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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`World Programming Limited
`Petitioner
`
`v.
`
`SAS Institute Inc.
`Patent Owner
`______________________
`
`Case IPR2019-01460
`Patent 7,447,686
`______________________
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.107
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`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 2
`I.
`II. THE ’686 PATENT AND ITS PROSECUTION HISTORY .................... 3
`A. Overview of the ’686 Patent ............................................................... 3
`B.
`Prosecution History of the ’686 Patent ............................................11
`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. §§ 312(a)(2)
`& 315(b) BECAUSE WPL INTENTIONALLY OMITTED “DECEMBER
`2015 SOFTWARE LIMITED” AS A REAL PARTY-IN-INTEREST ............20
`A.
`The Real Party-In-Interest Inquiry .................................................23
`B.
`The 2018+ E.D. Texas Litigation – The Predicate Lawsuit For
`This IPR ........................................................................................................24
`C.
`The 2010+ E.D. North Carolina Litigation – The Earlier Case
`Between The Parties Resulting In A $79 Million Judgment Against
`WPL 24
`The Directors/Owners Of WPL And D2SL Largely Overlap
`1.
`26
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`D2SL Controls And Funds This IPR ....................................27
`2.
`3. WPL’s Conduct Demonstrates Gamesmanship And Bad
`Faith 30
`D. D2SL Is An RPI, And WPL’s Glaring Omission Was Intentional
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`36
`E. Any Amended Petition Should Receive A New Filing Date ..........38
`F.
`A New Filing Date Would Time Bar the Petition ...........................39
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`MAP THE CHALLENGED CLAIMS, AS WPL CONSIDERS THEM
`PROPERLY CONSTRUED, TO THE ASSERTED PRIOR ART ..................40
`V.
`THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`DEMONSTRATE THAT THE CHALLENGED CLAIMS ARE
`UNPATENTABLE .................................................................................................44
`VI. CONCLUSION ............................................................................................57
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`-1-
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`I.
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`INTRODUCTION
`World Programming Limited (“WPL”) seeks review of claims 13-40, 43-45,
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`and 50 of U.S. Patent No. 7,447,686 (“the ’686 Patent”) based on obviousness
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`grounds.1 WPL’s petition is deficient and should not be instituted for a number of
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`reasons, both procedural and substantive. For example, WPL intentionally omitted
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`a real party-in-interest from its petition. Because WPL’s omission is an attempt to
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`game the system and was made in bad faith, the Board should decline to exercise its
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`discretion in this case to give WPL a free pass to correct its petition without
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`concomitantly receiving a new filing date. WPL also has failed to properly map the
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`claims—as construed by WPL—to the alleged prior art. WPL failed to propose
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`constructions for a number of claim terms in dispute, failed to alert to the Board to
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`a number of conflicts between its proposed claim constructions and its positions in
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`district court, and failed to abide by the requirements to properly construe means-
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`plus-function terms. WPL has also failed to show that various features of the claims,
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`such as “switching,” a “first component software object . . . associated with a first
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`logical piece,” and “database functional language difference data” are taught by the
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`1 WPL seeks review of claims 1-12 and 46-48 of the ’686 Patent in IPR2019-
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`01459.
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`cited references. For these reasons, as explained herein, SAS Institute (“SAS”)
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`respectfully requests that the Board deny institution of this IPR.2
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`II. THE ’686 PATENT AND ITS PROSECUTION HISTORY
`A. Overview of the ’686 Patent
`The ’686 Patent, titled “Computer-Implemented System and Method for
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`Handling Database Statements,” generally relates to the translation of an original
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`database statement into a new database statement that is operational within a
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`different (e.g., second) database system. The ’686 Patent issued on November 4,
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`2008 from an application filed on November 22, 2002.
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`The Background section of the ’686 Patent recognizes that data access across
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`different database platforms proves difficult due to the platforms using varying
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`database commands. See Ex. 1001 (the ’686 Patent) at 1:13-20. Although the
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`2 To the extent the United States Court of Appeals for the Federal Circuit
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`and/or the United States Supreme Court find the remedy in Arthrex, Inc. v. Smith &
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`Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019) to be insufficient to cure the
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`Constitutional Appointments Clause defect the Federal Circuit identified in that
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`case, and to the extent making a record of the issue in this preliminary response is
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`required to preserve that argument, then SAS reserves the right to raise such a
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`challenge.
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`structured query language (SQL) is based on a well-documented ANSI standard,
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`many database systems implement a superset of the ANSI standard. See id.
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`Variations in the superset provide an obstacle in cross-platform database operations.
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`See id.
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`Fig. 1 of the ’686 Patent (reproduced below) shows an example computer-
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`implemented system 30 that allows database statements 32 to be automatically
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`converted from one database platform format to another. See id. at 1:13-20.
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`Through their conversion, database statements 32 executable within one system 40
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`may be utilized in one or more different types of database systems (42, 44, 46). See
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`id. at 1:13-20. This provides, among other things, the ability to transparently
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`manipulate data from virtually any database system. Within the system 30, a
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`textualization process 50 addresses the complexity of translating a native database
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`statement 32 dialect into a variety of third party database dialects (34, 36, 38) by
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`allowing the common parts of the default syntax of functionality to be shared
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`between a native database and a third party database. Id. at 2:10-26. The
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`textualization process 50 utilizes database specific textualizations 52 to translate the
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`common parts to the third party database dialect. Id. at 2:10-26.
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`The textualization process 50 may use a tree to represent a database statement,
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`as illustrated in Fig. 2 of the ’686 Patent (reproduced below). See id. at 3:1-18.
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`The SQL tree 60 may represent the syntax of a native database's SQL
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`statement 32 and its related metadata (e.g., table names, column names, etc.). See id.
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`at 3:1-18. The tree 60 may contain a hierarchical arrangement of nodes
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`representative of the SQL syntax and metadata to be processed. See id. at 3:1-18.
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`The textualization process 50 compartmentalizes an SQL statement 32 into logical
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`text pieces or components which are initially provided based on a default SQL
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`dialect. See id. at 3:1-18. The logical text pieces are represented in the SQL tree 60.
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`See id. at 3:1-18. Any of these text pieces can be overridden by a third party SQL
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`provider that utilizes a different SQL dialect than the default, hence allowing for
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`granular customization and code reuse. See id. at 3:1-18.
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`The system 30 may use an object-oriented approach 100 to creating disparate
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`SQL text for third party data access, as illustrated in Fig. 3 of the ’686 Patent
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`(reproduced below). See id. at 3:50-59.
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`The object-oriented approach 100 contains SQL component objects 102
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`where each component corresponds to a logical piece 104 of an SQL statement (as
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`may be found in the SQL tree 60). See id. at 3:50-59. An SQL component defaults
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`to a provided base or default native SQL text method 106. See id. at 3:50-59.
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`However, when there are third party-specific differences for a particular component,
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`the component utilizes the third party specific textualization methods 108 to handle
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`the differences. See id. at 3:50-59.
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` As shown in Fig. 4 of the ’686 Patent (reproduced below), when there are
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`third party-specific differences for a particular component, a driver object 110 is
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`responsible for creating an override 112 to the default method 106. See id. at 3:60-
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`67. The driver object 110 specifies to a component object 102 when the component
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`object 102 is to point to specific textualization method 112 instead of its base
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`textualization methods. See id. at 3:60-67. Optionally, only the driver 110 knows
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`about its datasource-specific SQL syntax 112. See id. at 3:60-67.
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`Different drivers (110, 112) are associated with different third party platforms
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`to textualize for multiple different types of database systems. See id. at 4:1-11. For
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`example, a first driver object 110 might point a component object 102 to use an
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`override 108 to the default method 106 so that the component object 102 may
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`textualize an SQL statement that can be used within a Sybase datasource system. See
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`id. at 4:1-11. A second driver object 114 might point the component object 102 to
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`use an override 116 to the default method 106 so that the component object 102 may
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`textualize an SQL statement that can be used within an Oracle datasource system.
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`See id. at 4:1-11.
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`Claim 1 of the ’686 Patent is exemplary:
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`1. A computer-implemented method for handling a database statement
`from a first database system, comprising the steps of:
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`receiving a first fourth-generation language database statement
`from the first database system, wherein the first database statement is
`formatted according to the first database system's query language
`format;
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`accessing database functional language difference data, wherein
`the database functional language difference data indicates a format that
`contains at least one database functional statement difference from the
`first database system's query language format;
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`language database
`generating a second fourth-generation
`statement that is used within a second database system, wherein the
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`second database statement is generated based upon the first database
`statement and upon the accessed database functional language
`difference data, wherein the second database statement is compatible
`with the second database system's query language format;
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`wherein a tree representative of the syntax of the database
`language used within the first database system and of metadata
`associated with the first database system is used in generating the
`second database statement wherein the tree contains logical pieces
`parsed from the first fourth-generation language database statement;
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`using a plurality of component software objects to textualize the
`logical pieces contained in the tree, wherein textualizing a logical piece
`includes generating fourth-generation database language text;
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`wherein a first component software object is associated with a
`first logical piece contained in the tree;
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`wherein the first component software object is associated with a
`first method to textualize, into fourth-generation database language text,
`the first component software object's associated logical piece that is
`contained in the tree;
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`using a plurality of software drivers to textualize logical pieces
`into fourth-generation database language text;
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`wherein a first software driver textualizes through a second
`method a logical piece into fourth-generation database language text
`that is compatible with the second database system's query language
`format;
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`-10-
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`wherein a second software driver textualizes through a third
`method a logical piece into fourth-generation database language text
`that is compatible with a third database system's query language format;
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`switching association of the first component software object
`from the first method to the second method for fourth-generation
`database language textualization: wherein because of the switching of
`the association of the first component software object, the first
`component software object textualizes fourth-generation database
`language text that is compatible with the second database system's
`query language format and that is not compatible with the first database
`system's query language format.
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`Prosecution History of the ’686 Patent
`B.
`U.S. Patent Application No. 10/303,106 (“the ’106 Application”), which later
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`issued as the ’686 Patent, was filed on November 22, 2002. The ’686 Application
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`was subject to an extensive examination by the Patent Office, including three
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`substantive Office Actions over the span of almost two years.
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`The ’584 Application was filed on November 22, 2002 with 7 independent
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`claims (claims 1, 45, 46, 49, 50, 60, and 61) and 55 dependent claims. Claim 1 of
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`the ‘686 Application, as filed, read as follows:
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`Ex. 1004 at 272.
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`The first Office Action was issued by the Patent Office on February 10, 2006,
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`rejecting all 62 claims of the ’686 Application over combinations including U.S.
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`Patent No. 6,041,344 (“Bodamer”) and Official Notice taken by the Examiner. See
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`Ex. 1004 at 224-244. Claim 62 was objected to for being of improper dependent
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`form and claims 9-12, 45, 49, and 60 were rejected under 35 U.S.C. §112, second
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`paragraph. Id. at 226.
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`In response, SAS conducted a first telephone interview with the Patent
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`Examiner on May 9, 2006, and filed a first Responsive Amendment on May 10, 2006.
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`See id. at 199-223. In the telephone interview and Responsive Amendment, SAS
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`argued that the prior art relied upon by the Office Action failed to disclose database
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`statement translations, as recited in claim 1, and failed to disclose the “use of a tree
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`that is representative of the syntax of the database language used within the first
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`database system and of metadata associated with the first database system in
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`generating a second database statement.” Id. at 218-220. SAS also argued that
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`Bodamer is related to schema translation while claim 1 is directed to “database
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`statement translation.” Id. at 218-220. In the first Responsive Amendment, SAS
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`amended claim 1 as follows:
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`A second Office Action was issued by the Patent Office on August 10, 2006,
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`with new claim rejections over combinations of Bodamer, U.S. Patent No. 6,041,344
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`(“Chow”), and Official Notice taken by the Examiner. See id. at 167-192. The
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`second Office Action also included objections to claim 62 and rejected claims 1-62
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`under 35 U.S.C. §112, second paragraph. See id. at 169-171.
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`In response, SAS conducted a second telephone interview with the Patent
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`Examiner on November 29, 2006, and filed a second Responsive Amendment on
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`December 8, 2006. See id. at 134-163. In the second Responsive Amendment, SAS
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`maintained the argument that Bodamer is related to schema translation while claim
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`1 is directed to “database statement translation.” Id. at 160-163. SAS also argued
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`that “Bodamer is lacking in any disclosure regarding the use of SQL language
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`functional differences being specified and used to translate from a first database
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`statement into a second database statement.” Id. at 160-163. A Notice of Non-
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`Compliant Amendment was issued by the Patent Office on March 8, 2007 indicating
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`that the second Responsive Amendment failed to address the rejections of claims 37,
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`and 40-42. See id. at 131-133. In response, SAS filed a third Responsive
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`Amendment that addressed the rejections of claims 37 and 40-42. See id. at 102-
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`129. The claims amendments and the substantive arguments in the third Responsive
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`Amendment mirror those of the second Responsive Amendment. See id. at 102-129
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`and 134-163. Independent claim 1 was not amended in either the second Responsive
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`Amendment or the third Responsive Amendment. New claims 63-70 were added to
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`the claims in both the second Responsive Amendment and the third Responsive
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`Amendment.
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`A third Office Action was issued by the Patent Office on July 16, 2007,
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`rejecting SAS’ arguments and maintaining the claim rejections over combinations
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`of Bodamer, Chow, and SAS’ admitted prior art. See id. at 71-97. The third Office
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`Action also objected to claim 62 and indicated that claims 64-70 would be allowable
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`if rewritten in independent form. See id. at 94.
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`In response to the third Office Action, SAS filed a fourth Responsive
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`Amendment on October 15, 2007 to amend claim 1 to recite the following features:
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`wherein a first component software object is associated with a first logical
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`piece contained in the tree;
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`wherein the first component sofiware object is associated with a first
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`method to textualize, into fourth—generation database language text, the first component
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`software obiect's associated logical piece that is contained in the tree;
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`using a plurality of software drivers to textuaiize logical pieces into
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`fourth- generation database language text;
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`wherein a first software driver textualizes through a second method a
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`logical piece into fourth—generation database langgage text that is compatible with the
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`second database system’s guer}: language fonnat,‘
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`wherein a second software driver textualizes through a third method a
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`logical piece into fourth- generation database language text that is compatible with a third
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`database system’s guefl language format;
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`switching association of the first component sofiware object from the first
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`method to the second method for fourth—generation database language textualization;
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`wherein because of the switching ofthe association of the first component
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`software object, the first component software object textualizes fourth-generatiou
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`database language text that is compatible with the second database system’s query
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`language format and that is not compatible with the first database system’s guegg
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`language format.
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`Id. at 43-44.
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`In particular, SAS amended claim 1 to incorporate the entirety of claim 64
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`into the body of claim 1. Id. at 43-44 & 65-66. An Advisory Action was issued by
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`the Patent Office on October 29, 2007, indicating that the fourth Responsive
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`Amendment would not be entered and that the “amendments to claims 45, 46, 49,
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`50, and 60 require further consideration since the scope of the claims is not identical
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`to that of previously objected to claims 64-70.” Id. at 38-40. In response to the
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`Advisory Action, SAS conducted a third telephone interview with the Patent
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`Examiner. During the third telephone interview, SAS authorized the examiner to
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`cancel all non-allowed claims and to clarify the language in several allowed claims.
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`See id. at 32. Shortly thereafter, the Patent Office mailed a Notice of Allowance on
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`June 30, 2008. The Notice of Allowance include an Examiner’s Amendment which
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`amended claim 1 as follows:
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`-18-
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`generating a second fourth-generation language database statement for—use-that is
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`Mwithin a second database system, wherein the second database statement is generated based
`upon the first database statement and upon the accessed database functional language difference
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`data, hwherein the second database statement is compatible with the second database system’s
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`query language format;
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`wherein a tree representative of the syntax of the database language used within
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`the first database system and of metadata associated with the first database system is used in
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`generating the second database statement
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`wherein the tree contains logical pieces parsed from the first fourth-generatiOn
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`language database statement;
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`using a plurality of component software objects to textualize the logical pieces
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`contained in the tree: wherein textualizing a logical piece includes generating fourth-generation
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`database language text;
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`wherein a first component software obiect is associated with a first logical piece
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`contained in the tree‘
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`wherein the first comp_onent software obiect is associated with a first method to
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`textual ize, into fourth-generation database language text, the first component software object’s
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`associated logical piece that is contained in the tree;
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`using a plurality of sofiware drivers to textualize logical pieces into fourth-
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`generation database language text;
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`Id. at 20-30.
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`The ’686 patent issued on November 4, 2008.
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`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C.
`§§ 312(a)(2) & 315(b) BECAUSE WPL INTENTIONALLY
`OMITTED “DECEMBER 2015 SOFTWARE LIMITED” AS A
`REAL PARTY-IN-INTEREST
`The Board should decline to institute this inter partes review because WPL
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`intentionally failed to identify all of the real parties-in-interest (“RPIs”). The
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`petition identifies the following RPIs: World Programming Limited; Yum! Brands,
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`Inc.; Pizza Hut, Inc.; Pizza Hut, LLC; and Angoss Software Corporation. These
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`RPIs are the defendants named in SAS’ original E.D. Texas complaint for patent
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`infringement (viz., WPL and its customers or resellers). Ex. 2002 at 1; see infra Part
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`III.B. But WPL failed to name an important U.K. party called “December 2015
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`Software Limited” (“D2SL”) as an RPI. Indeed, WPL was fully aware of D2SL’s
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`intimate relationship with WPL and control over this IPR. But WPL intentionally
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`omitted D2SL as an RPI for purposes of the parties’ ongoing litigations in North
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`Carolina and Texas – thus avoiding D2SL making an appearance in any U.S. legal
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`proceeding – as part of WPL’s continuing efforts to evade a $79 million judgment
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`to SAS. In these circumstances, where this petitioner has made a strategic decision
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`to omit an RPI intentionally and in bad faith, the Board should decline to exercise
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`its discretion to allow WPL to amend its RPI designation without concomitantly
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`forfeiting its filing date.
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`SAS appreciates that in some cases the Board has exercised its discretion to
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`allow a petitioner to amend its RPI designation without affecting the petition’s filing
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`date; but those were cases where there was no “indication of an attempt to
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`circumvent estoppel rules, a petitioner’s bad faith, or prejudice to a patent owner.”
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`See Elekta Inc. v. Varian Med. Sys., Inc., No. IPR 2015-01401, 2015 WL 9898990,
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`at *5 (PTAB Dec. 31, 2015) (holding that Board has discretion to permit a petitioner
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`to correct defective real-party-in-interest disclosures “without changing the filing
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`date”) (emphasis added); Lumentum Holdings, Inc. v. Capella Photonics, Inc., No.
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`IPR2015-00739, 2016 WL 2736005, at *3 (PTAB Mar. 4, 2016) (precedential). But
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`-21-
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`such is not the situation here. The incontrovertible evidence reveals WPL’s
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`purposeful attempt to omit D2SL as an RPI (endeavoring to evade a U.S. judgment
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`and circumvent IPR estoppel), WPL’s and D2SL’s bad faith in so doing, and serious
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`prejudice to SAS as a result. Thus, in this case, the Board should decline to exercise
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`its discretion to allow WPL to amend its RPI designation without concomitantly
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`forfeiting its filing date. To do otherwise would encourage petitioners to attempt to
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`game the system, purposely omitting known RPIs, and if they get caught in the act,
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`simply seek a “no harm, no foul” decision from a lenient PTAB panel. Such
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`petitioner conduct violates both the letter and the spirit of the America Invents Act
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`(35 U.S.C. § 312(a)(2)), and is directly contrary to a fundamental quid pro quo
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`required of all IPR petitioners.
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`In its current form, the petition is defective under 35 U.S.C. § 312(a)(2)
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`because WPL did not identify D2SL as an RPI. Thus, to maintain this proceeding,
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`WPL must obtain leave from the Board to amend the petition to add D2SL as an RPI.
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`But because of WPL’s gamesmanship and bad faith, WPL should not be permitted
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`to make any such amendment while also preserving the petition’s original filing date.
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`And any amended petition with D2SL identified as an RPI should receive a new
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`filing date. But because that amended petition would be time barred under 35 U.S.C.
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`§ 315(b), any such amendment would be futile. The Board should thus decline to
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`institute this inter partes review for this independent reason.
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`A. The Real Party-In-Interest Inquiry
`A petition for inter partes review may be considered only if, inter alia, “the
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`petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). “That statutory
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`requirement . . . defines a ‘threshold issue’ for substantive review of the merits of
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`the challenges presented in the Petition.” Galderma S.A. v. Allergan Industrie, SAS,
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`IPR2014-01422, 2015 WL 1022410, at *3 (PTAB Mar. 5, 2015). The ultimate
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`burden of proof that all RPIs have been named is always with the petitioner.
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`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00488, 2015 WL
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`4264942, at *4 (PTAB May 22, 2015). While the Board may accept the petitioner’s
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`initial identification of the RPIs, the patent owner may present rebuttal evidence
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`questioning the accuracy of the RPI identification. Id.
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`The Office Patent Trial Practice Guide provides guidance on factors to
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`consider in determining whether a party is an RPI. Considerations may include
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`whether a non-party exercises control over a petitioner’s participation in a
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`proceeding. 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). Other factors may
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`include whether a non-party is funding the proceeding or directing the proceeding.
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`Id. at 48, 759-60.
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`The Patent Office has recognized that whether a non-party must be identified
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`in a proceeding as an RPI is a “highly fact-dependent question,” and that “[s]uch
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`questions will be handled by the Office on a case-by-case basis taking into
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`consideration how courts have viewed [those] terms.” Id. at 48759. As articulated
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`by the Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’
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`demands a flexible approach that takes into account both equitable and practical
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`considerations, with an eye toward determining whether the non-party is a clear
`
`beneficiary that has a preexisting, established relationship with the petitioner.”
`
`Applications in Internet Time, LLC v. RPX Corporation, 897 F.3d 1336, 1351 (Fed.
`
`Cir. 2018).
`
`B.
`
`The 2018+ E.D. Texas Litigation – The Predicate Lawsuit For
`This IPR
`On July 18, 2018, SAS sued WPL in the Eastern District of Texas for, inter
`
`alia, infringement of the ’686 patent and the ’519 patent. SAS Institute Inc. v. World
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`Programming Limited et al., No. 2-18-cv-00295 (E.D. Tex. 2018); Ex. 2002 at 1. In
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`its complaint, SAS accused WPL’s software product, called “WPS”, of infringing
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`the asserted patents. Id. at 2 ¶ 3. SAS served the complaint on WPL on August 10,
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`2018. Ex. 2003. On August 5, 2019, just days before the statutory one-year bar date,
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`WPL filed the petition in this proceeding.
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`C. The 2010+ E.D. North Carolina Litigation – The Earlier Case
`Between The Parties Resulting In A $79 Million Judgment
`Against WPL
`In 2010, SAS sued WPL for, inter alia, copyright infringement, breach of
`
`contract, and fraud (added in 2013). SAS Institute Inc. v. World Programming
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`Limited et al., Case No. 5:10-cv-25-FL (E.D.N.C. 2010). Ex. 2004. After extensive
`
`
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`-24-
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`
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`litigation, on October 9, 2015, a jury awarded SAS approximately $26 million in
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`damages.3 Ex. 2005. That award was later trebled under state law because of WPL’s
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`fraud, thus totaling approximately $79 million.
`
`Shortly after the E.D.N.C. jury verdict,
`
`
`
`, on December 11, 2015, WPL formed “December 2015 Software
`
`Limited” or D2SL, a U.K. holding company. Ex. 2006 at 3; see Ex. 2007 at 3,
`
`§§ 1.2-1.4
`
`
`
`
`
`
`
`); Ex. 2008 at 1, ¶ 1 (same). At that time, the directors/owners of both WPL
`
`and D2SL
`
` (Ex. 2008 at 2), and they remain largely the
`
`same individuals today. Ex. 2006 at 2, 4. About a month later,
`
`
`
`Importantly, the 2016 asset transfer from WPL to D2SL included all of WPL’s
`
`. Ex. 2007 at 10, § 4.
`
`
`3 WPL’s accused software product, WPS, is a clone of SAS. See, e.g., Ex.
`
`2004 at 6, ¶¶ 19-20; see also, e.g., Ex. 2002 at 2, ¶¶ 2-3. The jury found WPL guilty
`
`of breach of contract and fraud (see Ex. 2005) because WPL fraudulently obtained
`
`many copies of SAS and then reverse engineered that software, contrary to the
`
`express software license terms.
`
`
`
`-25-
`
`
`
`principal assets, namely, the WPS software and the IP related thereto. Id. The WPS
`
`software is the same product that SAS has accused of infringing the ’686 Patent in
`
`the E.D. Texas litigation, which is the subject of WPL’s IPR petition here. See supra
`
`Part III.B; Ex. 2002 at 2, ¶ 3.
`
`The Directors/Owners Of WPL And D2SL Largely Overlap
`1.
`Public records reveal that the Directors/Owners of WPL and D2SL are largely
`
`the same individuals: Oliver Robinson, Samuel Manning, Martin Jupp, Thomas
`
`Quarendon, and Peter Quarendon. Ex. 2006 at 2, 4. Mr. Robinson, a director/owner
`
`of both entities,
`
`in the E.D.N.C. litigation:
`
` in his post-trial deposition
`
`
`
`Ex. 2009 at 27:28 – 28:12.
`
`
`
`-26-
`
`
`
`
`
`Mr. Robinson further acknowledged that
`
`
`
`:
`
`
`
`
`
`
`Id. at 29:6-8, 38:23-24; 39:7-9.
`
`Accordingly, there can be no tenable dispute that the directors/owners of the
`
`two companies
`
` remain today – largely the same individuals.
`
`Thus, the decisions to file this IPR and manage its progress are made by the same
`
`group of decision-makers for both companies.
`
` This IPR
`D2SL Controls
`2.
`While in some cases the pivotal question of “Who controls the IPR
`
`proceeding?” remains elusive, that question is answered here literally in black and
`
`white: D2SL. In particular, relevant portions of the parties’
`
`
`
` agreement are reproduced below:
`
`
`
`-27-
`
`
`
`
`
`
`***
`
`* * *
`
`
`
`***
`
`* * *
`
`-28-
`
`-28-
`
`
`
`
`
`Ex. 2007 at 1, 10, 22.
`
`Thus, as set forth in the parties’ Agreement,
`
`:
`
`
`
`* * *
`
`-29-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`.
`
`
`
`
`Id. at 10, 22 (emphases added).
`
`Therefore, the parties’
`
`These facts, which cannot tenably be contested, establish that D2SL is an RPI in this
`
`proceeding, and should have been named as such by WPL in its petition.
`
`3. WPL’s Conduct Demonstrates Gamesmanship And Bad
`Faith
`The parties’ E.D.N.C. litigation remains ongoing due to WPL’s nonpayment
`
`of the $79 million judgement, although all appeals have been exhausted and the
`
`judgment is now final. Unable to appeal further in the U.S., WPL (as a U.K. citizen)
`
`sought – and obtained – the protection of the U.K. courts in an attempt to nullify the
`
`final U.S. judgment, hoping to evade SAS’s ongoing collection efforts. In this
`
`
`
`-30-
`
`
`
`regard, WPL has expended considerable efforts to contravene the U.S. District
`
`Court’s judgment, and – in the words of Judge Flanagan of the Eastern District of
`
`North Carolina – WPL’s actions have “frustrate[d]” that judgment and are in “direct
`
`contravention of this court’s judgment and contrary to United States law governing
`
`enforcement.” Ex. 2011 at 17-25.
`
` For example, WPL sought and obtained an Injunction and Order issued by a
`
`U.K. judge on an ex parte basis at a hearing about which neither SAS nor its counsel
`
`was informed. The first page of the U.K. Injunction contains this “Penal Notice”:
`
`
`
`Ex. 2010 at 1.
`
`
`The U.K. Injunction prohibits SAS from certain litigation activities in U.S.
`
`courts and mandates that SAS take other actions. Id. at 3-6. For example, the UK
`
`Injunction blocked SAS from filing a brief that same day in connection with SAS’s
`
`efforts to enforce the judgment in the U.S. (id. at 4, ¶ 3(d)), and forced SAS to seek
`
`a stay of those efforts instead. Id. at 5, ¶ 4. The U.K. Injunction further restricts
`
`SAS’s access to “any other court of the USA (state or federal).” Id. at 3, ¶ 3(b).
`
`Paragraph 3 prohibits SAS from seeking “in personam relief” or any relief of
`
`
`
`-31-
`
`
`
`“similar nature and/or effect,” including relief that would require WPL to “assign or
`
`transfer to SAS” any of its assets. Id. at 3-4, ¶¶ 3(a), (c)(i), (c)(ii).
`
`WPL’s argument to the U.K. court in pursuit of this injunction stressed the
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`company’s English citizenship (Ex. 2012 at 15), and contended that “[t]he core of
`
`WPL’s case” is “about WPL, a quintessentially English company, p
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