From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Jonathan.Strang@lw.com
`Precedential_Opinion_Panel_Request
`Jonathan.Strang@lw.com; roshan@unifiedpatents.com; michelle@unifiedpatents.com;
`jenhayes@nixonpeabody.com; gdandalides@nixonpeabody.com; mwerber@nixonpeabody.com;
`Lauren.Rosen@lw.com; jonathan@unifiedpatents.com
`Precedential Opinion Panel Request: IPR2021-01413 (U.S. Pat. No. 10,621,228)
`Wednesday, March 22, 2023 11:59:35 PM
`2023.03.22 HC-AEOs - Petitioner"s Request for Rehearing.pdf
`
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`
`Dear Honorable Board,
`
`I write on behalf of Petitioner Unified Patents, LLC (“Unified”) to request Precedential
`Opinion Panel (“POP”) Review of the Board’s Order Identifying Real Party in Interest in
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 56 (March 8, 2023) (“the
`Order”).
`
`Pursuant to PTAB Standard Operating Procedure 2 (Rev. 10), lead counsel for Petitioner
`Unified makes the following certifications:
`Based on my professional judgment, I believe the Order is contrary to the
`following constitutional provision, statute, or regulation: Administrative
`Procedure Act, 5 U.S.C. § 706.
`
`Based on my professional judgment, I believe the Order is contrary to the
`following decision(s) of the Supreme Court of the United States, the United
`States Court of Appeals for the Federal Circuit, or the precedent(s) of the Board:
`Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29,
`57 (1983) (If an agency changes course, it “must supply a reasoned
`analysis” establishing that prior policies and standards are being
`deliberately changed.).
`Consol. Bearings Co. v. United States, 348 F.3d 997, 1007 (Fed.
`Cir. 2003) (“An agency action is arbitrary when the agency offers
`insufficient reasons for treating similar situations differently.”
`(citation omitted)).
`
`Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018 (Fed. Cir. 2021) (Real
`party in interest).
`
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed.
`Cir. 2018) (Real party in interest).
`
`RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper
`128 (October 2, 2020) (“RPX”) (Real party in interest).
`
`SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734
`(October 6, 2020) (Precedential) (Real party in interest and
`procedure).
`IPR2021-01413
`Ex. 3001
`
`

`

`
`Unified’s attached Request for Rehearing (“Request”) fully sets forth the basis of the request
`and the above certifications. The Request if for Board and Parties only.
`
`Putting aside the particulars of this dispute, this case raises fairness, procedural, and case
`management issues—not to mention inconsistent results between panels—that will affect the
`Office’s conduct of IPRs and PGRs in the future. In short, the POP should take this case at
`least to make it clear that SharkNinja applies at any stage of the proceeding. Otherwise, other
`parties—hundreds of Unified members, but also suppliers, customers, subsidiaries, merging
`companies, etc.—could find themselves facing the same procedural and due process morass
`created when the Board issues an inconsistent RPI determination that affects third parties
`without giving those third parties notice and an opportunity to be heard.
`
`In addition, the POP should take this case to ensure proper application of their own precedent,
`and to explain the RPX factors, much like the Board did in Advanced Bionics with the Becton-
`Dickinson factors, to promote uniform compliance with binding precedent and consistent
`results when faced with the similar situations. As the Federal Circuit has explained, “the heart
`of the [RPI] inquiry is focused on whether a petition has been filed at a party’s behest.”
`Facebook, 989 F.3d at 1029 (quotation omitted). The factors considered, how they are
`considered, and the ultimate result should reflect that focus and breed consistency.
`
`At bottom, something is not right. Nothing changed, yet this panel arrived at a different result
`than the over two dozen Board panels that decided the issue before. Unified’s business—
`including, inter alia, deterring the use of invalid patents—has remained unchanged. Unified
`has consistently and voluntarily exceeded the law’s requirements, avoiding even the
`appearance of inappropriate communications with its membership. Only the panel, and the
`result, changed.
`
`For the reasons fully set forth in the attached Request, Petitioner Unified respectfully requests
`POP review, and reversal, or at least vacatur, of the Order.
`
`Very Respectfully,
`
`Jonathan Strang
`Counsel for Petitioner
`
`
`Jonathan M. Strang
`
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW
`Suite 1000
`Washington, D.C. 20004-1304
`Direct Dial: +1.202.637.2362
`Email: jonathan.strang@lw.com
`https://www.lw.com
`
`
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