`U.S. 9,253,239
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`DOCKET NO.: 2211726-00161US1
`Filed on behalf of Unified Patents Inc.
`By:
`Jonathan Stroud, Reg. No. 72,518
`Roshan Mansinghani, Reg. No. 62,429
`Email: jonathan@unifiedpatents.com
`Email: roshan@unifiedpatents.com
`
`David L. Cavanaugh, Reg. No. 36,476
`Daniel V. Williams, Reg. No. 45,221
`Jonathan E. Robe, Reg. No. 76,033
`Email: David.Cavanaugh@wilmerhale.com
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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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`BRADIUM TECHNOLOGIES LLC,
`Patent Owner
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`IPR2018-00952
`U.S. 9,253,239
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`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE ON REAL PARTIES IN INTEREST
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`PUBLIC REDACTED VERSION
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`I.
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`INTRODUCTION
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`IPR2018-00952
`U.S. 9,253,239
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`Petitioner Unified Patents, Inc. (“Unified”) certified that it is the sole real party-
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`in-interest (“RPI”). Patent Owner Bradium Technologies LLC (“Bradium”), in its
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`Patent Owner Preliminary Response (“POPR”), contests that certification, and in
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`doing so proposes an incorrect legal standard and relies on speculative attorney
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`argument. Their challenge should be rejected.
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`Bradium’s proposed standard—that any member of a for-profit association that
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`files IPRs that may benefit its members is an RPI—runs contrary to the multi-factor
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`inquiry required by the Trial Practice Guide (“TPG”) and confirmed by the Federal
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`Circuit. The TPG and recent Federal Circuit precedent make clear the appropriate test
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`governing an IPR inquiry. And the Board recently addressed this, finding that even
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`where members were sued for patent infringement—unlike here—they were not RPIs.
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`See Unified Patents Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883, Paper
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`29, at 16 (Oct. 11, 2018) (institution decision) (currently under seal).
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`Despite Unified’s voluntary provision of agreed-upon discovery, including its
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`Membership Agreements and a deposition of Unified’s CEO, Bradium points to no
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`evidence that anyone other than Unified desired review of the challenged patent or
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`participated in any way in this IPR. Bradium has not filed a complaint against any
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`Unified member. No third party other than Microsoft—not a member—would be
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`time-barred under 35 U.S.C. § 315(b). Bradium speculates this challenge might affect
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`Unified members. But there is no open litigation, no member has been sued, and there
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`is no evidence of benefit. In contrast, the record evidence demonstrates that Unified
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`controlled, directed, and funded this petition, did not communicate with any of its
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`members regarding filing, and that none of Unified’s members have been sued by
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`Bradium. Unified’s certification is correct.
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`II. LEGAL STANDARD
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`Determining whether an unnamed party is an RPI “is a highly fact-dependent
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`question” with no “bright line test,” assessed “case-by-case.” Trial Practice Guide
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`(“TPG”), 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (citing Taylor v. Sturgell, 553
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`U.S. 880 (2008)). The most important factors are whether the third-party funded,
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`directed, or controlled the IPR. See TPG, 77 Fed. Reg. at 48,760 (stating “a party that
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`funds and directs and controls an IPR . . . petition or proceeding constitutes a [RPI]”);
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`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1354 (Fed. Cir.
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`2018) (“AIT”) (endorsing the approach in Cisco Sys., Inc. v. Hewlett Packard Enter.
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`Co., IPR2017-01933, Paper 9 (Mar. 16, 2018) (focusing on the indicia of funding,
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`direction, and control)).
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`In AIT, the Federal Circuit endorsed the Trial Practice Guide’s RPI analysis and
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`clarified that it is fact-specific and multi-factored. AIT, 897 F.3d at 1351; see also
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`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1246 (stating AIT “clarify[ied] the meaning
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`of the term ‘real party in interest’ in the context of § 315(b)”); Realtime Adaptive,
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`IPR2018-00952
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`IPR2018-00883, Paper 29, 11 (citing both AIT and the TPG). The court endorsed the
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`TPG’s guidance that membership in an association alone does not suffice to render
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`one an RPI. See AIT, 897 F.3d at 1351. The Federal Circuit remanded because the
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`Board panel failed
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`to consider record facts,
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`including: multiple ongoing
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`communications between the petitioner and the third party regarding litigation defense
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`and settlement strategies related to the patent, suspicious payments made just before
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`the IPR filing, the presence of a time bar for the third party, and the fact that the
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`petitioner and the third party shared common members on their boards of directors.
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`See AIT, 897 F.3d at 1340-42. None of those factors are present here.
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`Bradium does not follow AIT, instead proposing a new standard that would
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`make any member of a for-profit association an RPI if that association files a challenge
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`that might benefit a member. See POPR, 5-7. This ignores most of the AIT factors in
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`favor of a new legal test evaluating only whether there is a pre-existing relationship
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`with a party that could be benefited by the IPR.
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`Another Board panel rejected a similar misreading of AIT. In Realtime
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`Adaptive, IPR2018-00883, Paper 29, 14, the Board held that “the RPI analysis set out
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`in AIT and the common law require more than simply confining the analysis to
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`determining whether a party benefits generally from the filing of this Petition and
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`relationship with the Petitioner.” In finding that Unified’s members were not RPIs,
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`the Board in Realtime Adaptive found significant that, unlike in AIT, there were no
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`communications with members who were also ongoing litigants, and none were time-
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`barred.
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`Bradium’s new test would end where the RPI inquiry begins. See AIT, at 1351;
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`see also Realtime Adaptive, IPR2018-00883, Paper 29, 15-16 (warning against
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`“cut[ing] short the RPI analysis set out in AIT”). Under Bradium’s proposal, anyone
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`sued for patent infringement would become a presumptive RPI in IPR challenges to
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`the asserted patent filed by anyone with which it has a relationship where it could
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`benefit from the challenge. Bradium’s approach would mean all buyers, sellers,
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`subcontractors, subsidiaries, parent corporations, contractual partners, and others with
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`preexisting relationships, such as members of a joint defense groups would be RPIs to
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`a challenge by any one of them. The TPG and AIT rejected such a broad approach.
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`See AIT, 897 F.3d at 1351 (citing TPG, 77 Fed. Reg. at 48,760 (trade association or
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`joint defense group membership does not alone render an entity an RPI)). Bradium’s
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`approach would hinge on the patent owner’s decision to sue, and would allow patent
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`owner’s to “create” RPIs. The RPI analysis is deeper than whether a relationship
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`exists; it must also consider whether the petitioner filed “at the behest” of an unnamed
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`party. AIT, 897 F.3d at 1351 (citing the TPG, 77 Fed. Reg. at 48,759).
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`III. UNIFIED IS THE SOLE REAL PARTY IN INTEREST
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`In the almost 120 challenges before the Patent Office, both before and after AIT,
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`each time a patent owner has challenged Unified’s RPI certification, the Board has
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`found that Unified properly certified RPI in an IPR proceeding. See, e.g., Realtime
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`Adaptive, IPR2018-00883, Paper 29, 19 (finding, after applying AIT, that Unified is
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`the sole RPI).1 The record evidence provided demonstrates the same is true here.
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`A. Unified solely directed, funded, and controlled this IPR
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`Under AIT, Worlds, and subsequent cases, questions of direction, funding, and
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`control are central to whether a third party is an RPI. See, e.g., AIT, 897 F.3d at 1354;
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`Worlds, 903 F.3d at 1245; Sirius XM Radio, Inc. v. Fraunhoffer-Gesellschaft Zur
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`Förderung der Angewandten Forschung E.V., IPR2018-00681, Paper 12, 4 (Sept. 6,
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`2018); Realtime Adaptive, IPR2018-00883, Paper 29, 11.
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`No third party directed, funded, or controlled this IPR. Jakel Decl., 3
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`(“EX2013”); see also EX2004, 149. Rather,
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`1 A non-exhaustive list of examples include: Clouding IP, IPR2013-00586, Paper 9
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`(2014); Dragon IP, IPR2014-01252, Paper 37 (2015); iMTX Strategic, IPR2015-
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`01061, Paper 9 (2015); Hall Data, IPR2015-00874, Paper 11 (2015); TransVideo,
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`IPR2015-01519, Paper 8 (2016); Qurio, IPR2015-01940, Paper 7 (2016); Nonend,
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`IPR2016-00174, Paper 10 (2016); Am. Vehicular, IPR2016-00364, Paper 13 (2016);
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`Plectrum, IPR2017-01430, Paper 8 (2017); Digital Stream IP, IPR2016-01749, Paper
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`22 (2018); Fall Line, IPR2018-00043, Paper 6 (2018); MONKEYMedia, IPR2018-
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`00059, Paper 15 (2018); Uniloc, IPR2017-02148, Paper 9 (2018).
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`. See
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`Sample Membership Agreement, EX2008, 10-11. No member communicated with
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`Unified regarding the filing of this IPR, much less directed and controlled Unified’s
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`filing of this IPR. EX2013, 3. Importantly, none of its members have been served
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`with a complaint for infringement of this patent, and no member payed Unified to file
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`this IPR. See EX2004, 145; EX2013, 3.
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`Rather, Unified operates independently to protect technology zones, not
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`individual members. EX2004, 153 (“[W]e just don’t do any type of collaboration
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`around what we should file on and what we shouldn’t . . . our strategy is, instead, to
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`protect a technology zone”). Unified designates certain technology subject areas
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`(“Technology Zones” or “Zones”) and directs its work to protecting those Zones from
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`the threat of poor-quality patents by “independently select[ing] which patents to
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`challenge based on the perceived deterrent value to a technology zone.” EX2013, 5.
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`Unified members pay annual zone subscription fees at regular intervals, among other
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`sources of revenue; Unified alone determines whether and how it spends its money.
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`See EX2013, 5. No fees are designated for filing challenges, let alone challenges
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`against a specific patent. See id.
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`Unified filed this IPR independently, consistent with these long-standing
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`practices. Unified alone decided to challenge the claims of the ’239 patent, and
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` an earlier challenge that was filed,
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`instituted, and settled by Microsoft (who is not a Unified member). See EX2004, 149;
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`EX2013, 7-12. The ’239 patent is owned by Bradium, an entity openly related to
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`General Patent Corporation (“GPC”), a well-known patent assertion entity, and has
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`long been openly listed on their website. The Board already noted that the ’239 patent
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`was likely unpatentable,2 and in view of public information about Bradium’s business,
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`Bradium could assert this patent again. See EX2004, 153. Thus, Unified acted in
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`accordance with its independent mission to challenge weak patents that are within its
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`covered Zones and was not driven by the desires of a specific member.
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`To avoid any doubt, Unified voluntarily provided substantial discovery,
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`including its Membership Agreements, had its CEO deposed, and searched for
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`communications with any Unified member regarding the ’239 patent, Bradium, or
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`GPC prior to institution. There are no such communications. EX2013, 2. Unified
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`filed the instant petition without insight, input, or direction from any of its members.
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`See EX2013, 2-5.
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`B. None of the salient facts in AIT are present here
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`In AIT, a third-party client of petitioner RPX made substantial payments to RPX
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`shortly before RPX filed an IPR petition, discussed the patent and related litigation
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`2 See Microsoft Corp. v. Bradium Tech. LLC, IPR2016-01897, (P.T.A.B. April 5,
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`2017), Paper 17, 33-34 (instituting an IPR of the ’239 patent).
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`with RPX, and shared a board member with RPX. See AIT, 897 F.3d at 1340-41. RPX
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`also discussed and sought to negotiate a settlement or license on behalf of the third-
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`party, and the third-party was time-barred from filing further challenges. See AIT, 897
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`F.3d at 1342. Given this, the Federal Circuit determined that the Board did not
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`appropriately consider all of the RPI factors and remanded for further discovery and
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`consideration. See id. at 1351.
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`The facts here are markedly different. There is a clear, independent explanation
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`for why Unified filed this IPR: the ’239 patent falls squarely within one of Unified’s
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`Zones, has been asserted by an NPE, and had previously been held, preliminarily, as
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`likely unpatentable. See EX2013, 6. Neither Google, Apple, or any other member
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`made Unified aware of the ’239 Patent or even of Bradium and GPC generally, and
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`none expressed to Unified any interest in the ’239 Patent. See EX2013, 14; EX2004,
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`134. Unified shares no managers, directors, or any other officer with any of its
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`members. EX2013, 17.3 Unified never sought to ascertain the desires of any of its
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`3 Contrary to Bradium’s speculation, Unified uses the phrases “tightly aligns”
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`(EX2020) to indicate that Unified protects Technology Zones in which its members
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`practice, not to convey that it in any way coordinates IPR challenges (which it does
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`not). See EX2004, 94-95 (explaining why Unified set up its “zone structure” to enable
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`it to “work independently”); see also AIT, 897 F.3d at 1357 (noting petitioner’s
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`members, including Google and Apple, when filing this petition. See EX2004, 97-98
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`& 152 (“[W]e don’t have conversations with our members about this, who is licensed
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`. . . .”). Although Bradium speculates that some Unified members “might” be time-
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`barred from filing their own IPR under 35 U.S.C. § 315(b), see POPR, 6-7 & 9,
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`Bradium has offered no actual evidence showing that any Unified member, including
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`Google or Apple, is time-barred from filing its own petition challenging the ’239
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`patent. None are. Only Microsoft has been sued on the challenged patent and
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`Microsoft is not a Unified member. Thus, there is no litigation involving the
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`challenged patents, no communications between Unified and a member regarding the
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`patent, and to Unified’s knowledge, no members had even been threatened with suit.4
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`There is also no evidence of any time bar under § 315(b), a “crucial” fact in AIT.
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`language that “its interests are 100% aligned with those of [its] clients”) (citation
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`omitted); Realtime Adaptive, IPR2018-00883, Paper 29, 15 (noting the RPI analysis
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`must include more than cursory examination of statements about interest alignment).
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`4 Bradium’s vague suggestion in its POPR and in deposition questioning of Unified’s
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`CEO, Kevin Jakel, that it may have threatened parties with suit regarding the
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`challenged patent are the only times Unified has been made aware of the possibility
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`that such threats might exist. See, e.g., EX2004, 145 (noting Unified was unaware of
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`whom, if anyone, Bradium has approached for licensing).
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`Realtime Adaptive, IPR2018-0083, Paper 29, 15 (quoting AIT, 897 F.3d at 1353). No
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`Unified member has filed its own patent challenge to the ’239 patent; none have been
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`sued by Bradium, or, to the best of Unified’s knowledge at the time it filed the Petition,
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`even threatened with suit. See POPR, 7 & 9 (identifying only Microsoft as an entity
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`sued by Bradium and disclosing that Bradium has had “licensing” discussions with
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`Google and Apple); see also EX2004, 178 (noting no member sent Unified any
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`demand letters).
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`C. Bradium’s unsupported speculation does not put RPI at issue
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`Seeking in vain to align this case with AIT, Bradium speculates about the
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`relationship between Unified and its members, arguing that Unified members must
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`benefit from this IPR because they practice in Technology Zones that Unified protects.
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`POPR, 8. Speculation and attorney argument, however, are insufficient to put RPI at
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`issue or to overcome the lengthy evidence of record. See Worlds, 903 F.3d at 1244
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`(“A mere assertion that a third party is an unnamed real party in interest, without any
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`support for that assertion, is insufficient to put the issue into dispute.”).
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`Regardless, Bradium’s speculation, even were it properly supported, is
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`incorrect. Unified files IPR petitions to protect Technology Zones, not individual
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`members. See EX2004, 94-95. Many companies practicing in a Unified Technology
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`Zone may be threatened by NPEs, whether Unified members or otherwise. None of
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`Unified’s members have been sued by Bradium. In the absence of suit, it is unclear
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`whether any entity would benefit from an unpatentability determination of these
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`particular challenged claims; rather, it is as likely (and speculative) that other members
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`or other entities could already be licensed, or that this challenge may have frustrated
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`others’ litigation goals. See EX2004, 152-53 (“[B]ecause we don’t have conversations
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`with our members about this, who is licensed . . . we don’t have any knowledge of
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`what their litigation strategy is. . . . [W]e are just as likely to file an IPR with a claim
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`construction that they don’t like as we are to file a claim construction that they love.”).
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`Bradium’s “benefit” theory alone is too speculative to support a finding that any other
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`entity is an RPI, even had they supported it with evidence.
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`Further, Unified’s members pay their fees once annually. See EX2013, 5.
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`Unlike in AIT, there is no evidence here of a non-party paying fees suspiciously near
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`the filing of the IPR. See AIT, 897 F.3d at 1342.
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`The only record fact proffered by Bradium is that Google and Apple are Unified
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`members. This is not enough. See Realtime Adaptive, IPR2018-00883, Paper 29, 19
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`(finding that “the general benefits accruing from such membership” are insufficient
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`“under the principles espoused by AIT and the common law to require that all [Unified]
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`members be identified as RPIs under § 312(a)(2)”). Bradium’s improper test and
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`speculation do not suffice to raise the issue of RPI, much less to defeat the burden of
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`persuasion to overcome the evidence voluntarily offered by Unified. See Worlds, 903
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`F.3d at 1242 (“[A] patent owner must produce some evidence to support its argument
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`that a particular third party should be named a [RPI].”).
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`IV. CONCLUSION
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`Unified has an independent, well-recognized goal of challenging poor-quality
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`patents in its covered Technology Zones, and has clearly, thoroughly, and
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`transparently maintained a business model to prevent control or direction by its
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`members. Here, it has used its judgment and in-house resources to challenge a patent
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`already found, preliminarily, to be reasonably likely to be held unpatentable. In
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`recognition of AIT, Unified provided voluntary discovery, including a deposition of
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`Unified’s CEO and founder, Kevin Jakel. Despite all of this, Bradium cannot point to
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`any non-speculative evidence supporting that there is another RPI. Its conclusory
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`attorney arguments do not suffice to show that either Google or Apple is an RPI here.
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`Bradium’s RPI challenge to the RPI certification should be rejected.
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`Dated: November 7, 2018
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`Respectfully,
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`/ David L. Cavanaugh/
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`Jonathan Stroud
`Registration No. 72,518
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`Roshan Mansinghani
`Registration No. 62,429
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`David L. Cavanaugh
`Registration No. 36,476
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 7, 2018, I caused a true and correct copy
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`of the foregoing materials:
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`• PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
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`RESPONSE ON REAL PARTIES IN INTEREST
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`to be served upon the following by ELECTRONIC MAIL:
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`Chris J. Coulson
`Email ccoulson@bdiplaw.com
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`Michael N. Zachary
`Email mzachary@bdiplaw.com
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`Lauren N. Robinson
`Email lrobinson@bdiplaw.com
`
`Michael E. Shanahan
`Email: mshanahan@generalpatent.com
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`/ Jonathan E Robe /
`Jonathan Robe
`Registration No. 76,033
`Wilmer Cutler Pickering Hale
`and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
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`
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`i
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`PUBLIC REDACTED VERSION
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 6, 2020 a copy of the foregoing
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`REDACTED PEITIONER’S REPLY TO PATENT OWNER’S
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`PRELIMINARY RESPONSE ON REAL PARTIES IN INTEREST
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`(PAPER NO. 25) was served via electronic mail, as agreed to by counsel, upon
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`the following counsel for Patent Owner:
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`Chris J. Coulson
`Bunsow De Mory LLP
`101 Brambach Rd.
`Scarsdale, NY 10583
`Email:ccoulson@bdiplaw.com
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`Michael N. Zachary
`Bunsow De Mory LLP
`701 El Camino Real
`Redwood City, CA 94063
`Email: mzachary@bdiplaw.com
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`Michael E. Shanahan
`Email: mshanahan@generalpatent.com
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`/Ashley F. Cheung/
`Ashley F. Cheung
` Paralegal
` Unified Patents, LLC
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`PUBLIC REDACTED VERSION
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