throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S BRIEF ON THE ISSUES OF PATENT OWNERSHIP
`AND STANDING
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2021-00375
`Patent No. 8,265,096
`
`
`Table of Contents
`
`I.
`
`INTRODUCTION ............................................................................................. 1
`
`II. ARGUMENT ..................................................................................................... 2
`
`A. As the current assignee of record, UNM has presumptive standing to
`participate in this IPR as the patent owner ............................................................ 2
`
`B. There is no evidence in this IPR rebutting the presumption that UNM is the
`assignee of the ’096 patent ..................................................................................... 4
`
`1. The existence of other litigations involving patent ownership does not
`rebut the presumption ........................................................................................ 4
`
`2. There is no other evidence in this IPR that rebuts UNM’s presumptive
`standing .............................................................................................................. 7
`
`C. Qualcomm discharged its service/notice obligations, and no other
`considerations impact UNM’s standing ................................................................. 8
`
`III. CONCLUSION ................................................................................................ 10
`
`
`
`
`
`
`
`
`
`- ii -
`
`
`
`

`

`Petitioner’s Updated Exhibit List
`
`IPR2021-00375
`Patent No. 8,265,096
`
`
`Pursuant to 37 C.F.R. § 42.63(e), Petitioner submits its updated exhibit list:
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
`Ex. 1012
`Ex. 1013
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`
`Description
`U.S. Patent No. 8,265,096 (“the ’096 patent”)
`Declaration of Dr. Sumit Roy (“Roy”)
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
`LLC, Paper 24, IPR2019-01393 (PTAB June 16, 2020)
`Eleventh Supplemental Order Regarding Court Operations Under
`Exigent Circumstances Created by the Covid 19 Pandemic (W.D.
`Tex. Dec. 10, 2020)
`Excerpts from JEFFREY G. ANDREWS ET AL., FUNDAMENTALS OF
`WIMAX (2007)
`Five Criteria Statement for P802.16m PAR Proposal, IEEE 802.16-
`06/055r3 (Nov. 15, 2006)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4
`(Oct. 19, 2007)
`Listing of Challenged ’096 Patent Claims
`U.S. Provisional App. No. 60/929,798
`Excerpts from ’096 Patent File History
`Claim Construction Order in STC.UNM v. Apple Inc., No. 1-20-cv-
`00351 (W.D. Tex. Apr. 9, 2020), ECF No. 69 (“Markman Order”)
`U.S. Pub. No. 2009/0067377 A1 (“Talukdar”)
`U.S. Provisional Application No. 60/956,031
`Provisional”)
`Canadian Patent Application No. 2 581 166 A1 (“Wang”)
`Ex. 1014
`Industrial Property
`Information and
`Ex. 1015 WIPO Handbook on
`Documentation, “Examples and Kinds of Patent Documents” (May
`2016)
`U.S. Pub. No. 2007/0155387 A1 (“Li”)
`U.S. Pub. No. 2007/0104174 A1 (“Nystrom”)
`U.S. Pub. No. 2008/0095195 (“Ahmadi”)
`
`(“Talukdar
`
` -iii-
`
`

`

`IPR2021-00375
`Patent No. 8,265,096
`
`
`of
`
`Exhibit
`Ex. 1019
`
`Ex. 1020
`Ex. 1021
`Ex. 1022
`
`Ex. 1024
`Ex. 1025
`
`Ex. 1026
`Ex. 1027
`
`Ex. 1028
`Ex. 1029
`
`Ex. 1030
`
`Ex. 1031
`
`Description
`Excerpts from William Stallings, WIRELESS COMMUNICATIONS AND
`NETWORKS (2D ED. 2005)
`U.S. Patent No. 7,460,466 B2 (“Lee”)
`U.S. Patent No. 8,462,611 B2 (“Ma”)
`Fixed, nomadic, portable and mobile applications for 802.16-2004
`and 802.16e WiMAX networks (November 2005)
`Ex. 1023 Mohammad Azizul Hasan, Performance Evaluation
`WiMAX/IEEE 802.16 OFDM Physical Layer (June 2007)
`U.S. Patent No. 7,710,910 B2 (“Ode”)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4 (Jan.
`12, 2007)
`U.S. Pub. No. 2004/0037215 A1 (“Hwang”)
`Yasamin Mostofi, ICI Mitigation for Pilot-Aided OFDM Mobile
`Systems (IEEE, Vol. 4, No. 2, Mar. 2005)
`Declaration of Dr. Robert Akl
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, Patents Post Grant (available at:
`https://www.patentspostgrant.com/district-court-trial-dates-tend-to-
`slip-after-ptab-discretionary-denials/)
`Declaration of Jonah D. Mitchell in Support of Petitioners’ Motion
`for Pro Hac Vice Admission
`Declaration of Christine M. Morgan in Support of Petitioners’
`Motion for Pro Hac Vice Admission
`ITRI’s Recorded Assignment, Reel/Frame No. 045200/0980
`Sino Matrix’s Recorded Assignment, Reel/Frame No. 021275/0468
`UNM’s Recorded Assignment, Reel/Frame No. 046854/0173
`June 22, 2021 hearing transcript before Judge Albright in UNM’s
`litigations against Dell and ASUSTek.
`Printout from Public PAIR showing the correspondence address of
`record for the ’096 patent
`Excerpt of ’096 file history showing ITRI’s prosecution counsel
`
`Ex. 1032
`Ex. 1033
`Ex. 1034
`Ex. 1035
`
`Ex. 1036
`
`Ex. 1037
`
`
`
` -iv-
`
`

`

`INTRODUCTION
`At the Board’s request (Paper 19 at 4), Qualcomm submits this brief to
`
`IPR2021-00375
`Patent No. 8,265,096
`
`
`I.
`
`address patent ownership and standing. UNM has consistently identified itself as
`
`the patent owner here, in the parallel litigation, and in other proceedings. Indeed, it
`
`only introduced the specter of an ownership dispute here – after the Board
`
`instituted review – as a gambit to halt review, but its position on its status as the
`
`patent owner elsewhere has never wavered. UNM is the assignee of record based
`
`on the face of the publicly-recorded assignments, which are presumed valid in this
`
`proceeding. When the Board has considered attempts by record patent owners, like
`
`UNM, to leverage ownership disputes in other forums to interrupt PTAB
`
`proceedings, it has rejected them. The same should follow here. Proffering no
`
`evidence to rebut the presumption flowing from the recorded assignments, UNM
`
`has standing to participate as the patent owner.
`
`Moreover, no other considerations warrant deviating from the orderly
`
`completion of this IPR. Indeed, by serving the correspondent address of record for
`
`the ’096 patent, Qualcomm met all service obligations necessary to proceed.
`
`Moreover, to the extent there are any concerns regarding Industrial Technology
`
`Research Institute (“ITRI”), here, the correspondent address of record for the ’096
`
`patent is actually ITRI’s prosecution counsel. And, ITRI also is on notice of the
`
`IPR through the parallel litigation. That it has chosen not to participate is of no
`
`
`
`- 1 -
`
`
`
`

`

`concern. This IPR should proceed without further delay and conclude by the
`
`IPR2021-00375
`Patent No. 8,265,096
`
`
`statutory final determination deadline.
`
`II. ARGUMENT
`A. As the current assignee of record, UNM has presumptive standing
`
`to participate in this IPR as the patent owner
`
`An assignee may establish standing in an IPR “by showing a chain of title
`
`from the original owner to the assignee … by reference to documents recorded in
`
`the USPTO.” FedEx Corp. v. Human Sciences HC Ltd., IPR2017-01830, Paper 29
`
`at 8-9 (PTAB Aug. 13, 2018) (citing 37 C.F.R. §§ 3.73(c)(1)(i)–(ii).)
`
`Although recording an assignment in the USPTO “is not a determination by
`
`the Office of the validity of the document or the effect that document has on the
`
`title to … a patent” (37 C.F.R. § 3.54), “[t]he recording of an assignment with
`
`the PTO … creates a presumption of validity as to the assignment and places
`
`the burden to rebut such a showing on one challenging the assignment.”). SIRF
`
`Tech., Inc. v. ITC, 601 F.3d 1319, 1327–28 (Fed. Cir. 2010) (emphasis added).
`
`Accordingly, “[i]n inter partes review proceedings, the Board generally accepts a
`
`party’s identification of itself as patent owner.” FedEx Corp., IPR2017-01830,
`
`Paper 29 at 9.
`
`Here, the publicly-recorded assignment documents identify UNM as the
`
`current assignee of record. The ’096 patent was filed as U.S. Application No.
`
` -2-
`
`

`

`12/168,855 (“the ’855 application”). Ex. 1001 at 1. USPTO assignment records
`
`IPR2021-00375
`Patent No. 8,265,096
`
`
`show: (1) the ’855 application assigned by the named inventors to ITRI, executed
`
`on July 3, 2008 and recorded at the Patent Office on July 22, 2008 (Ex. 1032 at 1-
`
`4); (2) the ’096 patent assigned by ITRI to Sino Matrix Technology, Inc. (“Sino
`
`Matrix”), executed on March 7, 2018 and recorded at the Patent Office on March
`
`14, 2018 (Ex. 1033 at 1-2); and (3) the ’096 patent assigned by Sino Matrix to
`
`UNM, executed on August 21, 2018 and recorded at the Patent Office on
`
`September 12, 2018 (Ex. 1034 at 1-4).
`
`Accordingly, the recordation of these assignment records “creates a
`
`presumption” of their validity and “places the burden to rebut such a showing on
`
`one challenging the assignment.” SIRF Tech., 601 F.3d at 1327–28. However, in
`
`this IPR, neither UNM nor Qualcomm has challenged the validity of these
`
`assignments. Indeed, commencing with its mandatory notices, UNM has
`
`consistently identified itself as the patent owner in this proceeding, just as it has
`
`done in its enforcement campaign, where it has referenced the assignments to
`
`establish its ownership. See UNM Rainforest Innovations v. ZyXEL Commc’ns
`
`Corp., No. 6:20cv00522-ADA, Dkt. 30 at 1-2; FedEx, Paper 29 at 9 (“[T]he Board
`
`generally accepts a party’s identification of itself as patent owner”). Thus, for
`
`purposes of this proceeding, UNM is the presumptive assignee of the ’096 patent
`
`and has standing.
`
` -3-
`
`

`

`IPR2021-00375
`Patent No. 8,265,096
`
`There is no evidence in this IPR rebutting the presumption that
`
`B.
`
`UNM is the assignee of the ’096 patent
`
`In support of its request to file a motion to stay this IPR, UNM relied
`
`exclusively on the existence of outside proceedings in which ownership of the ’096
`
`patent is being litigated.1 Paper 19 at 2. Under PTAB precedent, however, outside
`
`proceedings do not impact UNM’s presumptive standing and the timely
`
`completion of this IPR. Nor is there any other evidence in this IPR that rebuts
`
`UNM’s presumptive standing.
`
`1.
`
`The existence of other litigations involving patent ownership
`
`does not rebut the presumption
`
`At least two Board decisions have addressed whether litigation in another
`
`forum concerning ownership of a challenged patent impacts the patent owner’s
`
`presumptive standing in a PTAB proceeding. Both involved the possibility that a
`
`
`1 UNM cited the lawsuit it filed in New Mexico state court against ITRI to quiet title
`
`to the ’096 patent. See UNM Rainforest Innovations v. Industrial Technology
`
`Research Institute, No. D-202-CV-2021-02803 (N.M. 2d. Judicial District Court
`
`May 4, 2021). It also referenced a proceeding ITRI initiated in Taiwan concerning
`
`ownership. Ex. 1035 at 15:24-16:4. Because the Board denied UNM’s request to file
`
`a motion to stay (Paper 19 at 3), Qualcomm does not address the stay issue further.
`
` -4-
`
`

`

`different entity could be declared the patent owner, and neither found any impact
`
`IPR2021-00375
`Patent No. 8,265,096
`
`
`on the patent owner’s presumptive standing to participate in PTAB proceedings.
`
`In The Jewelry Channel, Inc. USA d/b/a Liquidation Channel v. Americas
`
`Collectibles Network, Inc., CBM2014-00119, Paper 10 (PTAB Oct. 20, 2014), the
`
`Board addressed whether a separate district court litigation in which a different
`
`entity had claimed to be the patent owner had any impact on institution. Id. at 3-4.
`
`In the district court case, that entity (Gemstone) moved for summary judgment that
`
`it was the actual owner of the patent. Id. at 3. Like UNM here, the patent owner
`
`(ACN) resisted a stay of the district court case pending resolution of the ownership
`
`dispute, and argued the Board should decline to institute a CBM because of the
`
`possibility that the actual owner would not be a party to the CBM if the district
`
`court determined Gemstone was the actual owner of the patent. Id. at 3-4.
`
`The Board rejected this argument and instituted the CBM, id., reasoning that
`
`the participating patent owner was the assignee of record in the publicly-recorded
`
`assignment documents. Id. at 4. The Board also observed that the participating
`
`patent owner was engaged in an enforcement campaign and had sued the
`
`petitioner, and the Board criticized its attempt to leverage the ownership dispute in
`
`the CBM, while taking a different position in the district court case. Id.
`
`All of the circumstances present in Jewelry Channel are present here. Most
`
`importantly, like the participating patent owner in Jewelry Channel, UNM is the
`
` -5-
`
`

`

`presumptive assignee based on the recorded assignments. In addition, like the
`
`IPR2021-00375
`Patent No. 8,265,096
`
`
`participating patent owner in Jewelry Channel, UNM is engaged in an enforcement
`
`campaign (Petition at 2-3), including a lawsuit against Qualcomm’s RPI Dell. As
`
`in Jewelry Channel, UNM should not be able to claim it is the patent owner in its
`
`enforcement campaign while at the same time use the ownership dispute it initiated
`
`as a shield to interrupt this IPR.
`
`Likewise, in Pixart Imaging Inc. v. Syncpoint Imaging, LLC, IPR2015-
`
`01347, Paper 18 (PTAB Mar. 9, 2016), the Board rejected a patent owner’s request
`
`to file a motion to stay in view of an ownership dispute arising out of a bankruptcy
`
`proceeding involving the challenged patent. Id. at 3-4. As the patent owner had
`
`been “assigned ownership of the [challenged] patent,” it was the presumptive
`
`assignee, but the bankruptcy trustee claimed the assignment was improper. Id. at 4.
`
`In denying the stay request, the Board was “not persuaded” that “the bankruptcy
`
`proceeding will be resolved prior to our statutory deadline” or that it “justifies
`
`staying this proceeding, much less qualifies as an extraordinary circumstance that
`
`would waive the one year requirement to issue a final determination.” Id. The
`
`Board, thus, implicitly found the assignee of record participating as patent owner
`
`had standing to proceed. Id.
`
`Just as in Pixart and Jewelry Channel, the facts here involve an outside
`
`proceeding where patent ownership is being litigated and where a party other than
`
` -6-
`
`

`

`the record patent owner participating in the IPR could be found to be the patent
`
`IPR2021-00375
`Patent No. 8,265,096
`
`
`owner. And, just as in those decisions, the Board should not disrupt the timely
`
`completion of this IPR, not least because the presumptive assignee is already
`
`participating as the patent owner.2
`
`2.
`
`There is no other evidence in this IPR that rebuts UNM’s
`
`presumptive standing
`
`UNM has relied on FedEx Corp. v. Human Sciences HC Ltd., IPR2017-
`
`01830, Paper 23 (PTAB Apr. 10, 2018), to argue the Board can decide issues of
`
`patent ownership and standing. Paper 19 at 2. However, FedEx is distinguishable
`
`on its facts. There, the ownership issue was raised by the petitioner. Specifically,
`
`the petitioner sought to dismiss its own IPR based on extensive evidence that the
`
`entity attempting to participate as the patent owner lacked standing. FedEx Corp. v.
`
`Human Sciences HC Ltd., IPR2017-01830, Paper 29 at 6-7 (PTAB Aug. 13, 2018).
`
`For instance, the petitioner presented evidence that individuals who authorized a
`
`“Consent Resolution” permitting one of the recorded assignments were not
`
`
`2 The untimeliness of UNM’s attempt to introduce the ownership dispute here – only
`
`after the Board instituted review and months after initiating its New Mexico
`
`litigation against ITRI concerning ownership – further warrants rejecting it as a
`
`means to interrupt this IPR.
`
` -7-
`
`

`

`authorized to do so based on an analysis of the entities’ “certificate of
`
`IPR2021-00375
`Patent No. 8,265,096
`
`
`incorporation and bylaws.” Id. The petitioner also presented evidence of state and
`
`federal criminal and civil securities fraud proceedings against the individuals who
`
`had allegedly authorized the Consent Resolution. Id at 7. The Board then found
`
`that the petitioner had overcome the presumption of the recorded assignments’
`
`validity. Id. at 10-15.
`
`Unlike the FedEx petitioner, here, Qualcomm does not contest in this IPR
`
`UNM’s presumptive standing, nor does Qualcomm seek to dismiss the IPR on that
`
`basis. Moreover, no evidence of record in this IPR rebuts the presumptive validity
`
`of the recorded assignments. Accordingly, as none of the relevant facts relied upon
`
`in FedEx are present here, Pixart and Jewelry Channel govern.
`
`C. Qualcomm discharged its service/notice obligations, and no other
`
`considerations impact UNM’s standing
`
`37 C.F.R § 42.105(a) provides that “[t]he petition and supporting evidence
`
`must be served on the patent owner at the correspondence address of record for the
`
`subject patent.” Id. There are no other service obligations for a petitioner, and it is
`
`the patent owner’s responsibility to ensure that the correspondence address is
`
`current. M.P.E.P. § 2542. The correspondence address of record for the ’096 patent
`
`is the Charlotte office of the law firm Alston & Bird LLP. Ex. 1036. Qualcomm
`
` -8-
`
`

`

`discharged its service obligations by serving the petition and supporting evidence
`
`IPR2021-00375
`Patent No. 8,265,096
`
`
`to this address.3 Paper 4 at 3.
`
`Qualcomm’s fulfillment of its service obligations to the correspondence
`
`address of record alone should end any notice inquiry. To the extent there are any
`
`concerns whether ITRI is on notice, however, the record confirms it is. Indeed,
`
`here, the correspondent of record (the Charlotte office of Alston & Bird) is actually
`
`ITRI’s prosecution counsel. See Ex. 1037 at 1; Ex. 1001 at 1; Paper 4 at 3. In
`
`addition, ITRI participated in a June 2021 hearing in the Dell litigation where
`
`UNM argued extensively regarding the IPRs.4 Ex. 1035 at 21:15-16 (“This is Li
`
`Chen. I'm the counsel for ITRI.”); id. at 26:13-25 (discussing IPRs). In short, ITRI
`
`has long had notice of this IPR proceeding and an opportunity to participate. Its
`
`choice not to participate therefore raises no concern. See Henderson v. United
`
`States, 517 U.S. 654, 672 (1996) (“[T]he core function of service is to supply
`
`notice of the pendency of a legal action, in a manner and at a time that affords the
`
`defendant a fair opportunity to answer … and present defenses and objections.”).
`
`
`3 As a courtesy, Petitioner also served UNM’s litigation counsel. Paper 4 at 3.
`
`4 Even if ITRI did not have notice of the IPR (which it does, as explained above) but
`
`an interest in defending the validity of the patent, UNM’s participation adequately
`
`protects that interest.
`
` -9-
`
`

`

`UNM is the presumptive assignee and is participating as the patent owner.
`
`IPR2021-00375
`Patent No. 8,265,096
`
`
`No other entity has sought to participate. Further, this proceeding must be
`
`completed within one year of institution, absent good cause. 35 U.S.C. §
`
`316(a)(11). And “patent trial statutes and regulations … must be construed to
`
`secure the just, speedy, and inexpensive resolution of every proceeding.” Pixart,
`
`Paper 18 at 3 (citing 37 C.F.R. § 42.1(b).) Accordingly, Qualcomm is entitled to a
`
`timely determination.
`
`III. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`permit this IPR to proceed, with UNM participating as the patent owner.
`
`Dated: October 18, 2021
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/Jonathan I. Detrixhe/
`Lead Counsel
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
`
`
`Back-up Counsel
`Jonah D. Mitchell (pro hac vice
`admission pending)
`
` -10-
`
`

`

`IPR2021-00375
`Patent No. 8,265,096
`
`
`Christine M. Morgan (pro hac vice
`admission pending)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jmitchell@reedsmith.com
`cmorgan@reedsmith.com
`
`Peter J. Chassman (Reg. No. 38,841)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`
`
`
`Attorneys for QUALCOMM
`Incorporated
`
`
`
` -11-
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2021-00375
`Patent No. 8,265,096
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
`
`that on October 18, 2021, a complete copy of Petitioners’ brief on the issues of patent
`
`ownership and standing was filed electronically through the Patent Trial and Appeal
`
`Board’s PTABE2E System and provided, via electronic service, to the Patent Owner
`
`by serving the correspondence address of record.
`
`Dated: October 18, 2021
`
`
`
`Respectfully submitted,
`/ Jonathan I. Detrixhe /
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
`
`Counsel for Petitioner
`
`
`
` -12-
`
`

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