UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD. AND
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`SAMSUNG ELECTRONICS AIVIERICA, INC.,
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`Petitioner,
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`V.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`Case IPR2018-01108
`
`Patent 9,516,127
`
`Samsung Brief Addressing Real Party in Interest and Privity Issues
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD. AND
`
`SAMSUNG ELECTRONICS AIVIERICA, INC.,
`
`Petitioner,
`
`V.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`Case IPR2018-01108
`
`Patent 9,516,127
`
`Samsung Brief Addressing Real Party in Interest and Privity Issues
`
`
`
`lPR2018-01 108
`Proceeding N0.:
`Attorney Docket: 39843-0046IP2
`
`EXHIBIT LIST
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`US. Patent No. 9,516,127 to Nirantar, et al. (“the ’ 127 patent”)
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`US. Provisional Application No. 61/805,070
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`Exhibit 1011 Murphy, The Busy COder ’s Guide to Android Development,
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`CommonsWare, LLC (Sept. 2012)
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` Exhibit 1010
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`Exhibit 1012-
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`1029
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`Exhibit 1030
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`Declaration of Joseph Shear
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`Exhibit1031
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`l
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`I
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`Proceeding N0.: IPR2018-01 108
`Attorney Docket: 39843-0046IP2
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`I
`I
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`I
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`I
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`I
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`i
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`Exhibit1032
`Exhibit1033
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`Exhibit 1034
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`l
`l
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`I
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`Exhibit 1035
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`Declaration of Seung-Jae Oh
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`Exhibit 1 03 6-
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`1046
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`Exhibit 1048
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`Exhibit 1049-
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`1050
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`Exhibit 1051
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`|
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`I
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`I
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`I i
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`Exhibit1047
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`lPR2018-01 108
`Proceeding No.:
`Attorney Docket: 39843-0046IP2
`
`I.
`
`INTRODUCTION
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`SEVEN Networks, LLC (“SEVEN”) alleges that Google LLC (“Google”)
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`“is in privity with Petitioner, and is also a real party-in—interest (‘RPI’).” IPR2018-
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`01108, Paper 11 (POPR), p. 1. These allegations are unsupported by and contrary
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`to the evidence, which unequivocally demonstrates that Google is not an RPl to
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`this proceeding or in privity with Samsung.
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`11.
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`APPROPRIATE LEGAL FRAMEWORK
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`While alleging that Google is an RPI to this proceeding and that Google is in
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`privity with Samsung, SEVEN does not set forth separate proofs for privity and
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`RPI, but instead subsumes its analysis of RPI within a broader analysis of privity
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`and focuses on the general business relationship between the parties throughout.
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`See POPR at 9. Thus, the law of privity is addressed, followed by the law of RPI.
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`The Federal Circuit specifically addressed the “legal standard for privity” in
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`WesternGeco LLC v. ION Geophysical Corp, 889 F. 3d 1308, 1316-1319 (Fed.
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`Cir. 2018).1 Based on its analysis of Taylor v. Sturgell, 553 US. 880 (2008), with
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`respect to lPRs, the Federal Circuit cautioned against an over-application of privity
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`1 Neither of the Federal Circuit’s subsequent decisions in Applications In Internet
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`Time, LLC v. RPX Corp. (“AIT”), 897 F.3d 1336, 1360 (Fed. Cir. 2018) or Worlds
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`Inc. v. Bungie, Inc. (“Worlds”),
`
`
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`F.3d
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`
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`,2018WL4262564 (Fed. Cir. Sept. 7,
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`2018) invalidate this precedent.
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`
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`Proceeding N0.: IPR2018-Ol lO8
`Attorney Docket: 39843-0046IP2
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`and its preclusive effect. See WesternGeco, 889 F.3d at 1319 (“Because nonparty
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`preclusion risks binding those who have not had a full and fair opportunity to
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`litigate, the Supreme Court has cautioned that there is a general rule against
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`nonparty preclusion, subject to certain exceptions.” (emphasis added)).
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`The Supreme Court
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`in Taylor
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`identified a non-exhaustive list of six
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`considerations where nonparty preclusion would be justified. Taylor, 553 US. at
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`894-95. “Privity is essentially a shorthand statement that collateral estoppel is to
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`be applied in a given case.”
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`Id. at 1318-19 (citing 77 Fed. Reg. at 48,759)
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`(emphasis added). In other words, the Taylor factors are considered with regard to
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`“a given case,” such that parties may be in privity in one case but not in another.
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`In applying the Taylor factors to the facts in WesternGeco, the Federal
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`Circuit found that the relevant parties were n_ot in privity, despite the existence of
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`(l) a “contractual and fairly standard customer-manufacturer relationship regarding
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`the accused product” between the parties, and (2) a purchase agreement with
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`potential indemnity obligations. See WesternGeco, 889 F.3d at 1321. The Federal
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`Circuit held similarly in Wi-Fz' One, LLC v. Broadcom Corp, where “evidence
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`showed that Broadcom’s interests as to the issue of infringement were generally
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`aligned with those of its customers, and that Broadcom had indemnity agreements
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`with at least two of the D—Link defendants,” yet “the evidence did not show that
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`Broadcom had the right to control that litigation or otherwise participated in that
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`
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`lPR2018-01 108
`Proceeding No.:
`Attorney Docket: 39843-0046IP2
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`litigation to the extent that it should be bound by the results.” Wi-Fi One, LLC v.
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`Broadcom Corp, 887 F. 3d 1329, 1341 (Fed. Cir. 2018).
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`The Federal Circuit has also identified the Taylor factors as “relevant” to
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`determining whether a party is an RPl. See AIT, 897 F.3d at 1342. However, with
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`regard to RPl, the Federal Circuit focuses more specifically on the relationship of
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`an unnamed party to the lPR proceeding. See id. at 1351 (“whether a petition has
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`been filed at a nonparty’s ‘behest’” is “at the heart” of “[d]etermining whether a
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`non-party is a :real party in interest”).
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`III.
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`APPLICATION OF APPROPRIATE LEGAL FRAMEWORK
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`SEVEN has not presented sufficient evidence to “reasonably bring[] into
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`question the accuracy of a petitioner’s identification of the real parties in interest.”
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`Worlds, 2018 WL 4262564 at *5, n. 8. The evidence provided by SEVEN in its
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`POPRS is not sufficiently tied to the products and agreements between Samsung
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`and Google relevant
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`to these lPRs and the co-pending litigation.
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`The old
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`agreements and indemnification obligations cited by SEVEN are directed to old
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`Android operating system products not shown to be associated with any of the
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`particular Android products alleged to be infringing SEVEN’S patents. POPR, p.
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`1-3, 6. SEVEN’s other evidence is at best evidence of a customer-manufacturer
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`relationship or a joint defense relationship, both of which the Federal Circuit has
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`deemed insufficient evidence of an RPl or a privity relationship. See POPR, p. 5-
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`
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`15', see also WesternGeco, 889 F.3d at 1321', 77 Fed. Reg. at 48,760; Wi-Fi One,
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`Proceeding N0.: 1PR2018-01 108
`Attorney Docket: 39843-00461P2
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`887 F.3d at 1336.
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`Assuming, arguendo, that the evidence advanced by SEVEN reasonably
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`brought into question the accuracy of a petitioner’s identification, a preponderance
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`of the evidence demonstrates that Google is not an RPI to this proceeding or in
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`privity with Samsung.
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`Properly applying the Taylor
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`factors to this case
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`demonstrates that the interactions between Samsung and Google do not result in a
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`“sufficiently close” relationship to justify a finding of privity or RPI.
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`See
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`WesternGeco, 889 F. 3d at 1318-19. The relevant time period for considering each
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`Taylor factor is at the time the Petitions were filed. See Synopsys, Inc. v. Mentor
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`Graphics Corp, IPR2012-00042, Paper 16 at 16-17 (PTAB Feb. 22, 2013).
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`Factor 1: “An agreement to be bound”
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`Samsung and Google have not agreed to be legally bound together,
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`explicitly or implicitly. The only relevant agreements between Samsung and
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`Google are:
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`
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`lPR2018-Ol 108
`Proceeding N0.:
`Attorney Docket: 39843-0046IP2
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`— Accordingly,
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`at the time of filing of these petitions and to date,
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`there exists no agreement
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`between the parties subjugating Samsung to Google in either the litigation or the
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`lPRs.
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`Likewise,
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`— Samsung and Google are parties to separate co-
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`pending litigations, which have been consolidated for pre-trial proceedings. As
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`such, they may be bound by certain decisions of the consolidated proceedings
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`(e.g.,, case schedule, claim construction). Even still, Samsung and Google are
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`named in separate and distinct cases: each party has retained its own counsel and
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`maintains the exclusive right to control the litigation of its own case (including
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`settlement), and each case will be tried separately.—
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`
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`Proceeding N0.: IPR201 8-01 108
`Attorney Docket: 39843-0046IP2
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`Factor 2: “pre-existing substantive legal relationships between the person to
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`be bound and a party to the judgment”
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`Federal Circuit precedent confirms that the business relationship between
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`Samsung and Google does not rise to the level of RPI or privity. For instance, they
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`are
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`“distinct
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`and unrelated corporate
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`entities,” just as
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`in WesternGeco.
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`WesternGeco, 889 F.3d at 1320. Additionally, no AIT-like relationship exists
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`between Samsung and Google.
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`Indeed, Samsung is unlike the Petitioner in AIT
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`(11a, RPX Corp), which held itself as “an extension of in—house counsel” for the
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`unnamed party and who received funding from the unnamed party. See AIT, 897
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`F.3d at 1340, 1342, 1364. Samsung and Google are separate and distinct parties in
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`co-pending litigations, each represented by its own counsel.
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`lPRZOl 8-01 108
`Proceeding N0.:
`Attorney Docket: 39843-0046IP2
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`Factor 3: “adequate representation by someone with the same interests who
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`was a party”
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`As noted above,—
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`I As a result, Google could settle out of the co-pending litigation and/or dismiss
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`its IPRs, and Samsung’s position would be unchanged — it would still be defending
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`its co-pending litigation, and it still would pursue its lPRs. Google does not and
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`cannot represent Samsung in any of these proceedings; Samsung has and continues
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`to represent and defend its own interests, without reliance on Google or any other
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`party. Accordingly, Samsung has no assurance of adequate representation by
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`Google or anyone else with the same interests who was a party.
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`Factor 4: “assumption of control over the litigation in which the judgment
`was rendered”
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`— As a result, Samsung
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`maintains full, exclusive control over its defense. See Ex. 1035, W 3-5.
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`Indeed,
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`Google and Samsung have retained separate legal counsel in the two co-pending
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`litigations and the lPRs, each individually directing its own defenses and
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`controlling its own counsel.— This contrasts with previous
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`cases involving Google and Samsung highlighted in SEVEN’S own evidence. For
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`example, Exhibit 2041 describes a previous, unrelated litigation, in which Google
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`
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`specifically acknowledged its obligation to indemnify Samsung. Ex. 2041, pp. 1-3.
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`lPR2018-01 108
`Proceeding N0.:
`Attorney Docket: 39843-0046IP2
`
`Without any evidence, SEVEN has asserted that Samsung and Google have
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`“mounted a coordinated IPR campaign, wherein Google and Samsung have
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`collectively filed 26 petitions, 21 of which challenge the 7 patents asserted in
`
`3
`common against the two companies.” POPR, p. 6. To the contrary, Samsung
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`unequivocally states it alone has controlled and funded its IPRs. See EX. 1035, W
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`3-5 (“Google in no way instructed, either directly or indirectly, Samsung to file
`
`these IPR petitions against SEVEN’S patents”). Google has made similar
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`statements, establishing the independence of its IPR efforts. EX. 1030, W 19-21.
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`In sum, the evidence demonstrates that the
`
`
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`only communications between the parties were with regard to the “jointly-filed
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`papers and coordination in district court .
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`.
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`.—
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`Proceeding N0.: IPR2018-01 108
`Attorney Docket: 39843-00461P2
`
`” EX. 1030, fi 19.
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`When considered in light of the broader relationship between Samsung and
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`Google (as addressed in the other Taylor
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`factors),
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`the complete lack of
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`communication, control, and funding with respect to the IPRs is more than enough
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`evidence to prove that neither this nor the other IPRs filed by Samsung against
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`SEVEN’S patents were at Google’s “behest,” which is the “heart” of the RPI
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`inquiry. See AIT, 897 F.3d at 1351.
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`It is notable that no judgments have yet been rendered, as contemplated in
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`this factor.
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`“In the AIA context, the privity provision of § 315(b) ‘prevent[s]
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`successive challenges to a patent by those who previously have had the
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`opportunity to make such challenges in prior litigation.” AIT, 897 F.3d at 1360
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`(Renya concurring) (citing WesternGeco, 889 F.3d at 1319) (emphasis added).
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`Here, there are no successive challenges, as Samsung’s IPRS were filed within
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`several business days of Google’s lPRs, and there were no prior challenges before
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`the PTAB. Further, there is no “prior litigation,” as both parties are involved in co-
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`pending litigations in which no judgments had been entered at the time the
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`petitions were filed.
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`
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`Proceeding No.: 1PR2018-01 108
`Attorney Docket: 39843-0046IP2
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`Factor 5: “Where the nonparty to an earlier litigation acts as a proxy for the
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`named party to relitigate the same issues”
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`Again, there is no “earlier litigation,” and there is no relitigation of the
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`“same issues.” Samsung’s IPRs were prepared, controlled, and financed entirely
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`independent of Google, through the work of Samsung’s own counsel. Further, the
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`timing of Samsung’s and Google’s petitions make it clear that the parties” IPR
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`work was conducted in parallel, not serially.
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`Samsung’s IPR work clearly
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`proceeded on a separate but parallel
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`track to Google’s IPR work, as the two
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`parties” petitions were filed substantially contemporaneously. See EX. 1035, 1111 3-
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`5', EX. 1030,
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`1111 19-21. Moreover, both parties are involved in co-pending
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`litigations that remain ongoing. At any time, one party could settle, and the
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`position of the remaining party would be unchanged — it would still need to defend
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`itself. Neither party is acting as a proxy for the other.
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`Factor 6: “a special statutory scheme expressly foreclosing successive
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`litigation by nonlitigants”
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`No such special statutory scheme exists with regard to lPRs, nor has one
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`been alleged by SEVEN. See A114 General [LC 12. UUSI ILC, 1PR2016-01049,
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`Paper No 42, p. 10 (PTAB Nov. 1, 2017).
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`IV.
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`CONCLUSION
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`For the foregoing reasons, Samsung and Google are neither RPls nor in
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`privity, and the Supreme Court’s “general rule against nonparty preclusion” should
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`be applied.
`
`10
`
`
`
`
`Date: October 12 2018
`
`/W. Karl Renner/
`
`lPR2018-01 108
`Proceeding N0.:
`Attorney Docket: 39843-00461P2
`
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Roberto DeVoto, Reg. No. 55,108
`Kim Leung, Reg. No. 64,399
`Fish & Richardson PC.
`
`3200 RBC Plaza, 60 South Sixth Street
`
`Minneapolis, MN 55402
`T: 202-783-5070
`
`F: 877-769-7945
`
`Attorneys for Petitioner
`
`ll
`
`
`
`Proceeding No.: IPR2018-01 108
`Attorney Docket: 39843-0046IP2
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on October 12, 2018, a complete and entire copy of this Samsung
`
`Brief Addressing Real Party in Interest and Privity Issues was provided Via email
`
`to the Patent Owner by serving the email correspondence addresses of record as
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`follows:
`
`Kenneth J. Weatherwax
`
`Nathan Lowenstein
`
`Edward Hsieh
`
`Parham Hendifar
`
`Patrick Maloney
`
`LOWENSTEIN & WEATHERWAX LLP
`
`1880 Century Park East, Suite 815
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`Los Angeles, CA 90067
`
`Email: weatherwax@10wensteinweatherwax.com
`
`SEVEN IPRs
`
`lowensteinweatherwaxcom
`
`lDiana Bradley/
`
`Diana Bradley
`Fish & Richardson PC.
`
`3200 RBC Plaza
`
`60 South Sixth Street
`
`Minneapolis, MN 55402
`(858) 678-5667
`
`
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