`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`
`____________________
`
`Case IPR2018-00952
`Patent No. 9,253,239
`____________________
`
`BRADIUM TECHNOLOGIES LLC’S
`SUR-REPLY TO PETITIONER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.108(c)
`
`PUBLIC REDACTED VERSION
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`Unified Has Not Met Its Burden To Show It Is the Sole RPI ........................ 1
`CONCLUSION ............................................................................................... 6
`
`
`
`
`I.
`II.
`
`
`
`PUBLIC REDACTED VERSION
`
`
`
`IPR2018-00952
`U.S. Patent No. 9,253,239
`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) ................................................................. 2, 3, 4, 5
`
`California Physicians’ Serv. v. Aoki Diabetes Research Inst.,
`163 Cal. App. 4th 1506 (2008) .............................................................................. 2
`Unified Patent v. Plectrum LLC,
`IPR 2017-01430 (Nov. 13, 2018) .......................................................................... 4
`Unified Patents Inc. v. Realtime Adaptive Streaming, LLC,
`IPR2018-00883 (Oct. 11, 2018) .........................................................................4, 5
`
`
`
`
`
`
`
`iii
`
`PUBLIC REDACTED VERSION
`
`
`
`PUBLIC REDACTED VERSION
`
`IPR2018-00952
`
`US. Patent No. 9,253,239
`
`EXHIBIT LIST
`
`USPTO Public PAIR screen capture for Correspondence Address
`
`and Attorney/Agent Information for Application No. 14/547, 148
`
`(’293 Patent)
`
`Notice of Acceptance of Power of Attorney, Date Mailed
`03/11/2016, for A lication No. 14/547,148 ’293 Patent
`
`2003
`
`Declaration of Michael N. Zachary in Support of Patent Owner’s_
`PROTECTIVE ORDER MATERIAL: Transcript of Deposition of_
`
`2004
`
`
`
`zoos
`
`2006
`
`2007
`
`Join, Unified Patents (May 1 7, 201 8),
`
`https://web.archive.org/web/201805l7015601/https://www.unifiedp
`
`atents.com/j oin/
`
`2008
`
`PROTECTIVE ORDER MATERIAL: Unified Patents Membership
`
`2009
`
`PROTECTIVE ORDER MATERIAL: Exhibit A: Subscription Form
`
`2010
`
`Belcher, Marta, et al., “Hacking the Patent System: A guide to
`
`Alternative Patent Licensing for Innovators,” Juelsgaard Intellectual
`
`Property & Innovation Clinic Stanford Law School, dated May 2014
`
`Protected Zones, Excerpt of United Patents (Oct. 27, 2016),
`
`https://web.archive.org/web/20161027135832/http://www.unifiedpat
`
`ents.com:80/zones/
`
`US. Patent No. 9,253,239, “Optimized Image Delivery Over
`
`Limited Bandwidth Communication Channels,” issued Feb. 2, 2016
`
`(“’239 Patent”) (Not filed)
`
`2013
`
`PROTECTIVE ORDER MATERIAL: Petitioner’s Voluntary
`
`Interrogatory Response
`
`iv
`
`PUBLIC REDACTED VERSION
`
`
`
`PUBLIC REDACTED VERSION
`
`IPR2018-00952
`
`US. Patent No. 9,253,239
`
`Exhibit
`
`2014
`
`Bradium Technologies LLC, Unified Patents (August 3, 2015),
`
`https://web.archive.org/web/20150803044103/http://bradiumtechnol
`
`ogies.com/
`
`2015
`
`2016
`
`Bradium Technologies LLC v. Microsoft Corp., Complaint, filed
`
`Jan. 9, 2015
`
`2017
`
`Bradium Technologies and Microsoft Settle Patent Lawsuit,
`
`Bradium Technologies (Oct. 17, 2017),
`
`http://Www.bradiumtechnologies.com/bradium/bradium—
`
`technologies-and—microsoft—settle-patent—lawsuit
`
`2018
`
`Unified Patents, backed by Google, takesfight to patent trolls, Don
`
`Reisinger, CNET (Apr. 8 2013)
`
`2019
`
`Don Clark, New Venture Enters Patent Fray, Wall Street Journal,
`
`published Apr- 7, 2013
`
`2020
`
`The Gloves are 019": Unified Patents Inc. Unveils Its ‘NPE
`
`
`
`Deterrent’ Strategy, Unified Patents (September 23, 2013),
`
`http://justdemo. in/unified/2013/09/23/the-gloves-are-off-unified-
`
`patents—inc-unveils—its-npe—deterrent-strategy//
`
`Unified Patents Challenges Clouding IP Patent Seeks to Push Patent
`
`Trolls Out of Cloud Storage, Unified Patents (September 23, 2013),
`
`http://unifiedpatents.com/2013/09/23 unified—patents-challenges-
`
`clouding-ip-patent-seeks-to—push-patent-trolls-out—of-cloud-storage/
`
`Unified has challenged almost all of201 7 ’s most prolific NPEs,
`
`United Patents (Jul. 5, 2017),
`
`https ://www.unifiedpatents.com/news/20 1 7/7/5/according—to-rpx-
`
`datea-has-challenged-almost-all-of-20 1 7s-most-prolific-npes
`
`2023
`
`Email fiom Unified Patents to Michael Zachary re “Unified reaches
`
`100 challenges,” dated Nov. 15, 2017
`
`2024
`
`Unified Patents (January 1, 2014),
`
`https://web.archive.org/web/20140101033720/http://unifiedpatents.c
`
`om/
`
`PUBLIC REDACTED VERSION
`
`
`
`PUBLIC REDACTED VERSION
`
`IPR2018-00952
`
`US. Patent No. 9,253,239
`
`Exhibit
`
`2025
`
`Eric Coe, Unified Patents Adds AIA Reviews to Anti— ‘Troll’ Arsenal,
`
`Law360 (Jun. 23, 2015),
`
`https://WWW.law360.com/articles/668619/print?section=ip
`
`2026
`
`Declaration of C. Coulson in support of Bradium Technologies
`
`2027
`
`2028
`
`LLC’s Preliminary Patent Owner’s Response
`
`Bradium Technologies LLC’s Disclaimer of Claims 1-19, 21-25
`
`Orthogonalitfy, Wikipedia,
`
`https://en.wikipedia.org/wiki/Orthogonality
`
`2029
`
`IPRs, Balancing Eflectiveness vs. Cost, RPX (June 17, 2016)
`
`https://www.rpxcorp.com/20 1 6/06/ 1 7/iprs-balancing—effectiveness-
`
`vs—cost/
`
`2030
`
`How Much does IPR Cost?, Patent Trademark Blog,
`
`2037
`
`203 1
`
`Microsoft Corp. v. Bradium Techs. LLC, IPR2016-01897 (US. Pat-
`
`No. 9,253,239), Paper 2 (Petition) (P.T.A.B. Sept. 30, 2016)
`
`2032 Microsoft Corp. v. Bradium Techs. LLC, IPR2016-01897 (U.S. Pat.
`
`No. 9,253,239), Paper 17 (Institution Decision) (P.T.A.B. April 5,
`
`20 l 7)
`
`NPE Zones: Deter bad NPE conduct, Unified Patents (Sept. 20,
`
`201 8), https://Www.unifiedpatents.com/npe/
`
`Bradium Technologies LLC v Iancu, No. 17-2579, USPTO
`
`Director’s Opposition to Appellant’s Motion for Leave to File
`
`Supplemental Brief, Dkt No- 74 (Filed Sept. 4, 2018)
`
`2035
`
`Declaration of L. Quan in support of Bradium Technologies LLC’s
`
`Preliminary Patent Owner’s Response
`
`2036
`
`“Summary of Findings: Search Results Using Unified Patents
`
`Portal,” prepared by L. Quan.
`
`Declaration of M. Shanahan in support of Bradium Technologies
`
`LLC’s Preliminary Patent Owner’s Response
`
`2038
`
`Unified ’s Real-Party-in-Interest PTAB Panel Decisions, Unified
`
`Patents (July 5, 2016), https://www.unifiedpatents.com/news/real-
`
`party-in-interest-panel-decisions
`
`Vi
`
`PUBLIC REDACTED VERSION
`
`
`
`IPR2018-00952
`U.S. Patent No. 9,253,239
`Bradium Technologies LLC (“Bradium”) files this Preliminary Patent
`
`Owner Sur-Reply (Paper 27) limited to the “real party in interest” (RPI) issue
`
`pursuant to the Board’s Order on November 20, 2018 (Paper No. 4).
`
`I.
`
`Unified Has Not Met Its Burden To Show It Is the Sole RPI
`In its reply, Unified invites legal error by claiming that the AIT case
`
`“focused” on “third-party funding, direction and control,” and that these are “[t]he
`
`most important factors” and “central.” (Reply at 2, 5.). That is the exact opposite
`
`of what AIT said the focus was. Unified ignores AIT’s statements (1) that Congress
`
`intended the term “real party in interest” to “apply broadly – sweeping in not only
`
`what might be traditionally known as real parties in interest . . . ;” (2) that
`
`“Congress intended for it [RPI] to have an expansive formulation;” (3) that “there
`
`could be multiple real parties in interest;” (italics in original) (4) that “Congress
`
`intended that the term ‘real party in interest’ have its expansive common-law
`
`meaning;” (5) that “the focus of the real-party-in-interest inquiry is on the
`
`patentability of the claims challenged in the IPR petition, bearing in mind who
`
`will benefit from having those claims canceled or invalidated;” (6) that “the
`
`common law seeks to ascertain who, from a ‘practical and equitable’ standpoint,
`
`will benefit from the redress” (citing Trial Practice Guide); and (7) that the RPI
`
`inquiry is done “with an eye toward determining whether the non-party is a clear
`
`beneficiary that has a preexisting, established relationship with the petitioner.”
`
`1
`
`PUBLIC REDACTED VERSION
`
`
`
`IPR2018-00952
`U.S. Patent No. 9,253,239
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1346-1351 (Fed.
`
`Cir. 2018) (“AIT”). The Federal Circuit could not have been clearer that the
`
`definition of RPI is very broad and that the “focus” is on who benefits and whether
`
`the non-party has an established relationship with the petitioner.1
`
`In an effort to avoid AIT, Unified mischaracterizes Bradium’s argument.
`
`Unified states that Bradium contends that any member of a for-profit entity that
`
`files IPRs is an RPI. (Reply at 1.) Bradium has made no such contention.
`
`Bradium contends only that two specific members of Unified – Apple and Google
`
`– are RPIs. Those two members
`
`
`
`.2 Both are
`
`obvious potential licensees of the ’239 patent, as the leading providers of mapping
`
`
`1 Unified also ignores the Trial Practice Guide’s citation to California
`
`Physicians’ Serv. v. Aoki Diabetes Research Inst., 163 Cal. App. 4th 1506, 1523-
`
`1525 (2008), for its holding that “preclusion can apply even in the absence of . . .
`
`control”). Trial Practice Guide (“TPG”), 77 Fed. Reg. 48760 (Aug. 14, 2012).
`
`2 During deposition, Unified’s CEO testified that its total revenues were
`
`EX2004, 127:14-19.
`
`14, 184:12-14.
`
`2
`
`.
`
`. EX2004, 183:12-
`
`PUBLIC REDACTED VERSION
`
`
`
`IPR2018-00952
`U.S. Patent No. 9,253,239
`software and services to which the ’239 patent is directed. EX2037 at ¶ 5.
`
`Microsoft has already been sued on Bing Maps, and settled, as Unified is well
`
`aware. Id., ¶¶ 7, 10. Both Apple and Google have held licensing discussions with
`
`Bradium concerning the ’239 patent. Id., ¶¶ 8-9. The evidence shows that they
`
`clearly would benefit from Unified’s IPR, not just as a general benefit that might
`
`be available to all members of Unified, but as a specific benefit to them.
`
`Further, the evidence shows that Unified has previously filed 37 IPRs on
`
`patents that Google and Apple have been sued on. EX2035, ¶¶ 8-9. It also shows
`
`that the only substantial benefit that Google and Apple receive from their
`
`membership is that Unified seeks to invalidate patents they might infringe.
`
`EX2004, 62:10-63:3; EX2013, 20-21; EX2025, 1. The evidence also shows that
`
`Unified from the start has expressly identified Google as a company for whom it
`
`would seek to (in its own words) “level the playing field.” EX2020. See AIT, 897
`
`F.3d at 1351 (noting key TPG Guide factor: “relationship with the petitioner”).
`
`Unified claims that a rule focusing on benefits and relationship would sweep
`
`in parties to joint defense agreements and non-profit trade associations, both of
`
`which it says are excluded from the definition of RPI in the Trial Practice Guide.
`
`Putting aside that the Federal Circuit expressly held in AIT that the focus of the
`
`IPR inquiry is on the benefits and relationship, and that the Trial Practice Guide
`
`says that membership in a trade association is a relevant consideration, Unified’s
`
`3
`
`PUBLIC REDACTED VERSION
`
`
`
`IPR2018-00952
`U.S. Patent No. 9,253,239
`argument is in error. Under a typical Joint Defense Agreement, members address
`
`defense of a lawsuit, and do not fund IPRs brought by others, unlike here where
`
`Google and Apple directly fund Unified precisely because Unified files IPRs. And
`
`trade associations, unlike Unified’s for profit IPR business, are typically formed as
`
`non-profit associations to lobby governmental organizations to achieve
`
`overarching policy objectives, not to challenge specific, privately-owned property
`
`rights. Unified is not a trade association at all. It simply files IPRs, for profit.
`
`Unified also relies heavily on the Board’s decision in Unified Patents Inc. v.
`
`Realtime Adaptive Streaming, LLC, IPR2018-00883 (Oct. 11, 2018). That decision
`
`is inconsistent with AIT, and is not binding on this panel.3 Respectfully, the Board
`
`there paid little heed to AIT’s repeated pronouncements that RPI has an expansive
`
`meaning, and that the focus is on who benefits from an invalidity determination
`
`and what that non-party’s relationship with the petitioner is. The Board in
`
`Realtime, like Unified here, sought to distinguish AIT on its facts, but the practical
`
`effect is to limit AIT to its specific facts. Unified v. RealTime at 16-17. Nothing in
`
`AIT indicates that the Federal Circuit regarded its pronouncements as so limited.
`
`
`3 Bradium respectfully contends that the PTAB’s recent, similar decision in
`
`Unified Patent v. Plectrum LLC, IPR 2017-01430 (Paper 30, Nov. 13, 2018), also
`
`does not comport with AIT, for the same reasons.
`
`4
`
`PUBLIC REDACTED VERSION
`
`
`
`IPR2018-00952
`U.S. Patent No. 9,253,239
`Further, the Board in Realtime minimized facts that were in common
`
`between AIT and Realtime. For example, RPX was a for-profit company set up to
`
`help paying members by filing IPRs to help them avoid litigation and to reduce
`
`their expenses, and AIT found that this alone implied that “RPX can and does file
`
`IPRs to serve its clients’ financial interests, and that a key reason clients pay RPX
`
`is to benefit from this practice . . . .” AIT, 897 F.3d at 1352. There is no difference
`
`between Unified and RPX insofar as this implication is concerned. Indeed, one of
`
`the key considerations set forth in the TPG, as AIT noted, is the “nature of the
`
`entity filing the petition.” AIT, 897 F.3d at 1354 (emphasis added).
`
`Further, the court in AIT criticized the Board there because it had found
`
`sufficient the fact that RPX had articulated an independent interest in pursuing
`
`IPRs. Id. at 1353. The court noted that the point was not to prove RPX’s interest,
`
`rather “it is to probe the extent to which Salesforce- as RPX’s client- has an
`
`interest in and will benefit from RPX’s actions, and inquire whether RPX can be
`
`said to be representing that interest . . . . The Board’s focus on RPX’s motivations
`
`to the exclusion of Salesforce’s reveals its misunderstanding of controlling legal
`
`principles.” Id. The court also found that the absence of communications about
`
`the IPR between RPX and Salesforce could indicate RPX’s “willful blindness,”
`
`and that the Board had not properly considered this fact. Id. at 1355.
`
`
`
`5
`
`PUBLIC REDACTED VERSION
`
`
`
`IPR2018-00952
`U.S. Patent No. 9,253,239
`Here, too, Unified has established a clever, consciously blind, business
`
`model in an effort to circumvent the RPI issue. It
`
`
`
` (wink, wink), while filing IPRs that serve its members’
`
`financial interests. But even if Google and Apple did not know in advance that
`
`Unified specifically intended to attack the ’239 patent, they do know that they are
`
`paying Unified to file IPRs to protect them. They rely on Unified to select which
`
`patents to attack. That does not mean that Apple and Google don’t fund the IPRs,
`
`or that the IPRs are not filed at their behest.
`
`Finally, Unified makes much of the fact that there is currently no litigation
`
`against a Unified member, and that the only suit on the ’239 patent was against a
`
`non-member. This does not change the fact that the patent has been asserted in
`
`litigation, and that Google and Apple are obvious potential licensees. It would be
`
`reasonable to infer that if Microsoft were sued on Bing Maps, Google and Apple
`
`might be sued on Google Maps and Apple Maps. An IPR on the ’239 patent would
`
`clearly be of benefit to them. Unified does not deny that this is so.
`
`II. CONCLUSION
`Unified has failed to meet its burden to show that it is the only RPI. It has
`
`not shown that Google and Apple would not benefit from this IPR. It has not
`
`shown that Google and Apple are
`
` simply for
`
`the joy of it. Accordingly, the petition should be dismissed.
`
`6
`
`PUBLIC REDACTED VERSION
`
`
`
`
`Dated: December 3, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00952
`U.S. Patent No. 9,253,239
`
`
`
`
`
`/s/ Chris J. Coulson
`Chris J. Coulson (Reg. No. 61,771)
`BUNSOW DE MORY LLP
`101 Brambach Rd.
`Scarsdale, NY 10583
`Tel.: (646) 502-6973
`ccoulson@bdiplaw.com
`
`Michael N. Zachary (pro hac vice)
`BUNSOW DE MORY LLP
`701 El Camino Real
`Redwood City, CA 94063
`Tel.: (650) 351-7248
`mzachary@bdiplaw.com
`
`Counsel for Patent Owner
`
`7
`
`PUBLIC REDACTED VERSION
`
`
`
`IPR2018-00952
`U.S. Patent No. 9,253,239
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §42.6(e), the undersigned certifies that on
`
`December 3, 2018, the foregoing Bradium Technologies LLC’s Sur-Reply to
`
`Petitioner’s Preliminary Response Pursuant to 37 C.F.R. §42.108(c) was served
`
`via electronic mail upon the following counsel of record for the Petitioner:
`
`David L. Cavanaugh, Reg. No. 36,476
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`
`Daniel V. Williams, Reg. No. 45,221
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: Daniel.Williams@wilmerhale.com
`
`Jonathan E. Robe, Reg. No. 76,033
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: Jonathan.Robe@wilmerhale.com
`
`Jonathan Stroud (Reg. 72,518)
`Unified Patents Inc.
`1875 Connecticut Avenue, N.W., Floor 10
`Washington, DC 20009
`Tel: (202) 805-8931
`jonathan@unifiedpatents.com
`
`
`
`
`
`
`PUBLIC REDACTED VERSION
`
`
`
`IPR2018-00952
`U.S. Patent No. 9,253,239
`
`
`
`/s/ Chris J. Coulson
`Chris J. Coulson (Reg. No. 61,771)
`BUNSOW DE MORY LLP
`101 Brambach Rd.
`Scarsdale, NY 10583
`Tel.: (646) 502-6973
`ccoulson@bdiplaw.com
`
`Counsel for Patent Owner
`
`Roshan Suresh Mansinghani (Reg. 62,429)
`Unified Patents Inc.
`13355 Noel Road, Suite 1100
`Dallas, TX 75240
`Tel: (214) 945-0200
`roshan@unifiedpatents.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PUBLIC REDACTED VERSION
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on February 6, 2020 a copy of the foregoing
`
`PEITIONER’S REDACTED VERSION OF BRADIUM TECHNOLOGIES
`
`LLC’S SUR-REPLY TO PETITIONER’S PRELIMINARY RESPONSE
`
`PURSUANT TO 37 C.F.R. §42.108(C) (PAPER NO. 30) was served via
`
`electronic mail, as agreed to by counsel, upon the following counsel for Patent
`
`Owner:
`
`Chris J. Coulson
`Bunsow De Mory LLP
`101 Brambach Rd.
`Scarsdale, NY 10583
`Email:ccoulson@bdiplaw.com
`
`Michael N. Zachary
`Bunsow De Mory LLP
`701 El Camino Real
`Redwood City, CA 94063
`Email: mzachary@bdiplaw.com
`
`Michael E. Shanahan
`Email: mshanahan@generalpatent.com
`
`/Ashley F. Cheung/
`Ashley F. Cheung
` Paralegal
` Unified Patents, LLC
`
`PUBLIC REDACTED VERSION
`
`