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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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`APPLE INC.,
`Petitioner,
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`v.
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`UNILOC LUXEMBOURG S.A.1,
`Patent Owner
`________________
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`IPR2018-00282
`Patent 7,092,671 B2
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`________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`1 According to Patent Owner’s Updated Mandatory Notice, Paper 9, the owner of
`this patent is Uniloc 2017 LLC.
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`Petitioner’s Reply
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`IPR2018-00282
`U.S. Patent No. 7,092,671
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`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................ 1
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`I.
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`II. LEVEL OF ORDINARY SKILL IN THE ART ................................................... 1
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`III. THE PRIOR ART DISCLOSES ALL CHALLENGED CLAIMS ....................... 2
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`A. The “controlling” limitations ........................................................................ 3
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`B. Yun and Harris each disclose the “controlling” limitations ......................... 3
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`C. Patent Owner does not dispute that the prior art renders the challenged
`claims unpatentable under the Board’s construction .................................... 6
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`IV. PATENT OWNER’S CONSTRUCTION IS INCORRECT ................................. 6
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`A. Patent Owner shirked the Board’s invitation to address the “control
`limitation” of claim 1 ..................................................................................... 6
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`B. The Board should reject Patent Owner’s implicit, narrowing
`construction................................................................................................... 7
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`V. EVEN UNDER PATENT OWNER’S CONSTRUCTION, THE PRIOR
`ART DISCLOSES OR TEACHES THE “CONTROLLING” LIMITATIONS .......... 9
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`A. Yun’s “dial request” is a control command ................................................ 10
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`B. Harris’s express disclosure of a “command” ............................................. 13
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`VI. APPLE IS THE ONLY REAL PARTY IN INTEREST .....................................16
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`A. Patent Owner’s mere assertions—unsupported by any evidence— and
`complete lack of the requisite analysis fail to put the issue of real party
`in interest into dispute ................................................................................. 16
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`1. Patent Owner provided no evidence at all ............................................. 16
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`2. Patent Owner failed to perform the requisite analysis .......................... 17
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`B. Even if the issue of real party in interest is reached, Unified is not one
`to this proceeding ........................................................................................ 19
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`VII. CONSTITUTIONALITY OF IPR PROCEEDINGS ..................................23
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`VIII. CONCLUSION ...........................................................................................23
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`iii
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`Petitioner’s Reply
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`U.S. Patent No. 7,092,671
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`TABLE OF AUTHORITIES
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`Case Law
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`Applications in Internet Time, LLC v RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) …………………………………………………18
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`Denso Corp. v. Beacon Navigation GmbH,
`IPR2013-00026, paper 34, p.10…………………………………………………22
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`Ericsson Inc. v Intellectual Ventures I LLC,
`IPR 2014-00527 paper 41, p.2. fn.1 ....................................................................17
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`Gemtron Corp. v. Saint-Gobain Corp.,
`572 F.3d 1371, 1380 (Fed. Cir. 2009) …………………………………………..9
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`Itron Networked Solutions, Inc. v. Acoustic Tech. Inc.,
`IPR2017-01024, paper 49, p.26 …...………….…………………………..9,12,15
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`Office Patent Trial Practice Guide,
`77 Fed. Reg., 48,759 (Aug. 4, 2012) …………………..…………………..…..18
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`Ooma Inc. v. Deep Green Wireless, LLC,
`IPR2017-01541, paper 8, p.8 ......................................................................................2
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`Petroleum Geo-Services Inc., v. Westerngeco LLC,
`IPR2014-01478, paper 72, p.45……………………………………..………….22
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`Worlds Inc. v. Bungie, Inc.,
`903 F.3d 1237, 1244 (Fed. Cir. 2018) ………………………..………………1,16
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`Petitioner’s Reply
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`I.
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`INTRODUCTION
`The Board’s Institution Decision remarked that the parties “appear to disagree
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`over the scope of … ‘the control limitation’” of claim 1 and “encourage[d] the parties
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`to address this issue.” That disagreement has turned out to be the only substantive
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`dispute and amounts to a distinction without a difference. First, it is undisputed that
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`the prior art of the Petition discloses the limitation under the Board’s preliminary
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`construction and its broadest reasonable construction. Second, not only is the Patent
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`Owner’s proposed construction wrong, the prior art discloses the limitation under that
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`construction anyway.
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`Patent Owner asserts that Unified Patents (“Unified”) is an unnamed real party
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`in interest to this proceeding. The issue has not been put into dispute, as Patent Owner
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`has cast aspersions in the form of attorney argument only and does not meet the
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`threshold required by the Federal Circuit in Worlds Inc. v. Bungie, Inc.—“a patent
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`owner must produce some evidence to support its argument that a particular third
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`party should be named a real party in interest.” In any case, the evidence establishes
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`that there are no unnamed real parties in interest.
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`II. LEVEL OF ORDINARY SKILL IN THE ART
`Patent Owner argues that the Petition has a “fatal deficiency” in that it allegedly
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`“fails to provide or expressly rely upon any definition for the level of ordinary skill in
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`the pertinent art.” Response, 3. This argument fails for multiple reasons.
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`1
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`First, in other proceedings, the Board has ruled exactly opposite of Patent
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`Owner’s position, stating “we do not agree that the lack of a specific proposal in the
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`Petition for a definition of one of ordinary skill in the art is fatal to the asserted
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`obviousness grounds of the Petition….” Ooma Inc. v. Deep Green Wireless, LLC,
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`IPR2017-01541, paper 8, p.8. In Ooma, the Board “analyze[d] the asserted grounds
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`using the level of skill reflected in the prior art,” ultimately finding some of the
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`challenged claims obvious. Id., paper 42, pp.7-8, 34.
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`Second, Patent Owner’s argument is simply wrong. In the Petition, Apple
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`analyzed the prior art, specifically invoking the perspective of one of ordinary skill
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`in the art: “This petition, along with the declaration of Petitioner’s expert, Dr.
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`Nenad Medvidović, explains where each element of claims 1-7 and 9-15 is found
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`in the prior art and why the claims would have been obvious to a person of
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`ordinary skill in the art (“POSITA”)….” Petition, 7. And Dr. Medvidović
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`explained the level of ordinary skill in the art that he applied. APPL-1003, 8-10.
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`Thus, contrary to Patent Owner’s assertion, the Petition does provide and rely upon
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`a definition for the level of ordinary skill.
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`III. THE PRIOR ART DISCLOSES ALL CHALLENGED CLAIMS
`The only substantive dispute that Patent Owner raises as to whether the prior
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`art discloses all elements of the challenged claims is with respect to what Patent
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`Owner refers to as the “controlling” limitations of claims 1 and 9.
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`2
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`A. The “controlling” limitations
`Claim 1 recites “wherein the handheld computer is configured to control the
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`telephone via the wireless communication such that the telephone dials the specific
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`telephone number,” which the Board defined in its Institution Decision as “the control
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`limitation.” The Board issued a preliminary interpretation of the claim scope,
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`“read[ing] the claim broadly, such that a specific command, separate from the
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`transmission of the selected number, is not required to satisfy the control
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`limitation.” Decision, 7. Using this interpretation, the Board determined that Apple
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`had shown a reasonable likelihood of prevailing on all of its challenges to claims
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`1-7 and 9-15. Id., 8-12.
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`Claim 9 recites “controlling the telephone using a handheld computer to cause
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`the telephone to dial the specific telephone number,” which, together with the “control
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`limitation” of claim 1, Patent Owner defined collectively as the “controlling”
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`limitations. Response, 4-5.
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`Aside from the “controlling” limitations, Patent Owner does not dispute that
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`the prior art references, combined as set forth in the Petition, disclose or teach all
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`other elements of the challenged claims 1-7 and 9-15 of the ’671 Patent. Id.
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`B. Yun and Harris each disclose the “controlling” limitations
`Applying the Board’s interpretation, Yun clearly discloses the “controlling”
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`limitations. Decision, 9-10. The problem which Yun is trying to solve is that “there
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`Petitioner’s Reply
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`is no convenient and effective way to link the electronic pocketbook with the
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`telephone system which allows the user to automatically dial a telephone number
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`at the telephone system under control of operation from the electronic pocketbook.
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`APPL-1005, 1:58-62 (emphasis added); Petition, 10-11. To address this, Yun
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`describes, “a telephone system with automatic dialing…from an electronic
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`pocketbook.” APPL-1005, 1:17-19, 2:29-41; Petition, 10-17; APPL-1003, 43-44.
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`Each of the electronic pocketbook and telephone includes a respective “control
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`unit” coupled to respective transmission units that provide wireless (e.g., infrared)
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`communication between the pocketbook and telephone. APPL-1005, 3:13-46, 4:3-
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`20, FIGS. 1, 2; Petition, 10-23, 27; APPL-1003, 27-30, 37-42.
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`Yun describes that at the electronic pocketbook, “[t]he optical transmission unit …
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`converts data information provided from the control unit…into an infrared ray
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`signal containing an electronic dial request and telephone number of an interested
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`person selected for an automatic dialing function.” APPL-1005, 4:11-16; Petition,
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`12-17; 26-28; APPL-1003, 28-29, 40-47. Yun’s FIG. 3 illustrates a “control flow
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`4
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`chart” of the automatic dialing process by which the electronic pocketbook uses
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`the dial request to cause the telephone system to dial the specified telephone
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`number. APPL-1005, 4:21-59; APPL-1003, 29, 45. Thus, Yun’s electronic
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`pocketbook controlling the telephone’s autodialing by sending a dial request “and”
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`also a telephone number via a wireless signal discloses the “controlling”
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`limitations.
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`Likewise, Harris discloses the “controlling” limitations. Decision, 11-12.
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`Harris describes, for example, a PDA that can automatically dial a telephone.
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`APPL-1012, Abstract, 1:41-53, 2:22-47, 3:32-34, FIGS. 1-4; Petition, 50-51, 62-
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`63; APPL-1003, 68.
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`Harris’s PDA “stores a plurality of contacts” and displays a person’s name and
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`phone number. APPL-1012, 1:47-50. The PDA includes “an icon or spot on the
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`screen 112, which commands dialing the displayed number” when selected by a
`5
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`user. APPL-1012, 1:47–53, 3:32-34; Petition, 51, 54, 62-63; APPL-1003, 69. This
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`causes the telephone to dial the displayed number. Id. Thus, Harris’s disclosure of
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`a PDA that includes an icon on its display “which commands dialing the displayed
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`number” discloses the “controlling” limitations.
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`Patent Owner does not dispute that the prior art renders the
`C.
`challenged claims unpatentable under the Board’s construction
`Patent Owner has offered no argument that would save the challenged
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`claims under the Board’s construction. Response, 4-22. Patent Owner does not
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`dispute that, if the Board’s construction of the “control limitation” is maintained,
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`each of Yun and Harris disclose such limitation. Id. Thus, under the Board’s
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`interpretation of the claims, all challenged claims are rendered obvious by the prior
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`art.
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`IV. PATENT OWNER’S CONSTRUCTION IS INCORRECT
`Patent Owner shirked the Board’s invitation to address the
`A.
`“control limitation” of claim 1
`With respect to claim 1’s “control limitation,” the Board invited “the parties
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`to address this issue in post-institution briefing” given the “current” and possibly
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`“incomplete” record. Decision, 8. Patent Owner elected not to provide a construction
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`of this claim term. Response, 4-10. Nor did Patent Owner supplement the record with
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`evidence from an expert or otherwise. On this basis alone, Patent Owner has failed to
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`change the record for the meaning of “control limitation,” and the Board’s
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`6
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`preliminary interpretation of this term should stand.
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`The Board should reject Patent Owner’s implicit, narrowing
`B.
`construction
`In its only effort to save the challenged claims Patent Owner seeks to implicitly
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`add a limitation to the claims, in particular, “that the claimed ‘controlling’ requires the
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`handheld computer to issue a control command that is separate and apart from
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`‘transferring the specific telephone number’ itself.” Response, 6.
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`Patent Owner’s implicit construction should be rejected for multiple reasons.
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`To begin, the claims themselves place no restrictions on the claimed “controlling”
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`so that it is limited to certain “commands.” See APPL-1001, 10:54-12:30. The term
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`“command” does not appear anywhere in the claims. Id. Nor do the claims exclude
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`the possibility that the control of the telephone by the handheld computer system to
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`dial a specific number can be accomplished, in whole or in part, by the transfer of
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`the telephone number. Id. Claims 1 and 9 simply require a configuration in which
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`the telephone is controlled by the handheld computer system to dial the specific
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`telephone number, even if the transfer of the telephone number accomplishes as
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`much.
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`Likewise, the specification of the ’671 Patent does not disclose that the
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`claimed “controlling” requires “a control command” separate and from the
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`transferring the telephone number. In the Response, Patent Owner cites to only
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`7
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`two passages from the specification to make its argument. See Response, 4-10. The
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`first passage, at column 8, lines 17-21, merely parrots the claim language in saying
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`that the “PID 12…control[s] telephone 14 to dial the number and established [sic]
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`the telephone call.” This adds nothing to the argument. The second passage, at
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`column 9, lines 7-21, discloses inter alia that the PID 12 “loads the controls” and
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`“negotiates a control protocol.” But such “control” does not concern the claimed
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`controlling of the telephone to dial a specific number; instead, it relates to “a process
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`by which the PID 12 detects and communicates with another device…using
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`standard RF protocols (e.g., Bluetooth).” APPL-1001, 8:63-9:21. Neither excerpt
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`mentions the word “command,” and Patent Owner provides no expert testimony to
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`render this more than attorney ipse dixit argument. Moreover, Patent Owner gives
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`no reason why the supposed disclosure in the specification should be imported into
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`the claim—no lexicography, no prosecution history disavowal, no argument that
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`the plain and ordinary meaning of “controlling” requires as much. In any case,
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`even if Patent Owner’s interpretation was reasonable, Patent Owner does not, and
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`cannot, argue that no other kind of control suffices under the term’s broadest
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`reasonable interpretation.
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`Nor does the prosecution history support Patent Owner’s position. Patent
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`Owner cites to pages 241-244 of the File History in support of its argument that the
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`claimed “controlling” requires a “command” that is separate and apart from
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`8
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`“transferring the specific telephone number” itself. Response, 8-9. But these
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`passages of the prosecution history simply emphasize a point that is readily
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`apparent from the claims themselves: the claims require both “controlling” and
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`“transferring” (or data exchange). Id., 9, citing APPL-1002 (“Accordingly, Claim
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`19 recites the data exchange and control elements as separate limitations.”). These
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`passages do not add an additional limitation of “command” to the claimed
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`“controlling.” See APPL-1002, 241-244. Indeed, nowhere in these passages does
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`the word “command” appear. Id.
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`Finally, Patent Owner’s arguments are solely attorney argument. Patent
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`Owner produced no evidence of how a POSITA would understand the claimed
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`“controlling” and fails to provide any extrinsic evidence. “[U]nsworn attorney
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`argument…is not evidence and cannot rebut…evidence.” Itron Networked
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`Solutions, Inc. v. Acoustic Tech. Inc., IPR2017-01024, paper 49, p.26, citing
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`Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009).
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`As such, Patent Owner’s position that the claimed “controlling” requires a
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`“command separate and apart from the transferring of the telephone number” is
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`completely unsupported by the evidence in the record, and thus should be rejected.
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`EVEN UNDER PATENT OWNER’S CONSTRUCTION, THE PRIOR
`V.
`ART DISCLOSES OR TEACHES THE “CONTROLLING” LIMITATIONS
`Even if Patent Owner’s proposed construction were to be accepted (not that it
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`9
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`should), Patent Owner’s supposed distinction over the prior art—i.e., executing the
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`claimed “controlling” using a “command”—is nonexistent. Yun and Harris each
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`disclose the “controlling” limitation under this construction.
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`A. Yun’s “dial request” is a control command
`Yun discloses that its electronic pocketbook (handheld computer) converts data
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`information from its control unit into a signal containing an “an electronic dial
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`request.”2 APPL-1005, 3:42-4:16, FIGS. 1, 2; Petition, 12, 54, 62-63; APPL-1003,
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`28-29, 41-47, 54-56. The dial request is a “command” as it is sent from the electronic
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`pocketbook to the telephone and used by control units 110 and 130 to execute the
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`“automatic dialing function.” APPL-1005, 4:11-60. Yun explains, for example, that
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`the “signal corresponding to the electronic dial request is transmitted from the
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`electronic pocketbook through its optical transmission unit 138 under control of its
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`control unit 130 in accordance with specific key input from the key input unit 132
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`included in the electronic pocketbook.” APPL-1005, 4:45-50. “[I]f the infrared ray
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`signal corresponding to the electronic dial request from the electronic pocketbook
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`2 Patent Owner’s assertion that the Board’s analysis of “dial request” is somehow a
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`new argument is simply wrong. See e.g., Petition, 12, 54, 62-63; APPL-1003, 28-29,
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`41-47, 54-56.
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`is received at step 312, the control unit 110 determines whether the infrared ray
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`signal contains a telephone number of an interested person for an automatic dialing
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`function at step 314.” APPL-1005, 4:54-59.
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`Contrary to Patent Owner’s argument, Yun’s dial request is not the same as
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`a telephone number to be dialed, as Yun itself distinguishes between the two. See
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`e.g., APPL-1005, 4:11-16 (“The optical transmission unit 138 converts data
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`information provided from the control unit 130 into an infrared ray signal
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`containing an electronic dial request and telephone number of an interested person
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`selected for an automatic dialing function.”). Thus, Patent Owner’s construction
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`does not distinguish over Yun – Yun’s dial request “is separate and apart from
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`‘transferring the specific telephone number’ itself.”
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`Apple’s expert, Dr. Medvidović, explained the operation of the Yun system
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`and how it meets the “controlling” limitation. APPL-1003, 26-30, 41-47, 54-56. In
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`response, Patent Owner offers no rebuttal evidence or testimony from any expert of
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`its own. Response, 11-18. Instead, Patent Owner provides unsupported attorney
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`argument.
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`For example, Patent Owner’s attorney theorizes, without expert support, that
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`with respect to the automatic dialing of a telephone number, “the only involvement
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`of the electronic pocketbook is the transfer of a single infrared ray signal
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`containing a telephone number.” Response, 13. But that is demonstrably false, as
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`11
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`Yun’s electronic pocketbook provides a “dial request” distinct from the telephone
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`number, as already discussed.
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`Likewise, Patent Owner’s attorney states that “the electronic pocketbook’s
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`control unit 130, by intended design, only controls other components of the
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`electronic pocketbook.” Response, 12. But that is mere speculation at best, because
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`the passage the attorney cites in support recites “[c]ontrol unit 130 controls overall
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`functions of the electronic pocketbook.” Id. Just because the control unit 130
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`controls the electronic pocketbook does not mean that it only controls the
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`pocketbook, as Patent Owner’s attorney is suggesting. Indeed, the evidence is to
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`the contrary. Dr. Medvidović, after analyzing the teachings of Yun, testified, inter
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`alia, that “Yun’s computerized electronic pocketbook includes a control unit that
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`works in conjunction with a control unit and dial unit on its telephone so that the
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`telephone number transferred via infrared signaling between the two is automatically
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`dialed.” APPL-1003, 45-46.
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`It is not surprising that Patent Owner ignores the testimony of Apple’s
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`expert as Patent Owner does not provide any expert testimony of its own. The
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`Board’s view on such a situation is clear: “[U]nsworn attorney argument…is not
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`evidence and cannot rebut…evidence.” Itron Networked Solutions, IPR2017-
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`01024, paper 49, p.26. Like the situation here, the patent owner in Itron provided
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`“considerable attorney argument” speculating upon or interpreting the disclosure of
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`12
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`the prior art, “but [did] not support its assertions with evidence that rebuts
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`[petitioner’s] expert testimony.” Id. And the same result follows: “In the absence
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`of controverting evidence that we might weigh against [the expert’s] opinion, we
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`are not in a position to discount [his] expert view.” Id.
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`Accordingly, even under Patent Owner’s proposed construction, Yun discloses
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`the claimed “controlling.”
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`B. Harris’s express disclosure of a “command”
`Harris discloses a PDA that issues a command. For example, Harris states
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`that the PDA “includes an icon or spot on the screen 112, which commands dialing
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`the displayed number.” APPL-1012, 1:50-51; Petition, 51, 54, 62-63; APPL-1003,
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`69. In operation for Harris’s system, when the icon on the PDA’s display is
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`selected, information is sent from the PDA to the telephone wirelessly over
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`Bluetooth and “used to automatically cause the cell phone to dial the specified
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`contact number.” APPL-1012, 2:10-22, 3:32-34; APPL-1003, 69; Petition, 63. And
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`Harris makes clear that its command is “separate and apart” from the telephone
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`number to be dialed because Harris distinguishes between the two. See e.g., APPL-
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`1012, 1:50-51 (“an icon or spot on the screen 112…commands dialing the
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`displayed number”).
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`Patent Owner’s attempts to distinguish the challenged claims over Harris
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`based on its proposed construction fail for multiple reasons.
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`Petitioner’s Reply
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`First, Patent Owner’s response to Harris is internally inconsistent and
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`completely contradicts its own argument for claim construction. On the one hand,
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`as discussed above, the ’671 Patent does not disclose any “command” in the
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`context of controlling the telephone to dial a number. Nonetheless, Patent Owner
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`goes to great lengths in the Response to add a requirement for “command” to the
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`“controlling” limitations where there is no support for doing so. See IV.B. supra.
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`On the other hand, Harris expressly discloses a “command” that is used by the
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`PDA to control the telephone to dial a telephone number. See e.g., APPL-1001,
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`1:50-51; Petition, 62; APPL-1003, 69, 84-85. Patent Owner argues—remarkably—
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`that Harris’s express “command” is not a “command” but rather something else:
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`“the word ‘command’ in this context refers to the transfer of a telephone number.”
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`Response, 19. Patent Owner is caught in a trap of its own making. Patent Owner’s
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`position is that the “controlling” limitations of the ’671 Patent should be construed
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`to require a “command,” but the disclosure of a “command” in Harris does not
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`satisfy the “controlling” limitations. Such inconsistency and self-contradiction
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`cannot stand.
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`Second, Patent Owner’s position that Harris’s express use of “command” is
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`“distinguishable from the claimed ‘controlling’” is based on attorney argument,
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`unsupported by the evidence. Indeed, the disclosure of Harris is to the contrary.
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`Harris states, for example, that the “computer has a command that causes said
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`14
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`Petitioner’s Reply
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`IPR2018-00282
`U.S. Patent No. 7,092,671
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`telephone to dial a phone number associated with a specified contact.” APPL-
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`1012, 4:45-47 (emphasis added). This makes clear that Harris’s command is
`
`related to, not distinct from, the controlling of the telephone to dial a specific
`
`number.
`
`Similarly, Patent Owner cites to a passage in Harris alleging that “the
`
`telephone (130/140) ‘will only dial the next time that the on hook or send button’
`
`on the telephone is used.” Response, 20. Patent Owner’s attorney interprets this
`
`passage as “confirm[ation] that in the Harris system it is the telephone (and not the
`
`PDA) that controls if and when it will dial a phone number provided by the PDA.”
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`Response, 20. However, the quote has been taken out-of-context. The full quote is:
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`“Another option is that the receiving device will only dial the next time that the on
`
`hook or send button is used.” APPL-1012, 1:64-66 (emphasis added). The Board
`
`should not accept attorney argument that takes quotes out of context, while ignoring
`
`the full teachings of Harris. “[U]nsworn attorney argument…is not evidence and
`
`cannot rebut…evidence.” Itron Networked Solutions, IPR2017-01024, paper 49,
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`p.26.
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`Accordingly, even under Patent Owner’s proposed construction, Harris
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`discloses the claimed “controlling.”
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`15
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`Petitioner’s Reply
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`U.S. Patent No. 7,092,671
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`VI. APPLE IS THE ONLY REAL PARTY IN INTEREST
`Patent Owner’s mere assertions—unsupported by any evidence—
`A.
`and complete lack of the requisite analysis fail to put the issue of real
`party in interest into dispute
`Patent Owner asserts that Apple failed to name Unified as a real party in
`
`interest to this proceeding. Response, 22-25. Patent Owner, however, has failed to
`
`put the issue of real party in interest in dispute for two reasons. First, Patent Owner
`
`produced no evidence into the record to support its assertions. Second, Patent
`
`Owner provided no analysis that tends to show that Unified qualifies as a real party
`
`in interest.
`
`1.
`
`Patent Owner provided no evidence at all
`
`“[A] mere assertion that a third party is an unnamed real party in interest,
`
`without any support for that assertion, is insufficient to put the issue into dispute.”
`
`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018). Importantly, the
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`Federal Circuit has held that, for practical purposes, the issue of real party in
`
`interest is not in dispute unless the patent owner produces “some evidence that
`
`tends to show that a particular third party should be named a real party in interest.”
`
`Id. (emphasis original).
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`Here, Patent Owner makes a number of assertions about another IPR
`
`proceeding, litigation involving the ’671 Patent, and the relationship between
`
`Apple and Unified. Response, 22-25. Notably, though, Patent Owner has not
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`16
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`Petitioner’s Reply
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`U.S. Patent No. 7,092,671
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`provided any actual evidence in support of these assertions. For example, Patent
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`Owner asserts that Apple and Unified “collaborated,” referencing the existence of
`
`a document that indicates Apple is a member of Unified. Id., 24-25. But such
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`“evidence” was not placed into this proceeding’s record. See id. Likewise, Patent
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`Owner’s response refers to a petition and prior art used in another IPR proceeding
`
`filed after the petition in this proceeding. Id., 24-25. But, again, Patent Owner did
`
`not introduce into this proceeding’s record any documents from that other IPR
`
`proceeding (no petition, no prior art, etc.). See id.
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`Inferences and coincidences are not evidence that Unified qualifies as a real
`
`party in interest. See Ericsson Inc. v Intellectual Ventures I LLC, IPR 2014-00527
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`paper 41, p.2. fn.1 (patent owner sought to infer that unnamed real party in interest
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`existed because of a petition in a separate IPR proceeding, but the panel declined to
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`draw any such inference, because the assertions were unsupported by evidence and
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`speculative in nature). Just as the panel in Ericsson did, this Board should decline
`
`to draw inferences that are unsupported and speculative in nature.
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`2.
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`Patent Owner failed to perform the requisite analysis
`
`Patent Owner has also failed to put the issue of real party in interest in
`
`dispute for an additional reason: Patent Owner did not provide or perform the
`
`analysis required to show that the unnamed party would qualify as a real party in
`
`interest.
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`17
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`Petitioner’s Reply
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`IPR2018-00282
`U.S. Patent No. 7,092,671
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`“[D]etermining whether a non-party is a ‘real party in interest’ demands a
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`flexible approach that takes into account both equitable and practical
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`considerations, with an eye toward determining whether the non-party is a clear
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`beneficiary that has a preexisting, established relationship with the petitioner.”
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`Applications in Internet Time, LLC v RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018),
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`citing Office Patent Trial Practice Guide, 77 Fed. Reg., 48,759 (Aug. 4, 2012)
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`(“Practice Guide”). Whether an unnamed party is a real party in interest is a highly
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`fact-dependent question. Practice Guide, 48,759. The Board may consider various
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`factors, including whether the non-party “exercised or could have exercised control
`
`over [the petitioner’s] participation in a proceeding,” the non-party’s “relationship
`
`with the petitioner,” the non-party’s “relationship to the petition itself, including
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`the nature and/or degree of involvement in the filing,” and “the nature of the entity
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`filing the petition.” Practice Guide, 48,759–60.
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`Patent Owner failed to analyze these factors in any meaningful way. Patent
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`Owner does not assert, much less analyze, that non-party Unified exercised or
`
`could have exercised control over Apple’s participation in this proceeding. See
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`Response, 22-25. Nor does Patent Owner consider the nature of the entity filing the
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`Petition, which is Apple. Id. And Patent Owner does not analyze non-party
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`Unified’s relationship to the present Petition. Id.
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`Because the Patent Owner has not met the threshold articulated by the
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`18
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`Petitioner’s Reply
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`IPR2018-00282
`U.S. Patent No. 7,092,671
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`Federal Circuit in Worlds, and has failed to perform any analysis that would tend to
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`show Unified qualifies as a real party in interest, the issue of real party in interest is
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`not in dispute. The Board need not consider the issue any further.
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`Even if the issue of real party in interest is reached, Unified is not
`B.
`one to this proceeding
`Finally, even if the issue of real party in interest is in dispute, the evidence
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`shows that Apple is the correct real party in interest and there are no unnamed real
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`parties in interest.
`
`The nature of Apple, the entity filing the petition. This factor looks at the
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`nature of the business of the petitioner. Applications in Internet Time, 26. In
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`Applications in Internet Time, the petitioner RPX provided “patent risk solutions,”
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`and there was evidence to suggest that the petitioner filed a petition to benefit an
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`unnamed third party that would have been time-barred. Applications in Internet
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`Time, 30. To be clear, in this proceeding, the Petitioner is Apple Inc. See Petition,
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`1. The nature of Apple’s business is to sell iPhones, iPads and Mac computers. See
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`APPL-1016, 2-3. This
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