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` UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.,
`Petitioner,
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________________
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`Case IPR2018-00883
`Patent No. 8,934,535
`____________________
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`[REDACTED] PATENT OWNER’S SUPPLEMENTAL BRIEF RE: REAL
`PARTIES IN INTEREST
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`Case IPR2018-00883
`[REDACTED] BRIEF ON REAL PARTIES IN INTEREST
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`Exhibit No.
`2001
`2002
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`2003
`2004
`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
`2012
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`2013
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`EXHIBIT LIST
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`
`Description
`Declaration of Kayvan B. Noroozi in Support of Motion for
`Admission Pro Hac Vice.
`Declaration of Thomas Chen in Support of Motion for
`Admission Pro Hac Vice.
`Petitioner’s Voluntary Interrogatory responses.
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`Deposition transcript of Keven Jakel in IPR2014-01252.
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`Documents from Petitioner’s Voluntary Production bearing
`Bates numbers IPR2018-00883-003148 through -003185.
`Documents from Petitioner’s Voluntary Production bearing
`Bates numbers IPR2018-00883-00781 through -00861.
`Documents from Petitioner’s Voluntary Production bearing
`Bates numbers IPR2018-00883-03310 through -03313.
`Documents from Petitioner’s Voluntary Production bearing
`Bates numbers IPR2018-00883-03314 through -03333.
`Documents from Petitioner’s Voluntary Production bearing
`Bates numbers IPR2018-00883-00614 through -00638.
`Documents from Petitioner’s Voluntary Production bearing
`Bates numbers IPR2018-00883-03747 through -03763.
`Intentionally left blank
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`Documents from Petitioner’s Voluntary Production bearing
`Bates numbers IPR2018-00883-000547 through -000548.
`Declaration of Joel P.N. Stonedale
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`[REDACTED] BRIEF ON REAL PARTIES IN INTEREST
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`I.
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`TABLE OF CONTENTS
`The RPI inquiry focuses on whether a non-party is a clear beneficiary
`of the IPR and its relationship with the Petitioner .......................................... 2
`II. Members of Unified’s
` Zone are beneficiaries of the Petition
`and have a preexisting, established relationship with Unified ....................... 4
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`III.
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`.................................................................................................. 5
` Zone members are RPIs under AIT ................................... 7
`IV. Unified’s
`V.
`The Board should deny institution in full ..................................................... 10
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`Case IPR2018-00883
`[REDACTED] BRIEF ON REAL PARTIES IN INTEREST
`Pursuant to the Board’s order of August 16, 2018 (Paper 15) and e-mail of
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`August 24, 2018, Patent Owner hereby submits this supplemental brief.
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`35 U.S.C. §312(a)(2) states that a petition “may be considered only if . . . the
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`petition identifies all real parties in interest.” In AIT v. RPX, the Federal Circuit
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`held that a real party in interest is one “who will benefit” from an IPR. 897 F.3d
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`1336, 1348 (Fed. Cir. 2018) (“AIT”). In reaching its holding, the Court rejected the
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`Board’s “unduly narrow” approach to evaluating the real party in interest inquiry.
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`Id. at 1345.
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`When Unified Patents (“Unified”) filed this Petition, it stated to the Board
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`that “Unified is the real party-in-interest.” Paper 2 at 1. But Unified’s discovery
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`production on the issue now proves its representation to have been false.1 While
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`numerous facts revealed through discovery belie Unified’s claim that it is the sole
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`RPI, Unified’s relationship with
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`1Patent Owner notes that it has received only limited, voluntary discovery
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` is especially notable.
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`and that it intends to seek additional discovery should the Board institute trial. See
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`Paper 18 at 5 (denying request for additional discovery but stating that “Patent
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`Owner may have the opportunity to renew its request for such a motion post-
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`institution if the Board decides to institute trial”).
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`[REDACTED] BRIEF ON REAL PARTIES IN INTEREST
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` per year for membership to all of Unified’s
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` pays Unified
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`“Technology Zones,” including the
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` Zone. Ex. 2012 at 1.
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` Under AIT v. RPX there can be no doubt that
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` is an RPI. And
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`Unified did not name
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` as an RPI. The Petition thus cannot be instituted.
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`Moreover, numerous other Unified members are RPIs as well. Unified is
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`structured so that its members can be confident that their fees are used primarily to
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`invalidate patents the members are at risk of infringing. The Petition here was filed
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`to benefit members of the
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` Zone, and members of that Zone are the RPIs.
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`I.
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`The RPI inquiry focuses on whether a non-party is a clear beneficiary of
`the IPR and its relationship with the Petitioner
`In AIT v. RPX, the Federal Circuit considered a case where RPX— a Unified
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`competitor that is similarly “a for-profit company whose clients pay for its
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`portfolio of ‘patent risk solutions’”—petitioned for inter partes review but did not
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`identify any customers as RPIs. 897 F.3d. at 1351;
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`. The Court held
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`that there was significant evidence indicating that an RPX client should have been
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`identified as an RPI. See AIT, 897 F.3d. at 1339
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`The Federal Circuit explained that RPI must be evaluated “with an eye
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`toward determining whether the non-party is a clear beneficiary that has a
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`preexisting, established relationship with the petitioner.” Id. at 1351 (emphasis
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`added); id. at 1348 (the RPI inquiry must “bear[] in mind who will benefit from
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`having those claims canceled or invalidated”). AIT provides two examples of
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`relationships that are sufficient to give rise to a finding that an unnamed party is an
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`RPI: (1) when the named party acts as an “attorney-in-fact”; and (2) an association
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`that “assert[s] the personal rights of its members.” Id. at 1349. Moreover, “an
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`entity can serve as an agent to a principal and file an IPR on the principal's behalf
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`even without the two formally agreeing that the agent will do so.” Id. at 1357. The
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`ultimate question turns on who “will benefit from the redress that the chosen
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`tribunal might provide.” Id. at 1349.
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`The Court also clarified that the existence of the named party’s independent
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`interest does not negate the interest of the unnamed party: “The point is not to
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`probe RPX’s interest (it does not need any); rather, it is to probe the extent to
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`which Salesforce—as RPX’s client—has an interest in and will benefit from RPX's
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`[REDACTED] BRIEF ON REAL PARTIES IN INTEREST
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`actions, and inquire whether RPX can be said to be representing that interest after
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`examining its relationship with Salesforce.” Id. at 1353. Thus, the focus is on the
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`whether “the non-party is a clear beneficiary” and not on whether the petitioner
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`also benefits from the IPR. Id. at 1351, 1353.
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`II. Members of Unified’s
` Zone are beneficiaries of the Petition and
`have a preexisting, established relationship with Unified
`Unified’s business model facilitates “determining whether the non-party is a
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`clear beneficiary that has a preexisting, established relationship with the
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`petitioner.” Id. at 1351. That is because Unified organizes its customer
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`relationships into specific technology “areas” or “zones” based on their interests.
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`Unified states that this IPR falls within its “
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` Zone.” Ex. 2003 at 2-3.
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`And indeed, Unified identifies
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` Zone members who have been
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`accused of infringing the ’535 patent, all of whom would benefit if the Petition
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`were to succeed.
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` AIT, 897 F.3d at 1363 (Reyna, C.J., concurring)
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`(“The invalidation of AIT's patents-in-suit would directly benefit Salesforce
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`because Salesforce was sued by AIT for infringing the same patents.”).
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`[REDACTED] BRIEF ON REAL PARTIES IN INTEREST
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` Zone would similarly benefit from the
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`Other members of the
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`invalidation of a patent covering technology that they are at risk of infringing.
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`All of Unified’s “
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` Zone” members therefore have a pre-existing,
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`established relationship with Unified and are beneficiaries of this Petition. AIT, 897
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`F.3d at 1351.
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`III.
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`In short, Unified customers pay fees in return for Unified’s efforts to file
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`IPRs that will either result in invalidation of or licenses for patents that have been,
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`or are at risk of being, asserted against them. See AIT, 897 F.3d at 1353 (focusing
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`RPI analysis on whether the client “has an interest in and will benefit from [the
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`named party’s] actions, and . . . whether [the named party] can be said to be
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`representing that interest”).
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`IV. Unified’s
` Zone members are RPIs under AIT
`Unified acts as both an association that “assert[s] the personal rights of its
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`members” and as an “attorney-in-fact” for its members, either of which give rise to
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`a finding of real party in interest. AIT, 897 F.3d at 1349.
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`Unified asserts the rights of its members because it is not at risk of being
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`sued on the patents it challenges; only its members are.
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` Those facts “taken together,
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`imply that [Unified] can and does file IPRs to serve its clients’ financial interests,
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`and that a key reason clients pay [it] is to benefit from this practice in the event
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`they are sued by an NPE.” Id.
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`Similarly, Unified acts as attorney-in-fact because
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` That is so even if the members lack
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`direct control or knowledge regarding Unified’s litigation activity. AIT, 897 F.3d at
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`1357 (“[A]n entity can . . . file an IPR on the principal’s behalf even without the
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`two formally agreeing that the agent will do so.”).
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` AIT, 897 F.3d at 1357
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`(RPX’s statement that its “interests are 100% aligned with those of [its] clients”
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`[REDACTED] BRIEF ON REAL PARTIES IN INTEREST
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`supported argument that “RPX had apparent authority to file the IPR petitions to
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`benefit Salesforce.”).
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` Thus, even without explicit
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`communication or control,
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` Zone members have authorized Unified to file
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`IPRs for their benefit. Members are the parties that ultimately “desire[] review of
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`the patent,” and that “from a ‘practical and equitable’ standpoint will benefit from
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`the redress” afforded by IPR proceedings. See AIT, 897 F.3d. at 1349, 1351
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`(quoting Trial Practice Guide, 77 Fed. Reg. at 48,759).
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`Because Patent Owner has provided “sufficient evidence prior to institution
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`that reasonably brings into question the accuracy of a petitioner’s identification of
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`RPIs, the overall burden remains with the petitioner to establish that it has
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`complied with the statutory requirement to identify all [RPIs].” Id. at 1356. Unified
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`cannot meet that burden. Its responses merely assert that members have no direct
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`control or input over Unified’s litigation, but the Federal Circuit has emphasized
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`that such control is not required in order to qualify its members as real parties in
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`interest. Id. at 1354-55, 1357.
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`V. The Board should deny institution in full
`Because the Unified fails to list “all real parties in interest” as required by 35
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`U.S.C. § 312(a)(2), the Petition cannot be considered. Aceto Agricultural Chem.
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`Corp. v. Gowan Co., IPR2015-01016, Paper 15 at 11-12 (denying institution for
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`failure to list RPIs that were not time barred). Moreover, the Board should not
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`allow correction of the Petition under 37 C.F.R. § 42.104(c) because Petitioner’s
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`failure to include the real parties in interest was not a “typographical mistake in the
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`petition.” Id. Rather, Petitioner’s business model is designed to elude the estoppel
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`effects flowing to its RPIs. A decision allowing correction would merely
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`encourage parties to conceal their RPIs until discovered, nullifying the requirement
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`to list real parties in interest under § 312(a) and the effects of the statutory bar
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`under 35 U.S.C. § 315(b).
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`If the Petition is corrected, it would require a new filing date, which may fall
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`outside 35 USC § 315(b)’s one-year statutory bar for an RPI “or privy” of Unified.
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`See 37 C.F.R. § 42.106. In that case, the Board should order discovery on
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`Unified’s RPIs and Privies.
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`Respectfully submitted,
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`/s/ William P. Rothwell
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`William P. Rothwell, Reg. No. 72,522
`NOROOZI PC
`2245 Texas Drive, Suite 300
`Sugar Land, TX 77479
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`Kayvan B. Noroozi, Pro Hac Vice Pending
`NOROOZI PC
`1299 Ocean Ave., Suite 450
`Santa Monica, CA 90401
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`Attorneys for the Patent Owner
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`Date: August 30, 2018
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`SUPPLEMENTAL BRIEF RE: REAL PARTIES IN INTEREST was served
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`electronically via e-mail on August 30, 2018, on the following counsel of record
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`for Petitioner:
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`Lionel Lavenue (Lead Counsel)
`Ashraf Fawzy (Back-up Counsel)
`Jonathan Stroud (Back-up Counsel)
`C. Brandon Rash (Back-up Counsel)
`James Stein (Back-up Counsel)
`Service Email
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`lionel.lavenue@finnegan.com
`afawzy@unifiedpatents.com
`jonathan@unifiedpatents.com
`brandon.rash@finnegan.com
`james.stein@finnegan.com
`UnifiedPatents-IPR2018-
`00883@finnegan.com
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`/s/ William P. Rothwell
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`William P. Rothwell, Reg. No. 72,522
`NOROOZI PC
`2245 Texas Drive, Suite 300
`Sugar Land, TX 77479
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`Attorney for the Patent Owner
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`Date: August 30, 2018
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