7,092,671
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`membership agreement with Apple, for example, provides that
`
`
`
`
`
`
` EX2005 at UP-06. The membership agreement
`. Id. at UP-23.
`between Unified and Samsung
`In filing the instant Petition against the ’671 patent, Unified evidently made
`good on its contractual obligations (e.g., EX2005 at UP-06 and UP-23) and its
`advertised promises to have “complete business alignment” with its clients Apple
`and Samsung. This evidence reveals that Unified filed the instant petition, at least in
`part, to benefit both Apple and Samsung and that these clients of Unified likely
`desired such a review. See RPX, 897 F.3d at 1351‒53.
`It is itself significant that Unified requires its clients (including Apple and
`Samsung) to pay an additional subscription fee for each defined technology area to
`which the client subscribes; and that Unified Patent claims it “exclusively” uses
`those fees to protect that client’s technologies. See EX2001. There could be no
`practical incentive for a client to pay additional fees unless there is an expectation
`of additional benefit derived from that increased investment. The implication is that
`paying more money for multiple technology areas affords a client an expanded scope
`of protection, including in the form of challenging those patents before the USPTO
`
`12
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`IPR2018-00199
`U.S. Patent 7,092,671
`that are asserted against clients who subscribe to the relevant technology areas.14
`For the foregoing reasons, the record evidence reveals that at least Unified’s
`clients Apple and Samsung are each “a clear beneficiary that has a preexisting,
`established relationship with the petitioner.” RPX, 897 F.3d at 1351. Further, as
`clients of Unified who were both sued in district court litigation asserting the ’671
`patent, it is self-evident that Apple and Samsung each “has an interest in and will
`benefit from [Unified’s] actions” in this trial. Id. at 1353; see also id. at 1354
`(observing the Board has previously credited a patent owner’s assertion that “[i]t is
`Springpath that is accused of infringing the ’799 Patent in the district court litigation,
`not Cisco”). Under RPX, the record evidence clearly reveals that the Petition is
`deficient in failing to name Apple and Samsung as real parties in interest.
`
`3. Unified acted as a proxy for its clients Apple and Samsung
`Viewing the record through the lens of the “more expensive notion of privity”
`clearly suggests that Unified acted as a proxy on behalf of its clients Apple and
`Samsung. RPX, 897 F.3d at 1363 (Reyna, J., concurring). This “independently
`establishes privity under the Taylor framework.” Id. (citing Taylor v. Sturgell, 553
`U.S. 880, 895 (2008)).
`The facts here closely parallel those emphasized in the concurring opinion in
`RPX as supporting a finding of privity. First, the record here “contains evidence
`
`
`
`14 In an update to the agreement between Unified and Apple dated December 1,
`20916, for example, Apple subscribed to “each Zone currently available.” See
`EX2005 at UP-37.
`
`13
`
`
`
`IPR2018-00199
`U.S. Patent 7,092,671
`
`suggesting that the interests of [Unified] and [its clients Apple and Samsung] are
`aligned.” Compare, for example, id. at 1340, 43, 57, 62, and 64 (observing that “RPX
`advertises that its ‘interests are 100% aligned with those of [its] clients.’”) with
`EX2001 (“[Unified] structure provides complete alignment between Unified Patents
`and its member companies.”) and EX2006 (again advertising “complete business
`alignment between Unified Patents and its Micro-Pool members.”).
`Second, Apple and Samsung are each “a significant client” for Unified at least
`because of the substantial amount both paid as part of their respective subscription
`fees. See RPX, 897 F.3d at 1363 (Reyna, J., concurring); see also, e.g., EX2005 at
`UP-48‒UP-50.
`Third, as was the case in RPX, Apple and Samsung “are not competitors” with
`Unified. RPX, 897 F.3d at 1363 (Reyna, J., concurring).
`Fourth, Apple and Samsung were both “a preexisting client” of Unified and
`each represented “a significant and growing revenue stream.” RPX, 897 F.3d at 1364
`(Reyna, J., concurring); see also, e.g., EX2005 at UP-48‒UP-50.
`Fifth, “[i]nvalidation of the patent[]-in-suit would directly benefit [both Apple
`and Samsung],” who are each a named defendant in the related district court
`litigation involving the ’671 patent. See RPX, 897 F.3d at 1363 (Reyna, J.,
`concurring).
`Sixth, Unified promotes its “patent validity challenges to its fee-paying
`members” and, as explained further below, Unified has a “documented history of
`acting as a proxy on behalf of its clients in filing IPR petitions.” Id. at 1364.
`
`14
`
`
`
`IPR2018-00199
`U.S. Patent 7,092,671
`
`These significant parallels with RPX, particularly when viewed as a whole,
`provide sufficient “concrete evidence to suggest that [Unified] was in privity with
`[both Apple and Samsung].” Id.
`
`4. Unified has a history of acting as a proxy
`Unified has a history of acting as a proxy in challenging patents asserted by
`Uniloc in litigation. Id. at 10−12. To date, Unified has filed at least six inter partes
`review petitions against Uniloc’s patents. See IPR2016-01271, IPR2017-00184,
`IPR2017-01850, IPR2017-2148 (the
`instant Petition), IPR2018-00057, and
`IPR2018-00199. In every instance, the petition filed by Unified corresponded to one
`or more patents asserted by Uniloc in litigation. It is telling that Uniloc owns literally
`hundreds of patents, yet Unified has only challenged certain patents that Uniloc has
`asserted in litigation.
`The timing of when Unified chose to file inter partes reviews challenging
`Uniloc’s patents further suggests Unified did so as a proxy to its paying clients. As
`shown in the list below, Unified filed each of its six petitions against Uniloc’s patents
`within months of Uniloc asserting its patents against certain defendants in district
`court litigation.
`
`• Unified filed IPR2016-01271 against Patent No. 8,566,960 on June 29,
`2016, a month after Uniloc filed cases asserting infringement of that
`same patent by certain defendants. See, e.g., Uniloc USA, Inc. et al. v.
`Amazon.com Inc. et al, 2-16-cv-00570 (filed in TXED on May 30,
`2016); Uniloc USA, Inc. et al. v. Google Inc., 2-16-cv-00571 (filed in
`TXED on May 30, 2016); Uniloc USA, Inc. et al. v. Home Box Office,
`Inc., 2-16-cv-00572 (filed in TXED on May 30, 2016); Uniloc USA,
`
`15
`
`
`
`IPR2018-00199
`U.S. Patent 7,092,671
`Inc. et al. v. Hulu, 2-16-cv-00573 (filed in TXED on May 30, 2016);
`Uniloc USA, Inc. et al. v. Netflex, Inc., 2-16-cv-00574 (filed in TXED
`on May 30, 2016); Uniloc USA, Inc. et al. v. Valve Corporation, 2-
`16-cv-00575 (filed in TXED on May 30, 2016).
`
`• Unified filed IPR2017-00184 against Patent No. 7,069,293 on Nov.
`10, 2016, a few months after Uniloc filed cases asserting infringement
`of that same patent by certain defendants. See, e.g., Uniloc USA, Inc.
`et al. v. Valve Corporation, 2-16-cv-00746 (filed in TXED on July 8,
`2016); Uniloc USA, Inc. et al. v. Trend Micro Inc., 2-16-cv-00874
`(filed in TXED on Aug. 8, 2016).
`
`• Unified filed IPR2017-01850 against Patent No. 8,839,976 on July26,
`2017, a few months after Uniloc filed cases asserting infringement of
`that same patent by Apple. See Uniloc USA, Inc. et al. v. Apple Inc., 2-
`16-cv-00258 (filed in TXED on April 3, 2017).
`
`• Unified filed IPR2017-02148 (the instant Petition) against Patent No.
`6,564,229 on Sept. 27, 2017, a few months after Uniloc filed cases
`asserting infringement of that same patent by certain defendants. See,
`e.g., Uniloc USA, Inc. et al v. Ubisoft, Inc., 2:17-cv-00175 (filed in
`TXED on March 6, 2017); Uniloc USA, Inc. et al v. Big Fish Games,
`Inc., 2:17-cv-00172 (filed in TXED on March 6, 2017); Uniloc USA,
`Inc. et al v. Nexon America, Inc., 2:17-cv-00276 (filed in TXED on
`April 6, 2017); Uniloc USA, Inc. et al. v. Kaspersky Lab, Inc., 2-16-
`cv-00305 (filed in TXED on April 12, 2017); Uniloc USA, Inc. et al.
`v. Square Enix, Inc., 2-16-cv-00302 (filed in TXED on April 12,
`2017); Uniloc USA, Inc. et al v. Akamai Tech., Inc., 2:17-cv-00375
`(filed in TXED on May 1, 2017); Uniloc USA, Inc. et al v. Big Fish
`Games, Inc., 2:17-cv-01183 (filed in WAWD on Aug. 3, 2017); Uniloc
`USA, Inc. et al v. Akamai Technologies, Inc., 3:17-cv-02116 (filed in
`TXND on Aug. 11, 2017).
`
`16
`
`
`
`IPR2018-00199
`U.S. Patent 7,092,671
`• Unified filed IPR2018-00057 against Patent No. 6,110,228 on Oct. 24,
`2017, a few months after Uniloc filed cases asserting infringement of
`that same patent by certain defendants. See, e.g., Uniloc USA, Inc. et
`al. v. Square Enix, Inc., 2-16-cv-00302 (filed in TXED on April 12,
`2017); Uniloc USA, Inc. et al. v. Kaspersky Lab, Inc., 2-16-cv-00305
`(filed in TXED on April 12, 2017).
`
`• Unified filed IPR2018-00199 against Patent No. 7,092,671 on Dec. 11,
`2017, a few months after Uniloc filed cases asserting infringement of
`that same patent by certain defendants. See, e.g., Uniloc USA, Inc. et
`al. v. Apple Inc., 2-17-cv-00457 (filed in TXED on May 26, 2017);
`Uniloc USA, Inc. et al. v. Samsung Electronics America, Inc. et al., 2-
`17-cv-00562 (filed in TXED on Aug. 1, 2017).
`As shown above, Unified has demonstrated a repeated pattern of filing
`petitions against Uniloc-owned patents mere months after Uniloc filed complaints
`asserting those patents. To date, Unified has left the remainder of Uniloc’s extensive
`patent portfolio untou
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