Filed on behalf of: Unified Patents, LLC
`
`Entered: March 22, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`UNIFIED PATENTS, LLC
`Petitioner,
`
`- vs. -
`
`MEMORYWEB, LLC
`Patent Owner.
`______________________
`Case IPR2021-01413
`U.S. Patent 10,621,228
`______________________
`
`PETITIONER’S REQUEST FOR REHEARING
`AND PRECEDENTIAL PANEL REVIEW
`
`UNIFIED PATENTS EXHIBIT 1044
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 1 of 24
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`IPR2021-01413 (U.S. 10,621,228)
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`Petitioner’s Request for Rehearing
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`ARGUMENT ................................................................................................... 3
`A.
`The Order erred by prematurely deciding the RPI issue without
`the participation of all affected parties. ................................................. 3
`The Order should be reversed as arbitrary, capricious, and
`based on an erroneous conclusion of law. ............................................. 7
`III. CONCLUSION .............................................................................................. 15
`
`B.
`
`i
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`UNIFIED PATENTS EXHIBIT 1044
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`IPR2021-01413
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`IPR2021-01413 (U.S. 10,621,228)
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`Petitioner’s Request for Rehearing
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`CASES
`SUPREME COURT
`Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co.,
`463 U.S. 29 (1983) ........................................................................................... 7
`
`CIRCUIT COURTS
`Applications in Internet Time, LLC v. RPX Corp. (“AIT”),
`897 F.3d 1336 (Fed. Cir. 2018) ................................................ 2, 5-6, 8, 12-14
`
`Consol. Bearings Co. v. United States,
`348 F.3d 997 (Fed. Cir. 2003) ..................................................................... 1, 7
`
`Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., Inc.,
`924 F.3d 1243 (Fed. Cir. 2019) ....................................................................... 5
`
`Ramaprakash v. FAA,
`346 F.3d 1121 (D.C. Cir. 2003) ....................................................................... 9
`
`Thompson v. Barr,
`959 F.3d 476 (1st Cir. 2020) ............................................................................ 7
`
`Uniloc 2017 LLC v. Facebook Inc.,
`989 F.3d 1018 (Fed. Cir. 2021) ........................................................... 2, 14-15
`
`Verizon Tel. Cos. v. FCC,
`570 F.3d 294 (D.C. Cir. 2009) ......................................................................... 7
`
`Worlds Inc. v. Bungie, Inc.,
`903 F.3d 1237 (Fed. Cir. 2018) ................................................................... 5-6
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`ii
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`IPR2021-01413
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`

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`IPR2021-01413 (U.S. 10,621,228)
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`
`
`
`Petitioner’s Request for Rehearing
`
`DISTRICT COURTS
`10. Ameranth Inc. v Genesis Gaming Solutions Inc,
`No. 11-00189, 2015 WL 10791969 (N.D. Cal. Jan. 2, 2015) ......................... 6
`
`PATENT TRIAL AND APPEAL BOARD
`PTAB — General
`11. RPX Corp. v. Applications in Internet Time, LLC,
`IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential)
`(“RPX”) ............................................................................................ 2, 8, 12, 14
`
`SharkNinja Operating LLC v. iRobot Corp.,
`IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential)
`(“SharkNinja”) ......................................................................................... 1, 3-6
`
`
`
`12.
`
`
`
`13. Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc.,
`IPR2017-00651, Paper 148 (Jan. 24, 2019) (precedential)
`(“Ventex”) ........................................................................................................ 8
`
`
`
`
`PTAB — Unified Patents
`14. Unified Patents, LLC v. American Patents, LLC,
`IPR2019-00482, Paper 36 (DI, Aug. 6, 2019)
`Paper 104 (FWD, Jul. 13, 2020)
`Papers 115, 132 (public FWD) POP Request denied, Paper 121 (Oc.
`26, 2020) reh’g denied, Paper 122 (Dec. 4, 2022)
`aff’d, No. 2021-1635, (Fed. Cir. Mar. 10 2022) (RPI briefed)
`(“American”) ...................................................................................... 10, 11, 14
`
`
`
`15. Unified Patents, LLC v. Arigna Technology Ltd.,
`IPR2022-00285, Paper 10 (DI, Jun. 17, 2022)
`(“Arigna”) ................................................................................................ 1, 7, 8
`
`
`
`16. Unified Patents, LLC v. American Vehicular Sciences LLC,
`IPR2016-00364, Paper 13 (DI, Jun. 27, 2016)
`(“AVS”) .................................................................................................... 1, 7, 8
`
`
`
`17. Unified Patents Inc. v. Barkan Wireless IP Holdings, LP,
`IPR2018-01186, Paper 24 (DI, Dec. 7, 2018), Paper 27 (Public
`DI), Paper 56 (FWD, Dec. 4, 2019), Paper 57 (Public FWD)
`
`iii
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`

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`IPR2021-01413 (U.S. 10,621,228)
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`
`
`
`Petitioner’s Request for Rehearing
`
`aff’d 838 Fed.Appx. 565 (Fed. Cir. Mar. 2, 2021) (RPI briefed)
`(“Barkan”) ............................................................................................. 1, 7-14
`
`
`
`18. Unified Patents Inc. v. Bradium Technologies LLC,
`IPR2018-00952, Paper 31 (DI, Dec. 20, 2018),
`Paper 60 (FWD, Dec. 19, 2019), Paper 68 (Public FWD)
`(“Bradium”) ................................................................................. 1, 7, 8, 11, 14
`
`
`
`19. Unified Patents, LLC v. Carucel Investments,
`IPR2019-01079, Paper 9 (DI, Nov. 12, 2019)
`(“Carucel”) ........................................................................................ 1, 7, 8, 13
`
`
`
`20. Unified Patents Inc. v. Cellular Communications Equipment, LLC,
`IPR2018-00091, Paper 33 (FWD, May 22, 2019),
`EX1039 (Public FWD)
`(“CCE”) .................................................................................1, 7, 8, 10, 13, 14
`
`
`
`21. Unified Patents Inc. v. Clouding IP, LLC,
`IPR2013-00586, Paper 9 (DI, Mar. 21, 2014)
`(“Clouding”) ............................................................................................ 1, 7, 8
`
`
`
`22. Unified Patents Inc. v. Digital Stream IP,
`IPR2016-01749, Paper 22 (FWD, Mar. 9, 2018),
`(“Digital Stream”) ................................................................................... 1, 7, 8
`
`
`
`23. Unified Patents Inc. v. Dragon Intellectual Property, LLC,
`IPR2014-01252, Paper 37 (DI, Feb. 12, 2015),
`(“Dragon”) ............................................................................................... 1, 7, 8
`
`
`
`24. Unified Patents, LLC v. Fat Statz, LLC,
`IPR2020-01665, Paper 51 (Public FWD, Apr. 4, 2022)
`(“Fat Statz”) ......................................................................................... 1, 3, 7, 8
`
`
`
`25. Unified Patents Inc. v. Hall Data Sync Tech,
`IPR2015-00874, Paper 11 (DI, Sep. 17, 2015),
`(“Hall Data”) ........................................................................................... 1, 7, 8
`
`26. Unified Patents Inc. v. iMTX Strategic, LLC,
`IPR2015-01061, Paper 9 (DI Oct. 15, 2015)
`(“iMTX”) .................................................................................................. 1, 7, 8
`
`
`
`
`
`iv
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`Petitioner’s Request for Rehearing
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`IPR2021-01413 (U.S. 10,621,228)
`
`
`27. Unified Patents, LLC v. Intellectual Ventures II, LLC,
`IPR2022-00429, Paper 12 (DI, Aug. 11, 2022)
`(“IVII”) ......................................................................................... 1, 7, 8, 14, 15
`
`
`
`28. Unified Patents Inc. v. Mobility Workx, LLC,
`IPR2018-01150, Paper 9 (DI, Dec. 3, 2018)
`aff’d, No. 2020-1441 (Fed. Cir. Jul. 14, 2022) (RPI not briefed)
`(“Mobility Workx”) .................................................................................. 1, 7, 8
`
`
`
`29. Unified Patents Inc. v. MONKEYMedia, Inc.,
`IPR2018-00059, Paper 15 (DI, Apr. 16, 2018)
`(“MONKEYMedia”) ................................................................................. 1, 7, 8
`
`
`
`30. Unified Patents Inc. v. MV3Partners, LLC,
`IPR2019-00474, Paper 9 (DI, Jul. 16, 2019)
`(“MV3”) ............................................................................................. 1, 7, 8, 13
`
`
`
`31. Unified Patents Inc. v. Nonend Inventions N.V.,
`IPR2016-00174, Paper 10 (DI, May 12, 2016),
`(“Nonend”) ............................................................................................... 1, 7, 8
`
`
`
`32. Unified Patents Inc. v. Plectrum LLC,
`IPR2017-01430, Paper 8 (DI, Nov. 14, 2017),
`Paper 30 (FWD, Nov. 13, 2018)
`(“Plectrum”) ............................................................................................ 1, 7, 8
`
`
`
`33. Unified Patents, LLC v. Qurio Holdings, Inc,
`IPR2015-01940, Paper 7 (DI, Apr. 13, 2016)
`(“Qurio”) .................................................................................................. 1, 7, 8
`
`
`
`34. Unified Patents Inc. v. Realtime Adaptive Streaming, LLC,
`IPR2018-00883, Paper 29 (DI, Oct. 11, 2018),
`Paper 36 (Public DI)
`(“Realtime”) ................................................................................... 1, 7, 8, 9, 14
`
`
`
`35. Unified Patents Inc. v. Uniloc USA, Inc.,
`IPR2018-00199, Paper 33 (FWD, May 31, 2019),
`Paper 41 (Public FWD)
`(“Uniloc-00199”) ..................................................................................... 1, 7, 8
`
`
`
`v
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`Petitioner’s Request for Rehearing
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`IPR2021-01413 (U.S. 10,621,228)
`
`
`36. Unified Patents, LLC v. Uniloc 2017 LLC,
`IPR2019-00453, Paper 38 (FWD, Jul. 22, 2020)
`(“Uniloc-00453”) ..................................................................................... 1, 7, 8
`
`
`
`37. Unified Patents Inc. v. Uniloc 2017 LLC,
`IPR2017-02148, Paper 9 (DI, Apr. 17, 2018),
`Paper 74 (FWD, Apr. 11, 2019), Paper 82 (Public FWD),
`reh’g denied, Paper 91 (Jul. 17, 2019)
`(“Uniloc-02148”) ................................................................... 1, 7, 8-11, 13, 14
`
`
`
`38. Unified Patents Inc. v. Universal Secure Registry LLC,
`IPR2018-00067, Paper 54 (FWD, May 1, 2019),
`Paper 59 (Public FWD)
`(“USR”) .............................................................................................. 1, 7–9, 13
`
`
`
`39. Unified Patents, LLC v. Velos Media, LLC,
`IPR2019-00707, Paper 55 (FWD, Sep. 3, 2020)
`(“Velos”) .................................................................................................. 1, 7, 8
`
`
`
`
`STATUTES
`5 U.S.C. § 556(d) ....................................................................................................... 6
`35 U.S.C. § 315(b) ................................................................................................. 5-6
`35 U.S.C. § 315(e)(1) ............................................................................................. 4, 6
`35 U.S.C. § 315(e)(2) ............................................................................................. 4-5
`REGULATIONS
`37 C.F.R. § 42.20(c) ................................................................................................... 6
`
`
`
`vi
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`IPR2021-01413 (U.S. 10,621,228)
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`I.
`
`INTRODUCTION
`Petitioner (“Unified”) requests rehearing and Precedential Opinion Panel
`
`
`
`Petitioner’s Request for Rehearing
`
`Review of the Board’s Order (Paper 56, “Order”). The Order’s errors caused
`
`important procedural and due process issues that should have been avoided.
`
`First, the Order failed to follow the precedential SharkNinja decision by
`
`deciding a real party in interest (“RPI”) issue that did not and could not affect this
`
`proceeding. SharkNinja, 18-20. The Order reached the RPI issue, calling it a
`
`“necessary precursor” to determine whether to terminate two later-filed IPRs filed
`
`by Apple and Samsung. Order 6. But Apple and Samsung did not participate in this
`
`determination affecting their rights. Further, they now face a procedural quagmire.
`
`The Board has scheduled a conference call involving all of the parties in the three
`
`IPRs to discuss how the Board will proceed—despite already having rendered a
`
`decision based on the confidential record.
`
`Second, the Order was arbitrary, capricious, and an abuse of discretion under
`
`the Administrative Procedure Act (“APA”) because it came to opposite conclusions
`
`than the Board’s previous decisions addressing essentially the same situation without
`
`a sufficient explanation. Consol. Bearings, 348 F.3d 997, 1007 (Fed. Cir. 2003). The
`
`Board has issued over two dozen RPI decisions involving Unified and its members
`
`and—until now—it has always arrived at the same result on the same facts: Unified
`
`is the sole RPI. See Table of Authorities (TOA), supra, Cases 14-39. The Order took
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`1
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`IPR2021-01413 (U.S. 10,621,228)
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`facts deemed supportive of no additional RPI by numerous previous panels and
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`Petitioner’s Request for Rehearing
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`
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`weighed those facts in the contra. The Order lacked any explanation for its complete
`
`volte-face other than a footnote dismissing previous decisions either as institution
`
`decisions or as being before RPX—the precedential remand decision applying the
`
`Federal Circuit’s guidance in AIT. Yet the previous decisions also applied the
`
`guidance in AIT, and the Order never cites to any changed guidance in RPX other
`
`than to list the same factors identified in AIT and used in the previous decisions.
`
`Accordingly, the Board should grant rehearing and reverse, or at least vacate,
`
`the Order, and the Final Written Decision insofar that it refers to the Order. The
`
`Precedential Opinion Panel (POP) should take this case and make clear to future
`
`parties and panels that SharkNinja should be followed at any stage of the proceeding,
`
`especially to prevent RPI determinations that affect 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, to explain the RPX
`
`factors so as to resolve the inter-panel conflict, and to properly apply the post-RPX
`
`precedent that “the heart of the [RPI] inquiry is focused on whether a petition has
`
`been filed at a party’s behest,” not whether the third party has a relationship with the
`
`petitioner and would receive a direct benefit. Uniloc, 2017 LLC v. Facebook Inc.,
`
`989 F.3d 1018, 1028-29 (Fed. Cir. 2021) (quotation omitted).
`
`2
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`Petitioner’s Request for Rehearing
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`IPR2021-01413 (U.S. 10,621,228)
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`II. ARGUMENT
`A. The Order erred by prematurely deciding the RPI issue without
`the participation of all affected parties.
`SharkNinja’s rule is simple: avoid issuing advisory RPI opinions. Importantly,
`
`this rule ensures that the parties that would be affected by an estoppel are given a
`
`full and fair opportunity to be heard in the proceeding affected. It does so by reaching
`
`the RPI issue only when it could “result in termination of the proceeding or denial
`
`of institution of review.” SharkNinja, 18-20 (emphasis added). Thus, while patent
`
`owners “should not be forced to defend against later judicial or administrative
`
`attacks on the same or related ground,” SharkNinja recognized “[t]hat [later case] is
`
`not the case before us.” Id.; see also Fat Statz, Paper 51, 6–9.
`
`Same here: “[there is] no allegation or evidence that [Apple or Samsung] is
`
`barred or estopped from this proceeding.” SharkNinja, 19 (emphasis added); see
`
`also Reply, 33-34; Prelim. Reply, 1. Unified prevailed on the merits on all
`
`challenged claims, despite the irrelevant RPI dispute. See Paper 58 (Final Written
`
`Decision). Thus, even if Apple and/or Samsung might be subject to estoppel in their
`
`later proceedings, “that [wa]s not the case before [this panel.]” SharkNinja, 20. That
`
`is why “the interest of cost and efficiency” is “better serve[d]” by avoiding the RPI
`
`determination’s “extensive analysis,” unless “the failure to name the purported RPI
`
`[could] result[] in a time bar, estoppel, or anything else material to the case.”
`
`SharkNinja, 18-20. Here the parties expended approximately 44 pages of briefing
`
`3
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`IPR2021-01413 (U.S. 10,621,228)
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`addressing RPI, rather than the merits. POPR, 22-28; Prelim. Reply, 1-8; Paper 12,
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`Petitioner’s Request for Rehearing
`
`
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`6-7; Response, 14-26; Reply, 22-34; Sur-reply, 23-27. By not following SharkNinja,
`
`the Board issued a 35-page Order that did not have any effect in this proceeding but
`
`did prejudice the petitioners in the other proceedings because they had no
`
`opportunity to be heard on the predicate issue.
`
`The Order erred by stating “[i]t is appropriate for us to decide the RPI question
`
`now because we have a more fully-developed factual record before us.” Order, 5.
`
`That turns SharkNinja on its head. For efficiency reasons, the Board directed
`
`subsequent panels to avoid “such a lengthy exercise” unless it could result in
`
`“termination of the proceeding.” SharkNinja, 18-20 (emphasis added). Here, the
`
`panel had the alternative at hand—the other proceedings that might be affected.
`
`The Order, acknowledging this, nevertheless erred again by stating “Patent
`
`Owner now squarely puts the issue before us” because “‘Apple and Samsung’s
`
`follow-on IPRs … do implicate estoppel’” and therefore “‘the Board must address
`
`whether Apple and/or Samsung are RPIs’” as a “necessary precursor to determining
`
`whether they would be estopped” by § 315(e)(1) in their respective proceedings.
`
`Order, 5-6 (quoting POR, 16). But Board precedent dictates that the RPI issue should
`
`be dealt with in those cases, when and where the matter is properly raised and can
`
`be fully addressed by the parties allegedly subject to the estoppel. SharkNinja, 20
`
`(“But that is not the case before us.”). Indeed, the Order’s reasoning applies just as
`
`4
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`IPR2021-01413 (U.S. 10,621,228)
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`well to § 315(e)(2), thus implying that the Board should henceforth adjudicate RPI
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`Petitioner’s Request for Rehearing
`
`
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`as a “necessary precursor” for determining whether parties would be estopped at any
`
`future time in district court or the ITC—again all contrary to SharkNinja. This is
`
`despite that the Board’s order would have no legal preclusive effect in later courts,
`
`as it would need to have been, inter alia, “essential to the judgment,” requiring the
`
`parties to relitigate it under the shadow of prejudgment. See Papst Licensing GMBH
`
`& Co. KG v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1252 (Fed. Cir. 2019).
`
`Of course, “patent owners should not be forced to defend against later judicial
`
`or administrative attacks” by RPIs. SharkNinja, 20; Order, 6. But even the Order
`
`itself correctly recognized that “determining whether Apple or Samsung should be
`
`estopped in a subsequent proceeding would be premature,” and that the estoppel
`
`“decision [is] best left to those presiding over any subsequent proceeding who would
`
`have Apple or Samsung in front of them, which we do not.” Order, 5. But the Order
`
`then inexplicably went on to prejudge the most important and fact-intensive portion
`
`of their inquiry here, rather than in the “subsequent proceedings” with the full
`
`participation of those parties.
`
`In addition, the Order cannot serve as a “precursor” to later estoppel
`
`determinations in other cases because it placed the burden of persuasion on Unified
`
`to demonstrate that Apple and Samsung are not RPIs. Order, 8, 9. That is, of course,
`
`proper when the issue is whether the petitioner timely submitted its petition before
`
`5
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`IPR2021-01413 (U.S. 10,621,228)
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`the expiration of § 315(b)’s one-year period. AIT, 897 F.3d at 1356; Worlds, 903
`
`Petitioner’s Request for Rehearing
`
`
`
`F.3d at 1242. But unlike AIT, the issue here is not whether Unified timely submitted
`
`its petition under § 315(b). The issue is whether Apple and/or Samsung are estopped
`
`in their IPRs by § 315(e)(1). And if Patent Owner moves to terminate those IPRs, it
`
`will bear the burden of persuasion as the movant. 37 C.F.R. § 42.20(c); Worlds, 903
`
`F.3d at 1242 (“‘Except as otherwise provided by statute, the proponent of a rule or
`
`order has the burden of proof.’” (quoting 5 U.S.C. § 556(d)); Ameranth Inc. v
`
`Genesis Gaming Solutions Inc., 2015 WL 10791969, *13 (N.D. Cal. Jan. 2, 2015)
`
`(“But Plaintiff has not shown that Commerce was in fact a privy.”). Thus, the Order
`
`impermissibly reversed the burden of persuasion and forced Unified to prove a
`
`negative—that those parties are not RPIs (and without their participation even
`
`though their alleged interest was central to the Order’s finding). Order, 5-6, 9.
`
`In sum, the Order was no “necessary precursor.” Id., 6. And because it is not
`
`part of the record of any later adjudication of the § 315(e) estoppel, it fails to create
`
`a record sufficient for judicial review. Accordingly, the Order should be vacated to
`
`give the alleged RPIs a fair opportunity to litigate their cases with a clean slate and
`
`properly allocated burdens. Further, the POP should take this case to remove doubt
`
`regarding SharkNinja’s reach: the Board will reach RPI disputes in the proceeding
`
`where estoppel would take effect.
`
`6
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`Petitioner’s Request for Rehearing
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`B.
`
`The Order should be reversed as arbitrary, capricious, and based
`on an erroneous conclusion of law.
`The Board has issued over two dozen RPI decisions over nearly a decade
`
`regarding Unified and its members, and until now, it has always arrived at the same
`
`result: Unified is the sole RPI. TOA, supra, Cases 14-39. In arbitrarily departing
`
`from previous decisions on highly similar facts, the Order misapplied the law.
`
`“An agency action is arbitrary when the agency offers insufficient reasons for
`
`treating similar situations differently.” Consol. Bearings, 348 F.3d at 1007 (internal
`
`quotations omitted). When the Board “decides to depart significantly from its own
`
`precedent, it must confront the issue squarely and explain why the departure is
`
`reasonable, the obvious goal being to avoid arbitrary action.” Thompson v. Barr, 959
`
`F.3d 476, 484 (1st Cir. 2020) (internal quotations omitted); Verizon Tel. Cos. v. FCC,
`
`570 F.3d 294, 301 (D.C. Cir. 2009) (If an agency “changes course, it ‘must supply a
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`reasoned analysis’ establishing that prior policies and standards are being
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`deliberately changed.”) (quoting Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto.
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`Ins. Co., 463 U.S. 29, 57 (1983)).
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`The Order offered no reasonable explanation for its significant departure from
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`previous panel applications of what should have been the same RPI analysis given
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`that the parties were more than similarly situated—they were in practically identical
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`situations, as all of them involved Unified and its members, with similar records.
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`The Order merely includes a footnote stating that some of the previous cases were
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`7
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`UNIFIED PATENTS EXHIBIT 1044
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 14 of 24
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`IPR2021-01413 (U.S. 10,621,228)
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`at the institution phase, and others were decided before RPX. Order, 15-16 n.2. But
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`Petitioner’s Request for Rehearing
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`
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`RPX did not change the law. Rather, the Federal Circuit remanded with instruction
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`to apply the proper RPI test, which was already in the Trial Practice Guide, and listed
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`eight factors identified by the Federal Circuit as applicable to that particular case.
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`AIT, 897 F.3d at 1356-58; RPX, 10. And since AIT, the Board has adjudicated RPI
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`issues in seventeen Unified cases, and always with the same result: Unified as sole
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`RPI. TOA, supra, Cases 14-39. The Order did not (nor could it) identify anything
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`wrong in these seventeen post-AIT cases or the two post-AIT (but pre-RPX) final
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`written decisions, nor identify any distinguishing facts to justify a different result.
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`The Order also failed to identify any new guidance in RPX that could justify a
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`departure. Order, 7-9, 14.
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`The Order also failed to consider the Board’s precedential, post-AIT Ventex
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`decision, which quoted with approval a post-AIT final written decision holding
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`Unified to be the sole RPI:
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`[W]e are mindful that we must be cautious not to “overextend[]” the
`reasoning set forth in AIT to any situation where “a party benefits
`generally from the filing of the Petition and also has a relationship with
`the Petitioner.”
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`Ventex, Paper 148, 10 (quoting Realtime, Paper 36, 14-15); see also Barkan, aff’d,
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`838 F’Appx 565 (Fed. Cir. 2021). With no contrary factual support, the Order
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`overextended the reasoning in AIT to swallow the situation here and all previous
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`8
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`UNIFIED PATENTS EXHIBIT 1044
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 15 of 24
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`IPR2021-01413 (U.S. 10,621,228)
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`Unified cases. With this Order, the Board’s RPI analysis has devolved into
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`Petitioner’s Request for Rehearing
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`
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`impermissible “ad hocery” because it is “impossible at this point to tell whether the
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`Board, in the next [RPI] case” presented with essentially the same facts as this case
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`(and the many that came before it) will determine that a party is an RPI, or not.
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`Ramaprakash v. FAA, 346 F.3d 1121, 1130 (D.C. Cir. 2003). In short, arbitrary.
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`The Order’s impermissible “ad hocery” extended beyond its result, infecting
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`its handling of the facts. For example, the Order concluded from their membership
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`agreements that Apple and Samsung each paid Unified to file IPRs against patents
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`asserted against them in particular. E.g., Order, 20-22, 30. Until then, panels had
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`uniformly concluded that Unified’s membership agreements and business model—
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`in some cases these exact agreements—support the opposite result. E.g., Barkan,
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`Paper 27, 13 (“Unified is not solely an inter partes review-filing entity”); Uniloc-
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`02148, Paper 82, 19-21 (same); Realtime, Paper 36, 12 (rejecting theory that
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`members pay Unified to file IPRs); USR, Paper 58, 72-74.
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`In particular, previous panels and the record establish that: Unified’s business
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`is to broadly deter the use of invalid patents; Unified has sole discretion to perform
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`a variety of deterrence activities, only one of which is filing an IPR; Unified often
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`files where no members—or sometimes anyone—is in suit; Unified acts
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`independently because it cannot practically accomplish its mission of deterrence if
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`it needed to coordinate with its many members with potentially conflicting interests
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`9
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`UNIFIED PATENTS EXHIBIT 1044
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 16 of 24
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`IPR2021-01413 (U.S. 10,621,228)
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`or strategies on its activities; it would be financially untenable for Unified to file
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`Petitioner’s Request for Rehearing
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`
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`IPRs for individual members because most of them pay less than the cost of a single
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`IPR; and there is no evidence that members pay Unified to file IPRs. American,
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`Paper 115, 47-52; Uniloc-02148, Paper 28, 18-21; Barkan, Paper 57, 9-12; see also
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`Reply, 23-25, 27-28, 31, 33; Prelim. Reply 2-5. Importantly, the Order did not find
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`that any fact contradicted these previous holdings; it merely looked at the same
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`evidence and arbitrarily arrived at a different result.
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`As another example, the Order sua sponte found that a
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`
`
` demonstrated
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`communications and control. Order, 24-26. The parties did not address this
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` at all during briefing or argument in this IPR. With
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`good reason, as record evidence demonstrated it was never implemented and was
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`—including Samsung’s. EX1023, ¶19 n.1
`
`
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` was
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`obviously irrelevant here. That may be why only one previous panel even bothered
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`to mention the moribund
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`finding that it did not support RPI. CCE, Paper
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`33, 14-15. Yet the Order here found it indicative of
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`
`
`
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` but it is conspicuously silent on Samsung, who is not
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`10
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`UNIFIED PATENTS EXHIBIT 1044
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 17 of 24
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`addressed under this factor. Order, 24-26.
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`
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`Petitioner’s Request for Rehearing
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` which no party briefed,
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`
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`
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` EX1023, ¶19 n.
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`In another example of impermissible “ad hocery,” the Order dismissed the
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`same undisputed facts that previous post-AIT panels weighed significantly in favor
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`of finding Unified to be the sole RPI, such as the lack of any relevant pre-filing
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`communications whatsoever
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`
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`, that Unified shares no board members with any members, and
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`that Unified has no attorney/client relationship with its members. Compare Order,
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`19, 24, 26-28 (evaluating member agreements and other evidence) with, e.g.,
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`American, Paper 115, 47-48 (concluding that lack of pre-filing communications and
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`membership agreement demonstrates that Unified is the sole RPI); Bradium, Paper
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`68, 15-16, 20; (crediting lack of “shared officers or board members” with alleged
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`RPI, including Apple); Barkan, Paper 57, 6, 11 (crediting lack of attorney-client
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`relationship); see also Reply, 25, 27-28, 33; Prelim. Reply, 1, 3-4, 6, 8.
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`Conversely, the Order placed significant weight on post-filing reports of
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`public information, Samsung’s and Apple’s later-filed IPRs that had positions
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`conflicting with Unified’s IPR, and an eight-year-old archived webpage. Order, 13,
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`21, 24-27, 30. But none of this is new: previous panels rejected that such facts
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`showed any coordination, direction, or control. E.g., Uniloc-02148, Paper 82, 15,
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`11
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`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
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`21-22 (post-filing annual report and archived website); American, Paper 115, 42 n.21
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`Petitioner’s Request for Rehearing
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`
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`(archived versions of Unified’s website), 42-44, 47-48 (membership reports);
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`Barkan, 8 (members filing IPRs after Unified indicates that members “did not direct
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`or control” Unified’s IPR); see also Reply, 28, 30-31, 33; Prelim Reply, 1-2, 6-8.
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`The Order’s reliance (32-33) of members’ after-filed IPRs as evidence of a desire
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`for Unified’s challenge is simply illogical: how can IPRs filed afterwards lead
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`Unified to file something beforehand? Barkan, Paper 57, 8. In RPX, it was the non-
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`party’s earlier filings that indicated interest in RPX’s filings. RPX, 27.
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`The Order also redefined “willfully blind” and departed from AIT and RPX.
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`AIT noted “that RPX worked to ascertain, with a strong degree of confidence, its
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`client’s desires, while taking last-minute efforts to avoid obtaining an express
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`statement of such desires.” AIT, 897 F.3d at 1355; RPX, 20. To tag Unified with the
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`willfully blind moniker, the Order impermissibly stretched the term to include
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`Unified actively complying with the law when it created a firewall to preclude any
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`communication whatsoever regarding potential IPR filings and the conduct of any
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`IPR. Order, 26-28. Thus, the Order devised a Catch-22: following the rules is a sign
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`that one is not following the rules. Id.
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`The Order disparaged Unified for avoiding even the appearance of
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`impropriety, equating Unified’s firewall with RPX’s “last-minute efforts” to hide
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`actual control. Order, 28. But unlike Unified, RPX did n