UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. 16
`August 24, 2021
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZYXEL COMMUNICATIONS CORPORATION,
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`Petitioner,
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`v.
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`UNM RAINFOREST INNOVATIONS,
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`Patent Owner.
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`IPR2021-00734
`Patent No. 8,265,096
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`PATENT OWNER UNM RAINFOREST INNOVATIONS’
`SUR-REPLY TO PETITIONER’S REPLY
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`Paper No. 16
`August 24, 2021
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`ZYXEL COMMUNICATIONS CORPORATION,
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`Petitioner,
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`v.
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`UNM RAINFOREST INNOVATIONS,
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`Patent Owner.
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`IPR2021-00734
`Patent No. 8,265,096
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`PATENT OWNER UNM RAINFOREST INNOVATIONS’
`SUR-REPLY TO PETITIONER’S REPLY
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`1. FINTIV FACTOR 2
`Although the Dell and ZyXEL litigations have been stayed pending
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`UNM’s lawsuit in New Mexico state court to quiet title to the ’326, ’096, and
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`’204 patents (UNM v. ITRI, et al., case number D-202-CV-2021-02803), the
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`defendant has challenged the jurisdiction of the state court over it as a foreign
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`entity. If this case is dismissed, the Dell and ZyXEL trials will be resumed. If
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`this occurs even within the next 6 months, it remains very likely that the Dell
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`and ZyXEL trials will occur before the final written decision in this matter,
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`expected in Oct. 2022. Fintiv factor 2 thus still favors denying institution.
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`2. ZYXEL’S IMPROPER IN REM PROCEEDING
`A. The Board Cannot Adjudicate this Proceeding Without a
`Determination of the True Patent Owner
`ZyXEL improperly filed its Petition in rem, in violation of 35 U.S.C. §
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`311(a), which authorizes a person to “file with the Office a petition to institute
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`an inter partes review of the patent.” ZyXEL’s in rem Petition does not satisfy
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`the inter partes requirement of the provision. Title 35 which provides the IPR
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`framework, explicitly requires participation by the patent owner. For example,
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`35 U.S.C. § 312(a)(5) requires the petitioner to provide a copy of the petition
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`and other documents “to the patent owner or, if applicable, the designated
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`representative of the patent owner.” The remaining provisions of that section
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`also require participation of the patent owner in numerous aspects. Id. at §§
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`1
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`313-316. Proper compliance with these provisions requires a determination of
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`who the patent owner is. ZyXEL itself has called this condition precedent into
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`question by filing its Petition not as an inter partes petition, but instead as an
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`in rem petition against the patent itself. (Paper 1 at caption). ZyXEL confirmed
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`its position by serving its Petition as required by § 312(a)(5) on ITRI (the
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`Industrial Technology Research Institute), whom ZyXEL believes to be the
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`actual patent owner. ZyXEL thus explicitly acknowledged the issue of patent
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`ownership in this forum. Although ZyXEL now states that it does not seek to
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`challenge patent ownership before the PTAB, by proceeding only against the
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`patent itself, ZyXEL has squarely brought the issue of patent ownership into
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`this IPR. Regardless, this issue must be resolved before this IPR can proceed
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`under Title 35. Proceeding further—when patent ownership is unclear—risks
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`proceeding without the patent owner, in clear violation of the procedures
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`required by statute. If the Board decides to proceed with this IPR, the Board
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`must determine who the true patent owner is before proceeding. This panel can
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`decide patent ownership and confirm UNM’s rightful ownership based on
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`USPTO Assignment Records. See Ex. 2012.
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`B. If the Board Will Not Decide Patent Ownership, It Must Stay
`The Proceeding Until The Issue Is Resolved
`The AIA explicitly allows only Sections 102 or 103 to be raised in an
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`IPR. 35 U.S.C. § 311(b) (stating that “[a] petitioner in an inter partes review
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`may request to cancel as unpatentable 1 or more claims of a patent only on a
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`ground that could be raised under section 102 or 103 and only on the basis of
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`prior art consisting of patents or printed publications.”). An IPR petition is not
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`the proper forum, for example, to raise grounds based on 35 U.S.C. § 101. Id.
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`Similarly, an IPR would not ordinarily be considered the proper forum to raise
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`challenges to a patent’s ownership. ZyXEL’s improper in rem IPR defeats the
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`very purpose of the inter partes aspect of this reexamination, which is intended
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`to allow the benefit of cogent arguments regarding validity brought by two
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`interested parties. Although ZyXEL seeks to dodge the ownership question by
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`referring to UNM as the mere “assignee of record,” ZyXEL itself opened the
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`door by choosing to file these proceedings against the patents themselves.
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`Thus, if the Board chooses not to determine ownership, this proceeding
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`should be stayed until either a final determination of patent ownership is
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`reached, or ZyXEL stipulates that UNM is indeed the patent owner. Indeed,
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`ZyXEL and every other alleged infringer has moved to stay all district court
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`proceedings to await determination of the true Patent Owner. This IPR to
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`invalidate the patent is the only proceeding the alleged infringers want to pursue
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`regardless of any concerns about patent ownership. In this Sur-Reply, UNM
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`thus moves to stay pending the State Court’s decision on patent ownership. If
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`requested, UNM will provide additional briefing regarding its request to stay.
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`3
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`Potentially continuing this proceeding without the true Patent Owner, as
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`ZyXEL argues, would be in waste, as the proper Patent Owner did not get the
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`opportunity to participate as required. In short, this IPR cannot proceed until
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`patent ownership is definitively established, and unless the Board determines
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`that UNM is the true patent owner, the IPR must be stayed.
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`C. If The Board Adjudicates Patent Ownership, It Must Do So
`Before Addressing The Substantive Merits To Allow
`Participation By The Patent Owner
`As stated in Sec. 2.A., supra, Title 35 explicitly requires participation by
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`the patent owner and accords it various rights and responsibilities in its
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`participation in an IPR. 35 U.S.C. §§ 312-316. Proceeding with an IPR in a
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`way that substantively affects the rights of the patent owner without its
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`participation would amount to a violation of Title 35.
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`3. CONCLUSION
`For the foregoing reasons, discretionary denial or, at a minimum, a stay
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`until patent ownership is definitively established, is appropriate. In the event
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`the Board addresses the threshold issue of determining the patent owner, it must
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`do so before reaching the substantive merits of the Petition to afford the true
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`Patent Owner an opportunity to partake in defense of its intellectual property.
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`4
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`Date: August 24, 2021
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`Respectfully submitted,
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`/Jay P. Kesan /
`Jay P. Kesan, Reg. No. 37,488
`jkesan@dimuro.com
`DIMUROGINSBERG, PC
` DGKEYIP GROUP
`1750 Tyson’s Blvd., Suite 1500
`Tysons Corner, VA 22102
`Telephone: (703) 289-5118
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`/Ari Rafilson /
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`Ari Rafilson, Reg. No. 58,693
`arafilson@shorechan.com
`SHORE CHAN, LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`Telephone: (214) 593-9110
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`Attorneys for Patent Owner
`UNM Rainforest Innovations
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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 that
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`on August 24, 2021, a complete copy of Patent Owner UNM Rainforest
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`Innovation’s Sur-Reply To Petitioner’s Reply was filed electronically through the
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`Patent Trial and Appeal Board’s PTABE2E System and provided, via electronic
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`service, to the Petitioner by serving the correspondence address of record as follows:
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`Jonathan I. Detrixhe (jdetrixhe@reedsmith.com)
`Jonah D. Mitchell (jmitchell@reedsmith.com)
`Christine M. Morgan (cmorgan@reedsmith.com)
`Peter J. Chassman (pchassman@reedsmith.com)
`Ismail C. Kuru (ikuru@reedsmith.com)
`Martha Hopkins (mhopkins@sjclawpc.com)
`Victoria Hao (vhao@sjclawpc.com)
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`Dated: August 24, 2021
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`/Jay P. Kesan /
`Jay P. Kesan
`Reg. No. 37,488
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`6
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