Trials@uspto.gov
`571-272-7822
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` Paper 22
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` Entered: December 3, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01047
`Patent 9,516,129 B2
`____________
`
`
`Before THU A. DANG, KARL EASTHOM, and JACQUELINE T. HARLOW,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
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`
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`
`
`PUBLIC VERSION
`
`GOOGLE EXHIBIT 1056
`GOOGLE v. SEVEN NETWORKS
`IPR2018-01047
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`Page 1 of 49
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`571-272-7822
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` Paper 22
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` Entered: December 3, 2018
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`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01047
`Patent 9,516,129 B2
`____________
`
`
`Before THU A. DANG, KARL EASTHOM, and JACQUELINE T. HARLOW,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
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`
`
`PUBLIC VERSION
`
`GOOGLE EXHIBIT 1056
`GOOGLE v. SEVEN NETWORKS
`IPR2018-01047
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`Page 1 of 49
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`IPR2018-01047
`Patent 9,516,129 B2
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`A. Background
`
`I.
`
`INTRODUCTION
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`Google LLC (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1–11, 13, 14, 17–27, 29, 30, 34, and 35 (“the challenged
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`claims”) of U.S. Patent No. 9,516,129 B2 (Ex. 1001, “the ’129 patent”).
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`Paper 2 (“Pet.”). SEVEN Networks, LLC (“Patent Owner”) filed a
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`Preliminary Response (Paper 10 “Prelim. Resp.”). Pursuant to our prior
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`authorization, Petitioner filed a Reply (Papers 15, 16, “Reply”) to the Patent
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`Owner Preliminary Response as to the issue of whether Petitioner had
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`named all of the real parties in interest, and Patent Owner filed a Sur-Reply
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`(Papers 19, 20, “Sur-Reply”).1 The parties also filed Motions to Seal
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`(Papers 15, 20) certain un-redacted versions of their papers (Papers 16, 18)
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`and certain exhibits, and have agreed to the Revised Protective Order (Paper
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`15, Attachment A). Under 35 U.S.C. § 314(a), an inter partes review may
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`not be instituted unless the information presented in the petition “shows that
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.”
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`For the reasons stated below, we determine that there is a reasonable
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`likelihood that Petitioner would prevail with respect to at least one challenged
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`claim. We hereby institute inter partes review of all challenged claims on all
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`grounds of unpatentability asserted in the Petition.
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`1 Both parties filed un-redacted and redacted versions of their papers. Our
`citations correspond to the un-redacted version of each paper.
`2
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`IPR2018-01047
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`B. Related Proceedings
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`
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`According to Petitioner, the ’129 patent is involved in SEVEN Networks,
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`LLC v. Google LLC, Case No. 2:17-cv-00442 (E.D. Tex. May 17, 2017) and
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`Google LLC v. SEVEN Networks, LLC, Case No. 3:17-cv-04600 (N.D. Cal.
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`August 10, 2017). Pet. 70. Petitioner also lists related proceedings: SEVEN
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`Networks, LLC v. ZTE (USA) Inc., Case No. 3:17-cv-01495 (N.D. Tex. June 6,
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`2017); SEVEN Networks, LLC v. ZTE (USA) Inc., Case No. 2:17-cv-00440
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`(E.D. Tex. May 17, 2017); and SEVEN Networks, LLC v. Samsung Electronics
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`CO., Ltd., Case No. 2:17-cv-00441 (E.D. Tex. May 17, 2017). Id. Petitioner
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`also states that a concurrent request for inter partes review, IPR2018-01048,
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`also challenges claims 1–11, 13, 14, 17–27, 29, 30, 34, and 35 of the ’129
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`patent on a different invalidity ground. Id.
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`
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`C. The ’129 Patent
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`The ’129 patent issued on December 6, 2016, from an application filed
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`August 25, 2014, and is a division of application No. 13/188,553, filed on July
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`22, 2011, now Patent No. 8,886,176. Ex. 1001, [45], [22], and [62].
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`The ’129 patent relates to a method for “reducing traffic in a cellular
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`network used to satisfy data requests made by a mobile application.” Id.,
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`Abstract. According to the ’129 patent, a high power mode consumes much
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`more power than an idle mode, quickly draining the battery. Id. at 1:67–2:3.
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`Thus, the ’129 patent explains that there is a need to “stay on high power mode
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`as short as possible” and use periodic keep-alive messages to maintain an
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`always-on TCP/IP connection as infrequently as possible. Id. at 2:6–16.
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`IPR2018-01047
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`In various embodiments, characteristics of user activity on a device can
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`be used to locally adjust behavior of the device, wherein the device’s radio
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`controller can adjust the power mode of the radio (e.g., higher or lower power
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`mode) depending on characteristics of user activity. Id. at 12:9–23.
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`Characteristics of user activity on the device can also be used to cause another
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`(remote) device to modify its communication frequency therewith. Within the
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`device, a local proxy uses characteristics information of user behavior to
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`instruct the remote device as to how to modulate is communication frequency
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`(e.g., decreasing data push frequency if the user is idle, requesting notification
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`if new data, changed data, or data of importance becomes available, etc.).
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`Id. at 12:24–38.
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`The local proxy includes a request/transaction manager which detects,
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`identifies, intercepts, processes, manages data requests initiated on the device.
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`The request/transaction manager determines how and when to process a given
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`request or transaction and prioritizes request or transactions made by
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`applications and users at the device based on transaction characteristics.
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`A connection manager adjusts the radio mode (e.g. high or low power mode)
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`based on the amount of data needed to be transferred, wherein the radio power
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`mode (high or low) can be adjusted based on time criticality/sensitivity of the
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`transaction. For example, a time-critical transaction resulting from a user-
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`initiated data transfer, an application running in the foreground, or any other
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`event meeting a certain criteria, can trigger the use of high power radio mode.
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`Id. at 12:53–13:24.
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`4
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`For an IP connection that sends any and all changes to the other
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`endpoints, to minimize the negative battery drain effect, the invention seeks to
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`collect low priority changes and send them in batches rather than individually.
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`Id. at 28:17–20. For manual sync, high and low priority changes are brought
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`into sync but a client will not automatically send low priority changes and will
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`send unsent low priority changes to the server with any high priority change.
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`Id. at 28:43–59.
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`The client monitors user activity on the device, wherein after a default
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`time has expired since the last end user device activity, the device goes into a
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`power saving mode. Id. at 33:9–22. Any activity on the device takes the device
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`out of the power saving mode. Id. at 33:44–46.
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`D. Illustrative Claim
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`Of the challenged claims, claims 1, and 17 are independent. Claims
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`2–11, 13, 14, and 34 depend from claim 1. Claims 18–27, 29, 30, and 35
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`depend from claim 17. Claim 1 is illustrative:
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`1. A mobile device which improves network resource utilization in a
`wireless network, the mobile device, comprising:
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`a radio;
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`user interface;
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`a memory unit having instructions stored thereon;
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`a processor configured to:
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`enter a first power management mode, wherein to enter the first
`power management mode is based on input from a user;
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`5
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`while in the first power management mode, block transmission of
`outgoing application data requests for at least one application
`executing in a background of the mobile device and allow
`transmission of outgoing application data requests for at least one
`application executing in a foreground of the mobile device;
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`enter a second power management mode, wherein entry into the
`second power management mode is based on a detected activity
`status, wherein the detected activity status is based on a backlight
`status of the mobile device being off;
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`while in the second power management mode, block transmission
`of outgoing application data requests for at least one application
`executing in background of the mobile device for a predetermined
`period of time.
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`E. Evidence of Record
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` Petitioner relies upon the references listed below (Pet. 20).
`
`Reference
`
`Exhibit
`
`Li et al.
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`US 2010/0077035 A1, published March 25, 2010
`(“Li”)
`
`Black et
`al.
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`US 2011/0185202 A1, published July 28, 2011
`(“Black”)
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`1005
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`1006
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`
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`Petitioner also relies on the Declaration of Justin Douglas Tygar, Ph.D.
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`(Ex. 1003).
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`Patent 9,516,129 B2
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`F. Asserted Grounds of Unpatentability
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`Petitioner asserts the following ground of unpatentability (Pet. 20):
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`Claims
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`Basis
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`References
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`1–11, 13, 14, 17–27, 29,
`30, 34, and 35
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`§ 103
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`Li and Black
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`
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`II. ANALYSIS
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`A. Whether Petitioner Identified All Real Parties in Interest under
`§ 312
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`Under 35 U.S.C. § 312(a)(2), a petitioner is required to identify all of
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`the real parties in interest (“RPI”) in each inter partes review (“IPR”)
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`proceeding. We generally accept a petitioner’s initial identification of the
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`RPIs unless the patent owner presents some evidence to support its argument
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`that an unnamed party should be included as an RPI. See Worlds Inc. v.
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`Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018) (explaining that “an IPR
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`petitioner’s initial identification of the real parties in interest should be
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`accepted unless and until disputed by a patent owner,” and that “a patent
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`owner must produce some evidence to support its argument that a particular
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`third party should be named a real party in interest”). The petitioner bears
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`the burden of persuasion to demonstrate that it has identified all of the RPIs,
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`and this burden does not shift to the patent owner. Fed. Cir. Id. at 1242−44.
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`Here, Petitioner identifies Google LLC (“Google”) as the sole RPI.
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`Pet. 70. However, Patent Owner argues that the Petition should be denied
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`for failing to identify Google’s parent companies—namely, Alphabet, Inc.
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`(“Alphabet”) and XXVI Holdings, Inc. (“XXVI”)—as well as Samsung
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`Electronics Co., Ltd. and/or Samsung Electronics America, Inc.
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`(collectively, “Samsung”), as RPIs. Prelim. Resp. 13−38. According to
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`Patent Owner, the failure to identify all RPIs “is a fatal and incurable error
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`when, as here, the § 315(b)’s one-year ban has elapsed.” Id. at 13−16.
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`As an initial matter, Patent Owner incorrectly conflates § 312(a)(2)
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`with § 315(b) by applying § 312(a)(2) as part of the timeliness inquiry under
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`§ 315(b). These statutory provisions “entail distinct, independent inquiries.”
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`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1364 (Fed.
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`Cir. 2018) (Judge Reyna’s concurring opinion) (“AIT”). As the U.S. Court
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`of Appeals for the Federal Circuit has noted, it “is incorrect” to “conflate[]
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`‘real party in interest’ as used in § 312(a)(2) and § 315(b), and claim[] that
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`‘§ 312(a)(2) is part and parcel of the timeliness inquiry under § 315.’” Wi-Fi
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`One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en
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`banc) (“Wi-Fi En Banc”). “For example, if a petition fails to identify all real
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`parties in interest under § 312(a)(2), the Director can, and does, allow the
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`petitioner to add a real party in interest.” Id. “In contrast, if a petition is not
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`filed within a year after a real party in interest, or privy of the petitioner is
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`served with a complaint, it is time-barred by § 315(b), and the petition
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`cannot be rectified and in no event can IPR be instituted.” Id.
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`Here, Google is not barred from filing its Petition under § 315(b).
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`In particular, because Google was served on May 18, 2017 with a complaint
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`alleging infringement of the ’129 patent, the Petition was timely filed by
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`Google within one year from May 18, 2017. Ex. 2003, 2; Paper 4, 1. None
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`of the allegedly unnamed parties was served with a complaint alleging
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`infringement of the ’129 patent on or before May 18, 2017: 1) neither
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`Alphabet nor XXVI are named as defendants in the related district court
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`infringement action (Ex. 1040 ¶ 11; Ex. 2003); and 2) Samsung was served
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`with a complaint on May 19, 2017 (after May 18, 2017), wherein the
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`Petition would be within one year from the date of service to Samsung.
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`Thus, even if the allegedly unnamed parties were RPIs, the Petition would
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`not be time-barred under § 315(b) if they were included.
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`Accordingly, the dispositive issues here are whether at least one of the
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`unnamed parties qualifies as an RPI under § 312(a)(2), and if so, whether it
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`would be appropriate to permit Google to add that party. In this proceeding,
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`it is not necessary for us to decide the privity issue under § 315(b), which “is
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`more expansive, encompassing parties that do not necessarily need to be
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`identified in the petition as a ‘real party-in-interest.’” Office Patent Trial
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`Practice Guide (“TPG”), 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012).
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`1. Principles of Law Regarding “Real Party in Interest”
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`
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`“Courts invoke the terms ‘real party-in-interest’ . . . to describe
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`relationships and considerations sufficient to justify applying conventional
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`principles of estoppel and preclusion.” TPG, 77 Fed. Reg. at 48,760. The
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`use of familiar common law terms indicates that “Congress intended to
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`adopt common law principles to govern the scope” of the statute. Wi-Fi
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`One, LLC v. Broadcom Corp., 887 F.3d 1329, 1335 (Fed. Cir. 2018) (“Wi-Fi
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`Remand”).
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`IPR2018-01047
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`“To decide whether a party other than the petitioner is the real party in
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`interest, the Board seeks to determine whether some party other than the
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`petitioner is the ‘party or parties at whose behest the petition has been
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`filed.’” Id. at 1336 (citing TPG, 77 Fed. Reg. at 48,759) (emphasis added);
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`see also AIT, 897 F.3d at 1351 (noting that one of the questions lying at the
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`heart of determining whether an unnamed party is an RPI is “whether a
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`petition has been filed at a nonparty’s ‘behest’”). “A common consideration
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`is whether the non-party exercised or could have exercised control over a
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`party’s participation in a proceeding.”2 TPG, 77 Fed. Reg. at 48,759 (citing
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`Wright & Miller § 4451) (emphasis added). “A party that funds and directs
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`and controls an IPR or post-grant review proceeding constitutes a real party-
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`in-interest, even if that party is not a privy of the petitioner.” Wi-Fi Remand,
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`887 F.3d at 1336 (citation and internal markings omitted) (emphasis added).
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`Also, several relevant factors for determining whether a party is an RPI
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`include the party’s relationship with the petitioner, the party’s relationship to
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`the petition, and the nature of the entity filing the petition. TPG, 77 Fed.
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`Reg. at 48,760; see AIT, 897 F.3d at 1351.
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`There is no bright-line test for determining the necessary quantity or
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`degree of participation in the proceeding to qualify as a real party-in-interest.
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`TPG, 77 Fed. Reg. at 48,759 (citing Gonzalez v. Banco Cent. Corp., 27 F.3d
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`751, 759 (1st Cir. 1994)). An unnamed party’s participation may be overt or
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`
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`2 We address this common consideration in our Decision because Patent Owner
`argues that Alphabet or XXVI controlled or could have controlled over
`Google’s participation in this proceeding. Prelim. Resp. 13−34; Sur-Reply 1−5.
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`covert, and the evidence may be circumstantial, but the evidence, as a whole,
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`must show that the unnamed party possessed effective control from a
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`practical standpoint. Gonzalez, 27 F.3d at 759. This inquiry is not based on
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`isolated facts, but rather must consider the totality of the circumstances. Id.
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`2. Whether Alphabet or XXVI is a Real Party in Interest
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`Petitioner maintains that Google is the sole RPI in this proceeding.
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`See generally Reply. Petitioner asserts that Google alone “funded,
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`controlled, and has the ability to control” the instant proceeding (Reply 2),
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`and that neither Alphabet nor XXVI had control or has the ability to control
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`this proceeding. Reply 4−7, 10−11. In particular, Petitioner contends that
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`Alphabet and XXVI “had no involvement or influence over this IPR,” as
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`“Google alone decided to file” this Petition and directed the preparation of
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`the Petition. Id.
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`Based on the evidence in the present record, we are persuaded by
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`Petitioner’s showing. Here, Petitioner presents testimony from Mr. Joseph
`
`Shear, a member of
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`Mr. Shear testifies that
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`. Ex. 1040 ¶ 2.
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`
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`
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` Id. ¶ 9. Mr. Shear also testifies that “[n]o
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`Alphabet or XXVI officer, director, or employee was consulted regarding
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`the preparation of this IPR petition or the decision to file this IPR petition,”
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`and that
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` Id. ¶¶ 17−18 (citing Ex. 1043).
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`Patent Owner does not rebut this testimony at this time. Nor is there
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`any other evidence in this record that suggests the instant Petition has been
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`filed at the behest of Alphabet or XXVI. Alphabet and XXVI are not named
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`defendants in the related district court infringement action concerning the
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`’129 patent. Ex. 1040 ¶ 11; Ex. 2003.
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` Ex. 1040 ¶ 14. Moreover,
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`neither Alphabet nor XXVI has intervened in the infringement action.
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`Id. ¶ 15. As discussed above, the evidence of record shows that Google
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`independently controls and funds the Petition and this proceeding. Id. ¶¶ 9,
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`16−18.
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`Upon consideration of the entirety of the present record, we are
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`persuaded that Petitioner has sufficiently demonstrated for purposes of this
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`Decision that Alphabet and XXVI are not RPIs to the instant proceeding.
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`We now address Patent Owner’s contentions in turn.
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`Patent Owner argues that the “Board has regularly found that parent
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`corporations are unnamed RPIs.” Prelim. Resp. 16−19; Sur-Reply 1−3.
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`Patent Owner contends that Petitioner’s primary argument “is contrary to
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`law,” because it is based on “the specific relationship between the parent and
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`the ‘proceeding.’” Sur-Reply 3−5. Patent Owner cites several Board
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`decisions and the Federal Circuit’s AIT decision for support. Id. at 1−5;
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`Prelim. Resp. 13−21.
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`However, in making this argument, Patent Owner conflates the RPI
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`inquiry with the privity inquiry by focusing mainly on the relationship
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`between the unnamed parties and Google. The existence of a parent-
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`subsidiary relationship, by itself, is insufficient proof that the parent
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`company is an RPI to the subsidiary’s proceeding. TPG, 77 Fed. Reg. at
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`48,759 (citing Taylor v. Sturgell, 553 U.S. 880, 893−95 (2008); Wright &
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`Miller §§ 4449, 4451) (noting that whether an unnamed party is an RPI “to
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`that proceeding is a highly fact-dependent question” with no “bright line
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`test”). Although Patent Owner contends that Petitioner’s primary argument
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`is based on “the specific relationship between the parent and the
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`‘proceeding’” (Sur-Reply 3−5), prior Board decisions make clear that the
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`RPI inquiry focuses on “the relationship between a party and a proceeding,”
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`and that the relationship between a party and the petitioner alone is not
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`determinative. Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., Case
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`IPR2014-01288, slip op. at 10−11 (Paper 13) (PTAB Feb. 20, 2015)
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`(reviewing prior Board decisions establishing a non-party as an RPI and
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`explaining that in each, “central to the Board’s determination was that a
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`party other than the named petitioner was controlling, or capable of
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`controlling, the proceeding before the Board”). Aruze Gaming is cited
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`approvingly in Judge Reyna’s concurrence in AIT, 897 F.3d at 1365 n.7
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`(noting that the Board in Aruze correctly recognized that “[t]he parties’
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`briefs comingle their analyses of the issues of RPI and privity” and “[t]he
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`two terms describe distinct concepts”); TPG, 77 Fed. Reg. at 48,760
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`(identifying several “[r]elevant factors”).
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`As Petitioner notes (Reply 3–4, n.1), even in a privity analysis, the
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`Supreme Court in Taylor rejected the argument that “[p]reclusion is in order
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`. . . whenever ‘the relationship between a party and a non-party is ‘close
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`enough’ to bring the second litigant within the judgment.” Taylor, 553 U.S.
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`at 898. The Court held in Taylor that a broader doctrine of nonparty
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`preclusion, termed “virtual representation,” was inconsistent with common
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`law and risked violating due process. Id. at 898−900.
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`Patent Owner also overextends the reasoning of AIT. An RPI analysis
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`requires more than determining whether an unnamed party benefits
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`generally from the filing of a petition and has a relationship with the
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`petitioner. Id. at 901 (Taylor makes clear that nonparty preclusion cannot be
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`based on mere “identity of interests and some kind of relationship between
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`parties and nonparties.”); Wi-Fi Remand, 887 F.3d at 1341 (“Wi-Fi’s
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`evidence showed that Broadcom’s interests as to the issue of infringement
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`were generally aligned with those of its customers,” but “there is no
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`evidentiary support for Wi-Fi’s theory that Broadcom was acting at the
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`behest or on behalf of the D-Link defendants.”); Unified Patents, Inc. v.
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`Realtime Adaptive Streaming, LLC, Case IPR2018-00883, slip op. 14−15
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`(Paper 29) (PTAB Oct. 11, 2018).
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`The RPI analysis in AIT turned on considerations not present here.
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`AIT not only involved finding that RPX was a for-profit company that files
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`IPR petitions to benefit its clients, but also proceeded deeper to find
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`extensive and specific ties between RPX and the unnamed party as they
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`relate to the particular proceeding. AIT, 897 F.3d at 1351−53. Unlike here,
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`the unnamed party in AIT was accused of patent infringement, and had a
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`series of communications with RPX related to the specific infringement
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`GOOGLE v. SEVEN NETWORKS
`IPR2018-01047
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`Patent 9,516,129 B2
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`action and post-grant filings challenging the asserted patent, as well as paid
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`RPX “a very significant payment shortly before the IPR petitions . . . were
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`filed.” Id. at 1341−42.
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`Accordingly, we do not agree with Patent Owner’s contention that an
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`unnamed party is an RPI if the unnamed party benefits generally from the
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`filing of a petition and has a relationship with the petitioner. As in AIT, an
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`RPI analysis must proceeded deeper to find specific ties between the
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`petitioner and the unnamed party as they relate to the particular proceeding.
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`For these reasons, the mere existence of a parent-subsidiary relationship
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`between Alphabet or XXVI and Petitioner in this case is insufficient to
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`establish that Alphabet or XXVI is an RPI to the instant proceeding.
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`Patent Owner also argues that because Alphabet is an “involved and
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`controlling” parent, and Google cannot operate independently, “[a]ctive,
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`actual control is not required” for Alphabet to be an RPI. Prelim. Resp.
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`25−34; Sur-Reply 1−5. Patent Owner contends that because Google is a
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`wholly-owned subsidiary of Alphabet, Alphabet controls 100% of Google
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`and authorizes Google’s budget and plans, as well as holds its management
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`responsible for their performance. Id. According to Patent Owner, Alphabet
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`and Google are essentially a single entity, blurring the corporate lines. Id.
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`However, the evidence as a whole shows the contrary. The present
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`record contains no persuasive evidence that Alphabet or any of the unnamed
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`parties could have exercised control of this proceeding. As Petitioner notes
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`(Reply 7−8), Google and other subsidiaries (“Other Bets”) of Alphabet and
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`XXVI purposefully operate independently and separately from each other
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`GOOGLE v. SEVEN NETWORKS
`IPR2018-01047
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`and from the parent companies. See e.g., Ex. 2004, 1−3 (noting that “we are
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`creating a new company, called Alphabet”; “[f]undamentally, we believe
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`this allows us more management scale, as we can run things independently
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`that aren’t very related”; “Alphabet is about businesses prospering through
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`strong leaders and independence”; and “Google financials will be provided
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`separately than those for the rest of Alphabet businesses as a whole”
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`(emphases added)); Ex. 2008, 1 (noting that “[o]ther businesses . . . will be
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`managed separately from the Google business” (emphasis added));
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`Ex. 2010, 1 (noting the goal of creating Alphabet “was to create a holding
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`company structure, where Google could be managed separately from
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`unrelated businesses in other industries” (emphasis added)).
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`Here,
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`
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` and Google alone controlled and funded this
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`proceeding. Ex. 1040 ¶¶ 2, 9, 14−18. The record evidence demonstrates
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`that neither Alphabet nor XXVI influenced, controlled, or has the ability to
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`control this proceeding. Id.
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` Id. ¶ 17; Paper 1, 2.
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` Ex. 1040 ¶ 17.
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`Furthermore, we are not convinced by Patent Owner’s argument that
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`Alphabet is an RPI simply because Alphabet, as a parent company,
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`authorizes Google’s budget and plans, as well as holds its management
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`GOOGLE v. SEVEN NETWORKS
`IPR2018-01047
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`responsible for their performance. Prelim. Resp. 25–27. There is no
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`evidence in the present record that suggests Alphabet or XXVI funded or
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`could have controlled this proceeding. In fact,
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` Ex. 1040 ¶ 18; Ex. 1043. As Petitioner also points
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`out (Reply 8−10), Alphabet allocates resources “for Google as a whole” and
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`is “not directly responsible for Google decisions.” Ex. 2010, 6. Alphabet
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`allocates a single annual budget for Google, and Google’s CEO is
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`“responsible for making decisions about resources to be allocated within and
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`assessing performance of” Google. Id. at 2−3. Google’s CEO has “the
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`authority to and makes key operating decisions for, evaluates performance
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`of, and allocates resources to the product areas and functions within
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`Google.” Id. at 6. The evidence in this entire record as a whole shows, at
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`best, that Alphabet, XXVI, and Google merely have a parent-subsidiary
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`relationship. That is insufficient to establish that Alphabet or XXVI and
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`Google have blurred the lines of corporate separation such that Alphabet or
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`XXVI controlled or could have controlled the Petition or this proceeding.
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`Patent Owner also suggests that, because Google generated a high
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`percentage of Alphabet’s revenue, Alphabet and Google are essentially a
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`single entity and “are separate in name only.” Prelim. Resp. 25. We are not
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`persuaded by this argument, which ignores the corporate separateness of
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`Google and its parent companies, as well as the existence of the “Other
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`Bets” and other portions of Alphabet. Alphabet’s Form 10-K for 2017 states
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`that “[t]hroughout Alphabet, we are also using technology to try and solve
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`GOOGLE v. SEVEN NETWORKS
`IPR2018-01047
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`big problems across many industries,” and that “Alphabet’s Other Bets are
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`early-stage businesses, and our goal is for them to become thriving,
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`successful businesses in the medium to long term.” Ex. 2006, 8.3 Also,
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`“[o]ur self-driving car company, Waymo, continues to progress the
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`development and testing of its technology.” Id. Therefore, the evidence in
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`the present record does not support Patent Owner’s contention that Alphabet
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`and Google are essentially a single entity.
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`The record evidence also does not support Patent Owner’s argument
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`that there “continues to be [a] significant overlap between Alphabet’s and
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`Google’s leadership.” Prelim. Resp. 28−29 (emphasis added). The fact that
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`Google’s leadership team became Alphabet’s leadership team in 2015 does
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`not show Alphabet controlled or could have controlled this proceeding filed
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`in 2018. Ex. 2008. In addition, the evidence only shows Google’s CEO sits
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`as one member of Alphabet’s eleven-member Board (Ex. 1046, 1), but there
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`is no evidence in this record that anyone acting on the behalf of Alphabet (or
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`XXVI) has influenced or controlled the Petition or this proceeding.
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`Patent Owner’s reliance on non-precedential Board decisions,
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`including Sirius XM Radio, Inc. v. Fraunhofer-Gesellschaft zur Förderung
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`der angewandten Forschung e.V., Case IPR2018-00690 (PTAB Sept. 6,
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`2018) (Paper 16), Zerto, Inc. v. EMC Corp., Case IPR2014-01254 (PTAB
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`Feb. 12, 1015) (Paper 32), Atlanta Gas Light Co. v. Bennett Regulator
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`
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`3 The citation refers to the page number on the bottom left corner added by
`Patent Owner, not the original page number of the document.
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`GOOGLE v. SEVEN NETWORKS
`IPR2018-01047
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`Guards, Inc., Case IPR2013-00453 (PTAB Jan. 6, 2015) (Paper 88), is
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`misplaced. Prelim. Resp. 16–18; Sur-Reply 3, 5; Reply 6–7. Unlike here,
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`the record in Sirius showed that “[b]eyond Holdings’ ownership of
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`Petitioner and the complete management overlap between the two entities,
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`the undisputed evidence suggests Holdings and Petitioner [were] jointly
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`involved in legal matters, including patent-related lawsuits and those that
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`name only Petitioner.” Sirius, slip op. at 6. Further, the record in Zerto,
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`unlike here, showed that the members of the Board of Directors for the
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`petitioner and unnamed party were identical, and an indemnification
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`agreement between these parties required the unnamed party, at its expense,
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`to defend any action brought against the petitioner. Zerto, slip op. at 4, 10,
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`12. Also, the record in Atlanta Gas, unlike here, showed that “Petitioner has
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`not produced receipts or statements that show Petitioner paid the filing fee,”
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`finding “unclear who paid the filing fees and legal expenses associated with
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`this proceeding.” Atlanta Gas, slip op. at 10−11.
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`Upon consideration of the totality of the circumstances, we determine
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`that Petitioner has sufficiently established at this time that neither Alphabet
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`nor XXVI is an RPI to the instant proceeding.
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`3. Whether Samsung is a Real Party in Interest
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`As discussed, Google states that it is the only RPI. See generally
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`Reply. Owner contends that Samsung also is an RPI because (1) Google and
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`Samsung have a preexisting, established relationship that includes
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`indemnification obligations; (2) Google and Samsung are cooperating in the
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`related district court case, including submitting joint invalidity contentions
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`GOOGLE v. SEVEN NETWORKS
`IPR2018-01047
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`that rely on some of same prior art used in the Petition; (3) Samsung will
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`benefit from the Petition; and (4) Google and Samsung each filed several
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`petitions for inter partes review of Patent Owner’s patents within a few days
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`of one another. Prelim. Resp. 22–26; Sur-Reply 5–7. Google contends that
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`it is not indemnifying Samsung and that Samsung is not involved in this
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`proceeding. Reply. 11–13.
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`As discussed above, factors for determining whether a party is an RPI
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`include the party’s relationship with the petitioner
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