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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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`UNIFIED PATENTS, LLC
`Petitioner
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`v.
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`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH INSTITUTE
`Patent Owner
`____________
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`Case No. IPR2021-00827
`Patent 9,781,448
` ____________
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`PRELIMINARY REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case No. IPR2021-00827
`U.S. Patent 9,781,448
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`TABLE OF CONTENTS
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`I. INTRODUCTION .......................................................................................... 1
`II. FACTUAL BACKGROUND ......................................................................... 1
`III. THE MEMBERS ARE NOT REAL PARTIES IN INTEREST ................ 1
`A.
`Factor 1: Unified’s Business Model ................................................... 2
`B.
`Factor 2: Unified filed this IPR because Unified believes the ’448
`Patent is a poor-quality patent, not to benefit any of the individual
`Members ............................................................................................ 4
`Factors 3 and 6: Unified did not consider, and is not representing, any
`Member’s interest .............................................................................. 4
`Factors 4-6: Membership and speculative benefits are insufficient to
`establish RPI ...................................................................................... 6
`Factors 7-9 ......................................................................................... 7
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`C.
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`D.
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`E.
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`i
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`I.
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`INTRODUCTION
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`Case No. IPR2021-00827
`U.S. Patent 9,781,448
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`Patent Owner ETRI (“PO”) seeks denial of institution on the grounds that the
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`Video Codec Zone members (“Members”) of Unified Patents, LLC (“Petitioner”)
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`are real parties in interest (RPIs) or a requirement that the Members be named as
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`RPIs. Petitioner is the sole RPI. Petitioner alone directed, controlled, and funded this
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`IPR. The Petition was not prepared at the behest of, or to benefit, any individual
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`Members. Neither remedy proposed by PO is appropriate here, particularly where
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`no time bar or estoppel issues exist—the ’448 Patent has not been asserted.
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`II.
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`FACTUAL BACKGROUND
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`In all of its over 200 IPR petitions, Unified has certified itself as the sole RPI;
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`every time that identification has been challenged, the Board has found it correct.
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`See, e.g., American Patents LLC, IPR2019-00482, Paper 115, 33-52 (Aug. 13, 2020)
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`(holding “Petitioner properly named itself as the only RPI”); Velos Media, LLC,
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`IPR2020-00352, Paper 39, 45-47 (final written decision holding, post AIT-II, there
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`was no need to join Unified Members where no time bar or estoppel issues existed).
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`III. THE MEMBERS ARE NOT REAL PARTIES IN INTEREST
`The Board’s RPI framework, set forth in the Trial Practice Guide (“TPG”)
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`and clarified by the Federal Circuit, directs the Board to consider the “full range of
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`relationships” between parties taking into account “practical and equitable
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`considerations” to ensure parties are not improperly gaming estoppel under §315(e)
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`1
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`U.S. Patent 9,781,448
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`and/or the §315(b) time bar. Applications in Internet Time, LLC v. RPX Corp., 897
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`F.3d 1336, 1342, 1350-1351 (Fed. Cir. 2018) (“AIT”); RPX Corp. v. Applications in
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`Internet Time, LLC, IPR2015-01750, Paper 128, 2, 8-9, 34 (Oct. 2, 2020)
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`(precedential) (“AIT-II”) (enumerating the factors below).
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`A. Factor 1: Unified’s Business Model
`Since inception, Unified’s sole purpose has been to protect technologies by
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`deterring the use of invalid patents in designated technology areas, not to advance
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`any specific goals of individual Members. See Ex. 2003, 18:20-20:1, 74:10-78:1,
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`81:10-83:6. The Board has assessed Unified’s business structure and confirmed it is
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`the sole RPI to its proceedings. See, e.g., Velos Media, LLC, IPR2019-00757, Paper
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`41, 21 (Aug. 18, 2020); American Patents, Paper 122, 8 (Dec. 3, 2020) (analyzing
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`the “nature of [Unified’s] business” and determining that Unified “properly named
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`itself as the sole RPI.”); Velos Media, LLC, IPR2020-00352, Paper 39, 45-47.
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`PO starts by incorrectly identifying Unified’s “key service” as filing IPRs, and
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`it wrongly alleges that Unified’s “‘primary activity is filing IPRs.’” POPR, 73
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`(quoting American Patents). Not so. The evidence refutes this characterization—
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`Unified provides many facets of patent deterrence, including data analytics,
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`essentiality studies and economic surveys directed to standard essential patent
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`issues, landscape tools and standards databases, as well as administrative challenges.
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`See Ex. 2003, 19:18-20:1, 74:10-78:1, 81:10-83:6, 101:4-17. In fact, after PO
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`2
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`U.S. Patent 9,781,448
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`identifies filing IPRs as Unified’s “primary,” “key service,” the POPR goes on to
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`cite evidence that Unified provides (at its sole discretion) a broad variety of patent-
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`related activities to its Members. POPR, 75 (citing Ex. 2005). Validity reviews (of
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`which IPRs are only a subset, given that Unified also files reexaminations and
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`foreign oppositions (see Ex. 1011, ¶ 3)) are perhaps the most publicly visible of
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`Unified’s efforts, but hardly the “primary” “key service” of Unified’s deterrent
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`solution. Indeed, the Board has recognized that, even if IPRs represent a large
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`portion of Unified’s activity, “that does not mean that [IPR] filings constitute nearly
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`all of its business or provide a significant amount of the firm’s value to its
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`customers.” Barkan Wireless IP Holdings, L.P., IPR2018-01186, Paper 27, 13 (Dec.
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`7, 2018) (affirmed on appeal, see Barkan Wireless IP Holdings, L.P. v. Unified
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`Patents, LLC, Appeal No. 20-1442, slip op., 2 (Fed. Cir. Mar. 2, 2021)).
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`Unified’s varied approach to patent deterrence stands in stark contrast to RPX.
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`RPX used IPRs as part of its core aggregation business by negotiating with patent
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`owners on behalf of its clients to reduce costs. This is no split hair; RPX negotiates
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`large settlements with NPEs (and uses IPRs to achieve this goal), to “‘extricate’”
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`clients from litigation and thereby ‘reduce expenses for clients.’” AIT-II, 23; see also
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`id., 11, 13, 16, 19, 20. Unified does not pay or seek to extricate Members from
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`litigation, even where (unlike here) the challenged patent is involved in litigation.
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`See Ex. 2003, 18:20-20:1, 74:10-78:1, 81:10-83:6; Ex. 1011, ¶ 9.
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`3
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`U.S. Patent 9,781,448
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`In sum, examining Unified’s business model reveals that it is significantly
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`different than RPX’s, and is not one of filing IPRs on behalf of other companies.
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`Rather, Unified files IPRs at its own discretion, based on its own analysis of invalid
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`patents, as one aspect of a multi-faceted deterrence strategy.
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`B. Factor 2: Unified filed this IPR because Unified believes the ’448 Patent
`is a poor-quality patent, not to benefit any of the individual Members
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`Unified’s decision to challenge the ’448 Patent was, as always, without the
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`insight, assistance, or approval from any Member, and was not in furtherance of any
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`Member’s stated or desired benefit. Ex. 1011, ¶ 5. Unified alone determines whether
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`to file a validity challenge at all or whether to file a challenge against a particular
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`patent owner, and it does so to further its own mission of improving patent quality.
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`See Ex. 1011, ¶ 4. Specifically, regarding the ’448 Patent: (1) no Member made
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`Unified aware of, or expressed any interest in, the ’448 Patent or PO (see Ex. 1011,
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`¶ 13); (2) Unified never sought to ascertain the desires of any third-party regarding
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`the ’448 Patent (id.); and (3) because of these two facts, Unified does not and cannot
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`know if there is a specific benefit to any of the individual Members from this IPR—
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`especially since, to Unified’s knowledge, this patent has never been asserted.
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`C. Factors 3 and 6: Unified did not consider, and is not representing, any
`Member’s interest
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`Unlike in AIT-II, Unified did not, and does not, “intentionally avoid[]
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`discussion about a forthcoming IPR…for the sole purpose of avoiding having to
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`4
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`name the client as an RPI.” AIT-II, 20. Unified does not discuss forthcoming IPRs
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`because it seeks to maintain its independence, and as a consequence, it is the sole
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`RPI to its proceedings. Ex. 2002, 134:15-25. Unified does not communicate with
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`Members about specific patent litigations in which they might have an interest,
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`communicate regarding validity challenges it will or will not file, or communicate
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`regarding pending validity challenges absent announcements of public events. Ex.
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`1011, ¶¶ 5-7. No Unified Member funded this petition. Ex. 1011, ¶ 9. As a result, no
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`Member has control, has opportunity to control, or has coordinated this or any other
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`challenge Unified chooses to pursue. See Ex. 2003, 68:22-69:9. No one, including
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`no Unified Member, has challenged the ’448 Patent, and, to the best of Unified’s
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`knowledge, no one has been sued or threatened with suit on it. Accordingly, no
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`alleged RPI is estopped under §315(e) and/or time-barred under §315(b), the driving
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`policy considerations in the TPG framework. AIT-II, 2, 32, 34, 36; SharkNinja, 17.
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`PO also speculates, without evidence, that Unified “plainly considers and
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`represents its customers’ interests in filing IPRs, including this one” based in part on
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`its naked contention that Unified “members are free to email or call Unified’s CEO,
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`and to tell Unified about patent licensing demands and patent threats.” POPR, 77
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`(citing Ex. 2002, 104:9-22). PO is wrong in this case and in general. Here, there is
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`no evidence or even allegation that any such demands or threats have been made,
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`much less that Unified is aware of any. More generally, Unified does not consider
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`5
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`U.S. Patent 9,781,448
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`whether its Members are interested in a challenge; for example, Unified does not
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`have a policy of not filing patent challenges against patents owned by its Members
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`(Ex. 2002, 29:13-30:12) and Unified does not and cannot consider whether positions
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`taken in its IPRs conflict with Member positions in district court litigations (or in
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`other IPRs). See Ex. 2004, 16:14–167-21.
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`D. Factors 4-6: Membership and speculative benefits are insufficient to
`establish RPI
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`Without explicitly stating as much, PO seems to be arguing in favor of the
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`“benefits-plus-relationship” test (POPR, 76-78) that has been consistently rejected
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`by the Board. See, e.g., AIT-II, 30, 31; American Patents, 7. An entity does not
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`become an RPI simply because they generally benefit from a dispute in which their
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`interest is not specifically represented. See, e.g., Uniloc, IPR2017-02148, Paper 74,
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`22-24 (“the question is whether Petitioner is specifically representing the unnamed
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`party’s interest” (citing AIT, 1353)); Barkan, Paper 27, 11. The RPI inquiry’s intent
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`is to prevent petitioners from enabling third parties to game the IPR process. AIT,
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`1342, 1349-1351, 1358; AIT-II, 2, 7-10, 34. The “benefits-plus-relationship” test, in
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`contrast, would undermine access to IPR by causing every member of a joint defense
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`group, trade association, and supplier-customer relationship to automatically
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`become RPIs, contrary to the TPG and AIT. TPG, 48760; AIT, 1351.
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`PO asserts, wholly unsupported by the evidence, that “filing IPRs to obtain
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`licenses” is what Unified “sell[s] to people” (POPR, 78 (citing Ex. 2002, 73:2–21)),
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`6
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`and “Unified uses IPRs for ‘clearing patent rights’ through invalidation and by
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`seeking non-essentiality arguments” (id. (citing Ex. 2002, 153:23–154:23 and Ex.
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`2007, 239–241)), implying that this means the Members are “customers” of Unified
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`(id., 77). Even assuming this point (which Unified disputes), the Board has
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`confirmed “a standard customer-supplier relationship” does not confer RPI status.
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`See Samsung Elecs. Co., Ltd. v. Seven Networks, LLC, IPR2018-01108, Paper 31,
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`11 (PTAB Nov. 28, 2018) (citing WesternGeco LLC v. ION Geophysical Corp., 889
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`F.3d 1308, 1321 (Fed. Cir. 2018)). Thus, the Members are not RPIs even under PO’s
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`characterization of the relationship.
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`E. Factors 7-9
`Factor 7: There is no evidence that any Member desired review of this patent.
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`As discussed above, Unified does not communicate with Members about specific
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`patents or litigations in which they might have an interest, validity challenges
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`Unified will or will not file, or pending validity challenges absent announcing public
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`events. Not only is there no litigation of the challenged patent, but there is no
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`evidence that it has been asserted or discussed in any manner by Unified with respect
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`to any Unified Member. Factor 8: There are no shared board members. Unified has
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`no attorney-client relationship with, and does not act as legal counsel to, Members.
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`Ex. 2003, 93:5-17. Factor 9: As noted above, Unified had no communications with
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`Members regarding this patent or IPR save public announcements regarding filing.
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`BY:
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`Case No. IPR2021-00827
`U.S. Patent 9,781,448
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`Respectfully submitted,
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`ERISE IP, P.A.
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`/s/ Eric A. Buresh
`Eric A. Buresh, Reg. No. 50,394
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
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`ATTORNEYS FOR PETITIONER
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`8
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`Case No. IPR2021-00827
`U.S. Patent 9,781,448
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`Exhibit List
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`Exhibit 1001 U.S. Patent 9,781,448 (“’448 Patent”)
`Exhibit 1002
`File History of U.S. Patent 9,781,448 (“’448 File History”)
`Exhibit 1003 Declaration of Dr. Immanuel Freedman
`Exhibit 1004 U.S. Patent Publication 2005/0201633 to Moon et al. (“Moon”)
`Exhibit 1005 U.S. Patent 8,681,867 to Teng et al. (“Teng”)
`Exhibit 1006 U.S. Patent 8,326,075 to Wilkins et al. (“Wilkins”)
`Exhibit 1007 Curriculum Vitae of Dr. Immanuel Freedman
`Shi et al., Image and Video Compression for Multimedia
`Exhibit 1008
`Engineering, CRC Press (2000) (“Shi”)
`Iain E. G. Richardson, H.264 and MPEG-4 Video Compression, John
`Wiley & Sons Ltd. (2003) (“Richardson”)
`Peter Symes, Video Compression Demystified, McGraw-Hill (2001)
`Exhibit 1010
`(“Symes”)
`Exhibit 1011 Declaration of Kevin Jakel
`Exhibit 1012
`File History of U.S. Patent 9,549,204
`IEEE Transactions on Circuits and Systems for Video Technology,
`Overview of the H.264/AVC Video Coding Standard, by Wiegand et
`al. (2003) (“Wiegand”)
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`Exhibit 1009
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`Exhibit 1013
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`W. Karl Renner (IPR07314-0040IP1@fr.com)
`Roberto J. Devoto (PTABInbound@fr.com)
`Nicholas Stephens (PTABInbound@fr.com)
`Kayvan B. Noroozi (kayvan@noroozipc.com)
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`Respectfully submitted,
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`ERISE IP, P.A.
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`BY: /s/ Eric A. Buresh
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`Eric A. Buresh, Reg. No. 50,394
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`ATTORNEY FOR PETITIONER
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`Case No. IPR2021-00827
`U.S. Patent 9,781,448
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 5, 2021, a
`complete and entire copy of this Preliminary Reply to Patent Owner’s Preliminary
`Response, was provided via email to the Patent Owner by serving the email address
`of record as follows:
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