`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
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`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`
`Case IPR2021-00375
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`Patent No. 8,265,096 B2
`_____________________
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`PETITIONER’S BRIEF ON THE ISSUES OF PATENT OWNERSHIP
`AND STANDING
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`IPR2021-00375
`Patent No. 8,265,096
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`Table of Contents
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`I.
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`INTRODUCTION ............................................................................................. 1
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`II. ARGUMENT ..................................................................................................... 2
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`A. As the current assignee of record, UNM has presumptive standing to
`participate in this IPR as the patent owner ............................................................ 2
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`B. There is no evidence in this IPR rebutting the presumption that UNM is the
`assignee of the ’096 patent ..................................................................................... 4
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`1. The existence of other litigations involving patent ownership does not
`rebut the presumption ........................................................................................ 4
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`2. There is no other evidence in this IPR that rebuts UNM’s presumptive
`standing .............................................................................................................. 7
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`C. Qualcomm discharged its service/notice obligations, and no other
`considerations impact UNM’s standing ................................................................. 8
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`III. CONCLUSION ................................................................................................ 10
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`- ii -
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`Petitioner’s Updated Exhibit List
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`IPR2021-00375
`Patent No. 8,265,096
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`Pursuant to 37 C.F.R. § 42.63(e), Petitioner submits its updated exhibit list:
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`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
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`Ex. 1004
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`Ex. 1005
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`Ex. 1006
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`Ex. 1007
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`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
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`Ex. 1012
`Ex. 1013
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`Ex. 1016
`Ex. 1017
`Ex. 1018
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`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”)
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`(“Talukdar
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`IPR2021-00375
`Patent No. 8,265,096
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`of
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`Exhibit
`Ex. 1019
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`Ex. 1020
`Ex. 1021
`Ex. 1022
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`Ex. 1024
`Ex. 1025
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`Ex. 1026
`Ex. 1027
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`Ex. 1028
`Ex. 1029
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`Ex. 1030
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`Ex. 1031
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`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
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`Ex. 1032
`Ex. 1033
`Ex. 1034
`Ex. 1035
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`Ex. 1036
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`Ex. 1037
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`INTRODUCTION
`At the Board’s request (Paper 19 at 4), Qualcomm submits this brief to
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`IPR2021-00375
`Patent No. 8,265,096
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`I.
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`address patent ownership and standing. UNM has consistently identified itself as
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`the patent owner here, in the parallel litigation, and in other proceedings. Indeed, it
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`only introduced the specter of an ownership dispute here – after the Board
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`instituted review – as a gambit to halt review, but its position on its status as the
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`patent owner elsewhere has never wavered. UNM is the assignee of record based
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`on the face of the publicly-recorded assignments, which are presumed valid in this
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`proceeding. When the Board has considered attempts by record patent owners, like
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`UNM, to leverage ownership disputes in other forums to interrupt PTAB
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`proceedings, it has rejected them. The same should follow here. Proffering no
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`evidence to rebut the presumption flowing from the recorded assignments, UNM
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`has standing to participate as the patent owner.
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`Moreover, no other considerations warrant deviating from the orderly
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`completion of this IPR. Indeed, by serving the correspondent address of record for
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`the ’096 patent, Qualcomm met all service obligations necessary to proceed.
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`Moreover, to the extent there are any concerns regarding Industrial Technology
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`Research Institute (“ITRI”), here, the correspondent address of record for the ’096
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`patent is actually ITRI’s prosecution counsel. And, ITRI also is on notice of the
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`IPR through the parallel litigation. That it has chosen not to participate is of no
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`concern. This IPR should proceed without further delay and conclude by the
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`IPR2021-00375
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`statutory final determination deadline.
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`II. ARGUMENT
`A. As the current assignee of record, UNM has presumptive standing
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`to participate in this IPR as the patent owner
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`An assignee may establish standing in an IPR “by showing a chain of title
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`from the original owner to the assignee … by reference to documents recorded in
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`the USPTO.” FedEx Corp. v. Human Sciences HC Ltd., IPR2017-01830, Paper 29
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`at 8-9 (PTAB Aug. 13, 2018) (citing 37 C.F.R. §§ 3.73(c)(1)(i)–(ii).)
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`Although recording an assignment in the USPTO “is not a determination by
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`the Office of the validity of the document or the effect that document has on the
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`title to … a patent” (37 C.F.R. § 3.54), “[t]he recording of an assignment with
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`the PTO … creates a presumption of validity as to the assignment and places
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`the burden to rebut such a showing on one challenging the assignment.”). SIRF
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`Tech., Inc. v. ITC, 601 F.3d 1319, 1327–28 (Fed. Cir. 2010) (emphasis added).
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`Accordingly, “[i]n inter partes review proceedings, the Board generally accepts a
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`party’s identification of itself as patent owner.” FedEx Corp., IPR2017-01830,
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`Paper 29 at 9.
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`Here, the publicly-recorded assignment documents identify UNM as the
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`current assignee of record. The ’096 patent was filed as U.S. Application No.
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`12/168,855 (“the ’855 application”). Ex. 1001 at 1. USPTO assignment records
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`show: (1) the ’855 application assigned by the named inventors to ITRI, executed
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`on July 3, 2008 and recorded at the Patent Office on July 22, 2008 (Ex. 1032 at 1-
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`4); (2) the ’096 patent assigned by ITRI to Sino Matrix Technology, Inc. (“Sino
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`Matrix”), executed on March 7, 2018 and recorded at the Patent Office on March
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`14, 2018 (Ex. 1033 at 1-2); and (3) the ’096 patent assigned by Sino Matrix to
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`UNM, executed on August 21, 2018 and recorded at the Patent Office on
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`September 12, 2018 (Ex. 1034 at 1-4).
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`Accordingly, the recordation of these assignment records “creates a
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`presumption” of their validity and “places the burden to rebut such a showing on
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`one challenging the assignment.” SIRF Tech., 601 F.3d at 1327–28. However, in
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`this IPR, neither UNM nor Qualcomm has challenged the validity of these
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`assignments. Indeed, commencing with its mandatory notices, UNM has
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`consistently identified itself as the patent owner in this proceeding, just as it has
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`done in its enforcement campaign, where it has referenced the assignments to
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`establish its ownership. See UNM Rainforest Innovations v. ZyXEL Commc’ns
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`Corp., No. 6:20cv00522-ADA, Dkt. 30 at 1-2; FedEx, Paper 29 at 9 (“[T]he Board
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`generally accepts a party’s identification of itself as patent owner”). Thus, for
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`purposes of this proceeding, UNM is the presumptive assignee of the ’096 patent
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`and has standing.
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`There is no evidence in this IPR rebutting the presumption that
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`B.
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`UNM is the assignee of the ’096 patent
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`In support of its request to file a motion to stay this IPR, UNM relied
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`exclusively on the existence of outside proceedings in which ownership of the ’096
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`patent is being litigated.1 Paper 19 at 2. Under PTAB precedent, however, outside
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`proceedings do not impact UNM’s presumptive standing and the timely
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`completion of this IPR. Nor is there any other evidence in this IPR that rebuts
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`UNM’s presumptive standing.
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`1.
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`The existence of other litigations involving patent ownership
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`does not rebut the presumption
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`At least two Board decisions have addressed whether litigation in another
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`forum concerning ownership of a challenged patent impacts the patent owner’s
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`presumptive standing in a PTAB proceeding. Both involved the possibility that a
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`1 UNM cited the lawsuit it filed in New Mexico state court against ITRI to quiet title
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`to the ’096 patent. See UNM Rainforest Innovations v. Industrial Technology
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`Research Institute, No. D-202-CV-2021-02803 (N.M. 2d. Judicial District Court
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`May 4, 2021). It also referenced a proceeding ITRI initiated in Taiwan concerning
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`ownership. Ex. 1035 at 15:24-16:4. Because the Board denied UNM’s request to file
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`a motion to stay (Paper 19 at 3), Qualcomm does not address the stay issue further.
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`different entity could be declared the patent owner, and neither found any impact
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`on the patent owner’s presumptive standing to participate in PTAB proceedings.
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`In The Jewelry Channel, Inc. USA d/b/a Liquidation Channel v. Americas
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`Collectibles Network, Inc., CBM2014-00119, Paper 10 (PTAB Oct. 20, 2014), the
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`Board addressed whether a separate district court litigation in which a different
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`entity had claimed to be the patent owner had any impact on institution. Id. at 3-4.
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`In the district court case, that entity (Gemstone) moved for summary judgment that
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`it was the actual owner of the patent. Id. at 3. Like UNM here, the patent owner
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`(ACN) resisted a stay of the district court case pending resolution of the ownership
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`dispute, and argued the Board should decline to institute a CBM because of the
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`possibility that the actual owner would not be a party to the CBM if the district
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`court determined Gemstone was the actual owner of the patent. Id. at 3-4.
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`The Board rejected this argument and instituted the CBM, id., reasoning that
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`the participating patent owner was the assignee of record in the publicly-recorded
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`assignment documents. Id. at 4. The Board also observed that the participating
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`patent owner was engaged in an enforcement campaign and had sued the
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`petitioner, and the Board criticized its attempt to leverage the ownership dispute in
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`the CBM, while taking a different position in the district court case. Id.
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`All of the circumstances present in Jewelry Channel are present here. Most
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`importantly, like the participating patent owner in Jewelry Channel, UNM is the
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`presumptive assignee based on the recorded assignments. In addition, like the
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`participating patent owner in Jewelry Channel, UNM is engaged in an enforcement
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`campaign (Petition at 2-3), including a lawsuit against Qualcomm’s RPI Dell. As
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`in Jewelry Channel, UNM should not be able to claim it is the patent owner in its
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`enforcement campaign while at the same time use the ownership dispute it initiated
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`as a shield to interrupt this IPR.
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`Likewise, in Pixart Imaging Inc. v. Syncpoint Imaging, LLC, IPR2015-
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`01347, Paper 18 (PTAB Mar. 9, 2016), the Board rejected a patent owner’s request
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`to file a motion to stay in view of an ownership dispute arising out of a bankruptcy
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`proceeding involving the challenged patent. Id. at 3-4. As the patent owner had
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`been “assigned ownership of the [challenged] patent,” it was the presumptive
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`assignee, but the bankruptcy trustee claimed the assignment was improper. Id. at 4.
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`In denying the stay request, the Board was “not persuaded” that “the bankruptcy
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`proceeding will be resolved prior to our statutory deadline” or that it “justifies
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`staying this proceeding, much less qualifies as an extraordinary circumstance that
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`would waive the one year requirement to issue a final determination.” Id. The
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`Board, thus, implicitly found the assignee of record participating as patent owner
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`had standing to proceed. Id.
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`Just as in Pixart and Jewelry Channel, the facts here involve an outside
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`proceeding where patent ownership is being litigated and where a party other than
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`the record patent owner participating in the IPR could be found to be the patent
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`Patent No. 8,265,096
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`owner. And, just as in those decisions, the Board should not disrupt the timely
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`completion of this IPR, not least because the presumptive assignee is already
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`participating as the patent owner.2
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`2.
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`There is no other evidence in this IPR that rebuts UNM’s
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`presumptive standing
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`UNM has relied on FedEx Corp. v. Human Sciences HC Ltd., IPR2017-
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`01830, Paper 23 (PTAB Apr. 10, 2018), to argue the Board can decide issues of
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`patent ownership and standing. Paper 19 at 2. However, FedEx is distinguishable
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`on its facts. There, the ownership issue was raised by the petitioner. Specifically,
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`the petitioner sought to dismiss its own IPR based on extensive evidence that the
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`entity attempting to participate as the patent owner lacked standing. FedEx Corp. v.
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`Human Sciences HC Ltd., IPR2017-01830, Paper 29 at 6-7 (PTAB Aug. 13, 2018).
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`For instance, the petitioner presented evidence that individuals who authorized a
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`“Consent Resolution” permitting one of the recorded assignments were not
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`2 The untimeliness of UNM’s attempt to introduce the ownership dispute here – only
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`after the Board instituted review and months after initiating its New Mexico
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`litigation against ITRI concerning ownership – further warrants rejecting it as a
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`means to interrupt this IPR.
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`authorized to do so based on an analysis of the entities’ “certificate of
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`incorporation and bylaws.” Id. The petitioner also presented evidence of state and
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`federal criminal and civil securities fraud proceedings against the individuals who
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`had allegedly authorized the Consent Resolution. Id at 7. The Board then found
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`that the petitioner had overcome the presumption of the recorded assignments’
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`validity. Id. at 10-15.
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`Unlike the FedEx petitioner, here, Qualcomm does not contest in this IPR
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`UNM’s presumptive standing, nor does Qualcomm seek to dismiss the IPR on that
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`basis. Moreover, no evidence of record in this IPR rebuts the presumptive validity
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`of the recorded assignments. Accordingly, as none of the relevant facts relied upon
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`in FedEx are present here, Pixart and Jewelry Channel govern.
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`C. Qualcomm discharged its service/notice obligations, and no other
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`considerations impact UNM’s standing
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`37 C.F.R § 42.105(a) provides that “[t]he petition and supporting evidence
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`must be served on the patent owner at the correspondence address of record for the
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`subject patent.” Id. There are no other service obligations for a petitioner, and it is
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`the patent owner’s responsibility to ensure that the correspondence address is
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`current. M.P.E.P. § 2542. The correspondence address of record for the ’096 patent
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`is the Charlotte office of the law firm Alston & Bird LLP. Ex. 1036. Qualcomm
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`discharged its service obligations by serving the petition and supporting evidence
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`to this address.3 Paper 4 at 3.
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`Qualcomm’s fulfillment of its service obligations to the correspondence
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`address of record alone should end any notice inquiry. To the extent there are any
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`concerns whether ITRI is on notice, however, the record confirms it is. Indeed,
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`here, the correspondent of record (the Charlotte office of Alston & Bird) is actually
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`ITRI’s prosecution counsel. See Ex. 1037 at 1; Ex. 1001 at 1; Paper 4 at 3. In
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`addition, ITRI participated in a June 2021 hearing in the Dell litigation where
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`UNM argued extensively regarding the IPRs.4 Ex. 1035 at 21:15-16 (“This is Li
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`Chen. I'm the counsel for ITRI.”); id. at 26:13-25 (discussing IPRs). In short, ITRI
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`has long had notice of this IPR proceeding and an opportunity to participate. Its
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`choice not to participate therefore raises no concern. See Henderson v. United
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`States, 517 U.S. 654, 672 (1996) (“[T]he core function of service is to supply
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`notice of the pendency of a legal action, in a manner and at a time that affords the
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`defendant a fair opportunity to answer … and present defenses and objections.”).
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`3 As a courtesy, Petitioner also served UNM’s litigation counsel. Paper 4 at 3.
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`4 Even if ITRI did not have notice of the IPR (which it does, as explained above) but
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`an interest in defending the validity of the patent, UNM’s participation adequately
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`protects that interest.
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`UNM is the presumptive assignee and is participating as the patent owner.
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`No other entity has sought to participate. Further, this proceeding must be
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`completed within one year of institution, absent good cause. 35 U.S.C. §
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`316(a)(11). And “patent trial statutes and regulations … must be construed to
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`secure the just, speedy, and inexpensive resolution of every proceeding.” Pixart,
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`Paper 18 at 3 (citing 37 C.F.R. § 42.1(b).) Accordingly, Qualcomm is entitled to a
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`timely determination.
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`III. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`permit this IPR to proceed, with UNM participating as the patent owner.
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`Dated: October 18, 2021
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`Respectfully submitted,
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`
`/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)
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`IPR2021-00375
`Patent No. 8,265,096
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`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
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`
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`Attorneys for QUALCOMM
`Incorporated
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`IPR2021-00375
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
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`that on October 18, 2021, a complete copy of Petitioners’ brief on the issues of patent
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`ownership and standing was filed electronically through the Patent Trial and Appeal
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`Board’s PTABE2E System and provided, via electronic service, to the Patent Owner
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`by serving the correspondence address of record.
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`Dated: October 18, 2021
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`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
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