PUBLIC VERSION
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 56
`Entered: March 8, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`TROCK, Administrative Patent Judge.
`
`ORDER
`Identifying Real Party in Interest
`37 C.F.R. §§ 42.5, 42.8
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 56
`Entered: March 8, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`TROCK, Administrative Patent Judge.
`
`ORDER
`Identifying Real Party in Interest
`37 C.F.R. §§ 42.5, 42.8
`
`
`
`
`
`
`
`IPR2021-01413
`Patent 10,621,228 B2
`A.
`Background
`Petitioner, Unified Patents, LLC, filed a Petition (Paper 2, “Pet.” or
`“Petition”) to institute inter partes review of claims 1–7 (“the challenged
`claims”) of U.S. Patent No. 10,621,228 B2 (Ex. 1001, “the ’228 patent”).
`The Petition states that “[p]ursuant to 37 C.F.R. § 42.8(b)(1), Unified
`Patents, LLC (“Unified” or “Petitioner”) certifies that Unified is the real
`party-in-interest and certifies that no other party exercised control or could
`exercise control over Unified’s participation in this proceeding, filing this
`petition, or conduct in any ensuing trial.” Pet. 1.
`Patent Owner, MemoryWeb, LLC, filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”). In its Preliminary Response, Patent Owner
`argued that “Apple and Samsung1 should have been [named] as RPIs [(real
`parties in interest)] in this proceeding, and the failure to identify Apple and
`Samsung is a basis for the Board to deny institution pursuant to 35 U.S.C.
`§ 312.” Prelim. Resp. 28; see also id. at 22–28.
`We authorized additional preliminary briefing to allow the parties to
`address this issue, as well as other issues. Ex. 1020. Petitioner subsequently
`filed a Preliminary Reply (Paper 11), and Patent Owner filed a Preliminary
`Sur-reply (Paper 13), further addressing the RPI issue. See Paper 11, 1–8;
`Paper 13, 6–7.
`In its Preliminary Reply, Petitioner argued that “Patent Owner’s
`(PO’s) RPI arguments should be rejected as inappropriate or, at best,
`
`1 We infer from the record that Patent Owner is referring to Samsung
`Electronics Co., Ltd. (“Samsung”) and Apple, Inc. (“Apple”). See Section
`B, below.
`
`2
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`IPR2021-01413
`Patent 10,621,228 B2
`premature. As is the case here, the Board need not address whether a party
`is an unnamed RPI where no time bar or estoppel provisions under
`35 U.S.C. § 315 are implicated.” Paper 11, 1 (citing SharkNinja Operating
`LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18 (PTAB, Oct. 6, 2020)
`(precedential) (“SharkNinja”); Unified Patents, LLC v. Fat Statz, LLC,
`IPR2020-01665, Paper 19 at 2–3 (PTAB, Apr. 16, 2021)).
`Based upon the preliminary record at that time, we instituted inter
`partes review on all the challenged claims on the grounds presented in the
`Petition, but declined to determine whether Apple and Samsung were real
`parties in interest. See Paper 15 (“Dec.” or “Decision”). We declined to
`decide the real party in interest question at that time partly because
`determining whether a non-party is an RPI is a highly fact-dependent
`question and the case was still in its preliminary stage without a fully
`developed factual record. Moreover, we determined that we need not
`address the RPI issue at that time because there was no allegation of a time
`bar or estoppel that would preclude this proceeding. Accordingly, under the
`Board’s precedential decision in SharkNinja, IPR2020-00734, Paper 11 at
`18, we declined to decide the RPI issue at that time. See Paper 15, 11–14.
`After institution, Patent Owner filed a Response (Paper 23, “PO
`Resp.”), Petitioner filed a Reply (Paper 29, “Pet. Reply”), Patent Owner
`filed a Sur-reply (Paper 35, “PO Sur-reply”), and with our authorization,
`Petitioner filed a Sur-sur-reply (Paper 42, “Pet. Sur-sur-reply”).
`In its Response, Patent Owner raises the RPI issue again, asserting
`that “Petitioner has failed to name all real parties-in-interest (“RPIs”),
`including at least Samsung and Apple,” but this time implicating estoppel
`
`3
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`IPR2021-01413
`Patent 10,621,228 B2
`under 35 U.S.C. § 315. See PO Resp. 14–26. Patent Owner now argues that
`“the Board should find that Apple and Samsung are estopped from
`challenging the validity of claims 1-7 of the ‘228 patent in related
`proceedings: Apple Inc. v. MemoryWeb, LLC, IPR2022-00031 (the “Apple
`IPR”); Samsung Electronics Co., Ltd., v. MemoryWeb, LLC, IPR2022-00222
`(the “Samsung IPR”) (collectively, the “Related IPRs”).” Id. at 14–15.
`Patent Owner argues that “a petitioner—and any RPIs—are estopped
`from maintaining a follow-on IPR challenging the same claims when the
`first IPR results in a final written decision.” PO Resp. 16 (citing Intuitive
`Surgical, Inc. v. Ethicon LLC, No. IPR2018-01248, Paper 34, 10-18 (PTAB
`Feb. 6, 2020) (terminating petitioner from IPR based on final written
`decision in earlier IPR challenging same claims). Id. at 16.
`Patent Owner asserts that
`Apple and Samsung filed their own follow-on IPRs challenging
`all claims of the ‘228 patent. Paper 15, 12 n.2. If (1) this IPR
`results in a final written decision and (2) Apple and Samsung are
`RPIs (which they are), Apple and Samsung would be estopped
`from maintaining their IPRs against claims 1-7 of the ‘228
`patent.
`PO Resp. 16 (citing 35 U.S.C. § 315(e)(1)).
`In its Reply, Petitioner asserts that “Unified is the sole RPI, making
`questions of estoppel under §315(e) irrelevant.” Pet. Reply 33. Petitioner
`argues that
`prospectively finding that RPIs would be hypothetically
`estopped from maintaining their proceedings under §315(e)(1)
`. . . would both apply
`to and be considered
`in
`those
`proceedings—not here—and only after a final written decision,
`if any, issues. That would presuppose future events that may
`
`4
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`IPR2021-01413
`Patent 10,621,228 B2
`never come to pass, making it an inappropriate advisory inquiry
`at this stage.
`Id. at 33–34 (citing 35 U.S.C. § 315(e)(1); PO Resp. 14–17).
`We agree with Patent Owner that it is appropriate to now address the
`question of whether Unified should have named Apple and Samsung RPIs in
`this proceeding, for several reasons. We also agree with Petitioner that
`determining whether Apple or Samsung should be estopped in a subsequent
`proceeding would be premature. That is a decision best left to those
`presiding over any subsequent proceeding who would have Apple or
`Samsung in front of them, which we do not. Moreover, no such estoppel
`would attach until after a final written decision in this case. See 35 U.S.C.
`§ 315(e)(1).
`It is appropriate for us to decide the RPI question now because we
`have a more fully-developed factual record before us, providing us with
`probative evidence that was not available at the institution phase of this case.
`For example, during discovery the parties have supplemented the record
`with Exhibits 1030–1043 and 2027–2047, which includes the deposition
`transcript of the CEO of Unified (Ex. 2036), as well as other probative
`evidence on the RPI issue. In addition, on December 16, 2022, an oral
`hearing was held during which the parties were able to argue the RPI issue
`before the Board during a confidential session A transcript of the hearing
`was made a part of this record. Paper 52 (confidential session), Paper 53
`(public session).
`Second, Patent Owner now squarely puts the issue before us that
`“Apple and Samsung’s follow-on IPRs challenging the ’228 patent do
`
`5
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`IPR2021-01413
`Patent 10,621,228 B2
`implicate estoppel” under 35 U.S.C. § 315(e)(1), and because of that “the
`Board must address whether Apple and/or Samsung are RPIs.” PO Resp.
`16.
`
`Third, if we do not decide the RPI issue now, as Patent Owner urges,
`then the underlying purpose of Section 315(e) would potentially be
`frustrated. Determining whether Apple or Samsung are RPIs in this case is a
`necessary precursor to determining whether they would be estopped in a
`subsequent proceeding. Otherwise, Patent Owner may have to continue to
`unnecessarily defend against two subsequent IPR challenges filed by Apple
`and Samsung should they have been named as RPIs in this case.
`Because the issue of Section 315(e) estoppel has been put before us,
`and we now have a complete factual record available to fully address the
`RPI question, and to avoid unnecessary prejudice to Patent Owner should
`Apple and Samsung be RPIs in this case, we conclude that it is appropriate
`to now decide whether Apple and Samsung are real parties in interest in this
`proceeding and whether Unified should have named them as RPIs.
`Related Matters
`B.
`According to the parties, the ’228 patent was asserted in the following
`district court proceedings: MemoryWeb, LLC v. Samsung Electronics Co.,
`Ltd. et al., Case No. 6:21-cv-00411 (W.D. Tex.); MemoryWeb, LLC v. Apple
`Inc., Case No. 6:21-cv-00531 (W.D. Tex.); and MyHeritage (USA), Inc. et.
`al. v. MemoryWeb, LLC, Case No. 1:21-cv-02666 (N.D. Ill.). Pet. 1–2;
`Paper 4, 2; Paper 7, 2; Paper 9, 2.
`Patent Owner also identifies U.S. Patent No. 9,098,531 (“the ’531
`patent”), U.S. Patent No. 10,423,658 (“the ’658 patent”), U.S. Patent No.
`
`6
`
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`IPR2021-01413
`Patent 10,621,228 B2
`9,552,376 (“the ’376 patent”), U.S. Patent No. 11,017,020 (“the ’020
`patent”), U.S. Patent No. 11,163,823 (“the ’823 patent”), pending U.S.
`Patent Application 17/381,047, and pending U.S. Patent Application
`17/459,933 as related to the ’228 patent. Paper 7, 2; Paper 9, 2–3.
`Patent Owner additionally indicates the following inter partes
`proceedings as related matters: Samsung Electronics Co., Ltd., v.
`MemoryWeb, LLC, IPR2022-00222 (PTAB) challenging the ’228 patent;
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031 (PTAB) challenging the
`’228 patent; Apple Inc. v. MemoryWeb, LLC, IPR2022-00111 (PTAB)
`challenging the ’020 patent; Apple Inc. v. MemoryWeb, LLC, PGR2022-
`00006 (PTAB) challenging the ’020 patent; Apple Inc. v. MemoryWeb, LLC,
`IPR2022-00033 (PTAB) challenging the ’658 patent; and Apple Inc. v.
`MemoryWeb, LLC, IPR2022-00032 (PTAB) challenging the ’376 patent.
`Paper 7, 2; Paper 9, 2–3.
`Legal Principles
`C.
`Our regulations require that parties “identify each real party-in-
`interest for the party” as part of its mandatory notices, and to timely update
`any change in the information provided in those notices. 37 C.F.R.
`§§ 42.8(a), (b)(1) (2023). The parties have a duty of candor and good faith
`when they comply with the requirements set forth in Section 42.8. See
`37 C.F.R. § 42.11(a) (2023) (stating that parties have a duty of candor and
`good faith in proceedings).
`The mandatory notice provision requiring the identification of all real
`parties in interest serves important notice functions to patent owners, to
`identify whether the petitioner is barred from filing a petition because of a
`
`7
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`IPR2021-01413
`Patent 10,621,228 B2
`real party in interest that is time-barred or otherwise estopped, and to the
`Board, to identify conflicts of interests that are not readily apparent from the
`identity of the petitioner. See NOF Corp. v. Nektar Therapeutics, IPR2019-
`01397, Paper 24 at 6 (PTAB Feb. 10, 2020) (citing Patent Trial and Appeal
`Board Consolidated Trial Practice Guide 12 (Nov. 2019) (“TPG”)).2
`Whether a non-party is an RPI is a “highly fact-dependent question”
`and must be considered on a case-by-case basis. Ventex Co. v. Columbia
`Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 6 (PTAB Jan. 24,
`2019) (precedential). With respect to a petition’s identification of real
`parties in interest, the Federal Circuit has stated that
`[a] petition is presumed to identify accurately all RPIs. See Zerto,
`Inc. v. EMC Corp., Case IPR2014-01295, slip op. at 6–7 (PTAB
`Mar. 3, 2015) (Paper 34). When a patent owner provides
`sufficient evidence prior to institution that reasonably brings into
`question the accuracy of a petitioner's identification of RPIs, the
`overall burden remains with the petitioner to establish that it has
`complied with the statutory requirement to identify all RPIs.
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1343 (Fed.
`Cir. 2018) (“AIT”). In a slightly later case, the Federal Circuit also stated
`that
`
`[a] “petitioner’s initial identification of the real parties in interest
`should be accepted unless and until disputed by a patent owner.”
`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1243 (Fed. Cir.
`2018). To dispute it, the patent owner “must produce some
`evidence that tends to show that a particular third party should be
`named a real party in interest.” Id. at 1244.
`
`2 Available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=
`8
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`IPR2021-01413
`Patent 10,621,228 B2
`VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 Fed. Appx. 897,
`902 (Fed. Cir. 2019) (“VirnetX”).
`Threshold Question
`D.
`Given this direction, we must first consider the threshold question of
`whether Patent Owner has produced “some evidence that tends to show that
`a particular third party should be named a real party in interest” and whether
`that evidence “reasonably brings into question the accuracy of a petitioner's
`identification of RPIs” in the Petition. We also keep in mind that “the
`overall burden remains with the petitioner to establish that it has complied
`with the statutory requirement to identify all RPIs.” AIT, 897 F.3d at 1343.
`As noted above, Petitioner, as part of its mandatory notice obligations,
`identified Unified as the only real party in interest in this proceeding. Pet. 1.
`Since filing the Petition, Petitioner has updated its mandatory notices four
`times, but on each occasion has indicated that “[n]o updates to the real party-
`in-interest . . . are made at this time.” See Papers 6, 14, 17, 39.
`Patent Owner disputes Petitioner’s identification of Unified as the
`only real party in interest, and contends that Apple and Samsung must also
`be identified as RPIs. PO Resp. 14–15. To support this contention, Patent
`Owner points to evidence indicating that Unified uses a business model that
`relies on collecting substantial membership fees from paid members,
`including Apple and Samsung, in exchange for Unified filing validity
`challenges that benefit its members. PO Resp. 19–20; Ex. 2036, 74:22–
`75:10; 89:16–23.
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`9
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`IPR2021-01413
`Patent 10,621,228 B2
`
`
`
`. PO Resp. 20; Ex. 1024, 1, 15; Ex. 1025,
`1; Ex. 2036, 74:5–10, 75:1–10, 88:25–89:23.
`
` Ex. 1024, Sec. 2.2.
`
`PO Resp. 20–21; Ex. 1024, Sec. 4.1, 4.1(c); Ex. 1025, Sec. 3.1, 3.1(c)).
`Unified’s website states that “Unified works to reduce NPE activity through
`monitoring, market intelligence, analytic tools, prior art, and USPTO
`challenges.” Ex. 2017, 1. Unified’s website also indicates that Unified has
`filed “185 IPRs since 2012” and claims a “95% Success Rate in 2020.”
`Ex. 2018, 1–2.
`
` PO Resp. 20; Ex. 2036, 36:5–13; 73:3–75:10; 89:5–23.
`
`. PO Resp. 23; Ex. 2036,
`
`10
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` IPR2021-01413
`Patent 10,621,228 B2
`131:23–132:2.
`
` PO Resp. 23; Ex. 2033, 11–12; Ex. 2036, 131:23–132:2,
`
`133:4–15.
`
` PO Resp 21; Ex. 2036, 62:19–63:10.
`Unified filed this Petition challenging claims 1–7 of the ’228 patent on
`September 3, 2021. Paper 2. Four days after filing the Petition, Unified
`emailed Samsung, Apple and other Unified members advising them that
`Unified had filed a Petition for IPR challenging the ’228 patent that “is
`currently asserted against Apple and Samsung.” PO Resp. 21; Ex. 2027;
`Ex. 2028; Ex. 2036, 51:13–18, 54:24–55:1. After institution of this IPR,
`Unified again emailed Apple, Samsung and other Unified members, this
`time advising them that the ’228 patent was “likely invalid.” Ex. 2029.
`Sometime after Unified filed the Petition in this case,
`
` PO Resp. 22; Ex. 2032; Ex. 2033; Ex. 2036, 98:2–100:7.
`According to Patent Owner,
`
` PO Resp. 22; Ex. 2033, 20.
`
`11
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`IPR2021-01413
`Patent 10,621,228 B2
`Patent Owner asserts that the fact that Apple and Samsung filed their
`own petitions for IPR challenging the ’228 patent, including the same claims
`challenged in this proceeding, shows that Apple and Samsung desire review
`of the ’228 patent. PO Resp. 24; see Apple, IPR2022-00031, Paper 1, 1;
`Samsung, IPR2022-00222, Paper 2, 1.3 According to Patent Owner, if
`Unified succeeds in demonstrating that the challenged claims in the current
`proceeding are unpatentable, Apple and Samsung would benefit directly
`from that result. PO Resp. 24 (citing RPX Corp. v. Applications in Internet
`Time, LLC, IPR2015-01750, Paper 128 at 24–25 (PTAB Oct. 2, 2020)
`(precedential) (“RPX”); AIT, 897 F.3d at 1363).
`According to Patent Owner, Unified faces no risk of liability from
`enforcement of the ’228 patent, and the evidence suggests that Unified may
`have selected the ’228 patent to challenge based, at least in part, on the fact
`that Patent Owner was enforcing the ’228 patent against Unified’s members,
`Apple and Samsung. PO Resp. 24–25. Patent Owner argues that Unified’s
`interest in filing this IPR includes using this IPR to promote its services to
`existing members and potential new members. Id. at 25; see also Ex. 2018,
`1 (“Unified has filed more patent challenges than all other third-party
`petitioners combined . . . we have successfully neutralized more patents than
`any other third-party.”); Ex. 2033, 3, 17–20.
`The evidence suggests that Unified’s operations and communications
`with its members may have been crafted with an eye toward RPI
`
`3 We note for the record that claims 1–19 of the ’228 patent are challenged in
`both IPR2022-00031 and IPR2022-00222.
`12
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`IPR2021-01413
`Patent 10,621,228 B2
`identification requirements, which Patent Owner argues is to avoid the
`appearance of influence or control by Unified’s member companies. PO
`Resp. 25–26; see also Paper 11, 4 (“
`
`”). Unified’s CEO has stated that “legal rules concerning
`estoppel, time bars, and real party-in-interest (RPI) are important issues
`considered any time an IPR is filed. . . . Unified Patents is well-aware of
`these issues, and has carefully structured our solution to comply with all of
`the existing legal requirements to file administrative challenges as the sole
`RPI.” Ex. 2011, 1.
`Nonetheless, according to Unified, its strategic operating “structure
`provides complete alignment between Unified Patents and its member
`companies.” Ex. 2016, 1. Such a structure suggests independence, but also
`suggests that a reason for such an arrangement is to enable Unified to file
`IPRs that directly benefit its members without having to name those
`members as RPIs.
`Taken together, the evidence identified and argued by Patent Owner
`supports its assertion that Apple and Samsung are potential beneficiaries to
`this proceeding, and have preexisting, established relationships with
`Petitioner. The evidence also supports Patent Owner’s contention that Apple
`and Samsung should have been named as real parties in interest in this case.
`The evidence reasonably calls into question the accuracy of Petitioner’s
`identification of Unified as the sole RPI in this proceeding.
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`IPR2021-01413
`Patent 10,621,228 B2
`Identifying RPIs
`E.
`Having resolved the threshold question, we now consider the question
`of whether Petitioner has complied with its obligation to “identify each real
`party-in-interest.” 37 C.F.R. §§ 42.8 (2023); AIT, 897 F.3d at 1343 (“the
`overall burden remains with the petitioner to establish that it has complied
`with the statutory requirement to identify all RPIs”).
`As stated by the Federal Circuit, “[d]etermining whether a non-party
`is a ‘real party in interest’ demands a flexible approach that takes into
`account both equitable and practical considerations, with an eye toward
`determining whether the non-party is a clear beneficiary that has a
`preexisting, established relationship with the petitioner.” AIT, 897 F.3d at
`1351.
`In RPX, the Board considered a number of factors to determine
`whether an unnamed third-party should have been named as an RPI in a
`proceeding. The factors4 relevant to the inquiry here would include: (a)
`Unified’s business model, including the nature of Unified as an entity; (b)
`Unified’s interests in the IPR; (c) whether, and under what circumstances,
`Unified takes a particular member’s interests into account when determining
`whether to file IPR petitions; (d) Apple and Samsung’s relationship with
`Unified; (e) Apple and Samsung’s interest in and potential benefit from the
`
`4 We recognize that some of the factors we consider, such as “control,” are
`not among the enumerated factors listed in the “Factual Findings” section of
`the RPX decision. See RPX, IPR2015-01750, Paper 128 at 10. However,
`the issue of “control” is discussed in the “Analysis” section of that case and
`these factors are relevant to the RPI inquiry here. See id. at 32–33; see also
`TPG at 15–17.
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`IPR; (f) whether Unified can be said to be representing that interest; (g)
`whether Apple and Samsung actually desired review of the ’228 patent; (h)
`whether Apple, Samsung, and Unified have any board members in common;
`(i) any communications between Unified, Apple, and Samsung; and (j)
`whether Apple or Samsung funded, directed, influenced, or exercised control
`over Unified’s participation in this IPR. See RPX, IPR2015-01750, Paper
`128 at 10 (citing AIT, 897 F.3d at 1358)5; TPG at 12–18.
`F.
`Parties’ Arguments
`1.
`Petitioner’s Arguments
`Unified argues that Patent Owner “alleges Apple and Samsung should
`be [named] RPI[s] using the same arguments the Board has routinely
`rejected” and “has not alleged or submitted any evidence of direction,
`control, joint funding, or any relevant communication or coordination
`between Unified and any other entity.” Pet. Reply 22–23 (citing Unified v.
`Arigna Tech. Ltd., IPR2022-00285, Paper 10, 6-7 (PTAB June 17, 2022);
`Unified Patents, LLC v. Intellectual Ventures II, LLC, IPR2022-00429,
`Paper 12, 10-11 (PTAB 2022); Unified Patents Inc. v. Barkan Wireless IP
`Holdings, LP, IPR2018-01186, Paper 57, 3-12 (PTAB Dec. 4, 2019), aff’d,
`838 F’Appx 565 (Fed. Cir. 2021); Unified Patents, LLC v. American
`Patents, LLC, IPR2019-00482, Paper 115, 40-52 (PTAB Aug. 13, 2020).6
`
`5 We recognize that the AIT and RPX decisions involved a question of
`35 U.S.C § 315(b) estoppel, which is not at issue in this proceeding.
`Nonetheless, we understand the RPI analysis to be equally applicable here.
`6 We acknowledge that the Board decisions cited by Petitioner here
`determined that Unified was the sole RPI in those cases. However, two of
`these cases are Decisions on Institution, (IPR2022-00429; IPR2022-00285),
`15
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`Patent 10,621,228 B2
`Unified asserts that its “decision to challenge the ’228 Patent was without
`the insight, assistance, or approval from any member, and was not in
`furtherance of any member’s stated or implied benefit.” Id. at 25 (citing
`Ex. 1023 ¶ 13).
`According to Unified, “(1) no member made Unified aware of, or
`expressed any interest in, the [’228] patent or [Patent Owner]; (2) Unified
`never sought to ascertain the desires of any third-party regarding the [’228]
`patent; and (3) Unified does not and cannot know if there is a specific
`benefit to any individual members from this IPR.” Pet. Reply 25 (citing Ex.
`1023 ¶ 13). “Unified had no knowledge of Apple and Samsung’s desires
`regarding the ’228 patent when filing [this Petition]. Unified never
`communicated with or conveyed any of its plans regarding the ’228 patent to
`any member at any time nor coordinated with them in any way.” Pet. Reply
`28.
`
`Petitioner argues that Patent Owner’s assertion that Apple and
`Samsung desire review of the ’228 patent because they each filed their own
`challenges “is misleading because Apple and Samsung each filed different
`challenges against claims 1-19 rather than 1-7.” Id. at 25. Petitioner argues
`that Unified has “no way of knowing whether its members will benefit from
`its validity challenges or not, not only because it has no member pre-filing
`
`which were decided on a preliminary factual record unlike the case before
`us. The other two cases are Final Written Decisions, (IPR2018-01186;
`IPR2019-00482), but were decided before the Board’s remand decision in
`RPX was issued, and therefore did not have the benefit of that precedential
`decision as guidance.
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`16
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`communications about particular challenges, but also because its many
`members [are] from various diverse industries and market positions.” Id.
`Petitioner asserts that “[a]ny supposed benefit to Apple and Samsung from
`Unified’s IPR is entirely speculative and questionable.” Id. at 26.
`According to Petitioner, whether “Apple and Samsung may (or may not)
`benefit, directly or indirectly, from Unified’s challenge due to a suit is not
`enough.” Id. at 26–27.
`Petitioner asserts that “[n]either this specific nor any other proceeding
`was filed at another’s behest and no third party is or could exercise control
`over this proceeding.” Id. at 27 (citing Ex. 1023 ¶¶ 5–6, 24). Petitioner
`asserts that “Apple’s and Samsung’s filings are indicative of this lack of
`direction or control and demonstrate ‘the companies were not motivated to
`avoid the estoppel associated with filing an IPR.’” Pet. Reply 27.
`Petitioner explains that “Unified does not discuss forthcoming IPRs at
`least because it seeks to maintain total independence and control over its
`deterrence activities.” Id. “No Unified member funded this petition. As a
`result, no member has control, has had an opportunity to control, or has
`coordinated this or any other challenge Unified chooses to pursue.” Id. at 28
`(citing Ex. 1023 ¶ 24).
`With respect to the agreements between Unified and its member
`companies, Apple and Samsung, Unified states that
`
`17
`
`
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`
`
` Pet. Reply
`
`28–29 (citing Ex. 1024, Sec. 4.2; Ex. 1025, Sec. 3.2).
`With respect to the emails Unified sent to its membership regarding
`this case, Petitioner states that “these emails are standardized emails sent to
`mailing lists after Unified files a petition, and they identify the defendants in
`related litigation who have had the challenged patent asserted against them
`regardless of whether they are members or not.” Pet. Reply 30 (citing
`Ex. 2036, 47:10–20, 58:5–11; Ex. 1023 ¶¶ 13–17; Ex. 1029; Ex. 1027).
`With respect to
`
`With respect to Patent Owner’s analysis of Unified’s financials,
`Petitioner asserts that “[n]o Unified member directly funded this specific
`petition or proceeding, and there were no specific payments made to Unified
`by Apple or Samsung shortly before filing this petition.” Id. at 31. “[Patent
`Owner] has not shown any specific evidence of any direction, funding, or
`control of this proceeding.” Id. at 32.
`Petitioner argues that Patent Owner “has shown no ‘expectation’ for
`any member regarding challenges specific to the ’228 patent or [Patent
`Owner] . . . and its allegations amount to nothing more than unsupported
`attorney argument.” Id. Petitioner argues that “Unified has no clients and
`selects patents to challenge to deter NPE litigation in technology zones—not
`
`18
`
`
`
`IPR2021-01413
`Patent 10,621,228 B2
`due to any particular member’s risk or litigation.” Id. at 33 (citing Ex. 1023
`¶¶ 4–7, 18, 23).
`Petitioner argues that “Apple’s and Samsung’s filings do not show
`they desired Unified file this IPR and surely does not indicate that Unified
`filed at their behest.” Id. at 33. “When Unified filed, it had no knowledge
`of any its members’ desires regarding the ’228 patent.” Id. (citing Ex. 1023
`¶¶ 8, 10, 16). “No shared board members exist, Unified has no attorney-
`client relationship with, and does not act as legal counsel to, members, and
`Unified had no communications with members regarding this patent,
`MemoryWeb, or this IPR save those regarding general, public information.”
`Id. (citing Ex. 1023 ¶¶ 16–17, 23–24).
`2.
`Patent Owner’s Arguments
`In its Sur-reply, Patent Owner argues that “[d]espite its self-professed
`‘independence,’ the reality is that Unified monitors court filings and
`selectively challenges patents to benefit its members. In return, Apple and
`Samsung
` PO Sur-reply
`23. Patent Owner points out that
`
` Id. at 25.
`Patent Owner also argues that “even though the risk of NPE litigation
`does not fall on Unified . . . Unified challenges patents to reduce or eliminate
`risk to members like Apple and Samsung. Indeed, reducing members’
`litigation risk by challenging patents is the ‘sole purpose’ of Unified’s
`business, weighing in favor of finding Apple and Samsung to be RPIs.”
`PO Sur-reply 26 (citing Ex. 1023 ¶ 5). “
`
`19
`
`
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`IPR2021-01413
`Patent 10,621,228 B2
`
`
`
`.” PO Sur-reply 25 (citing Ex. 1024; Ex. 1025). “[I]f Unified’s
`challenge succeeds, Samsung and Apple will benefit from no longer facing
`liability for infringing claims 1–7.” PO Sur-reply 24.
`Patent Owner asserts that “present here—is evidence that Unified
`challenged several patents argued against Samsung
`” Id. at 23. Patent Owner points
`out that “Unified challenged the ‘228 patent after learning that it was
`asserted against Samsung, a paying member.” Id. at 24 (citing Ex. 2036,
`62:19–63:10; Ex. 2027; Ex. 2028). “This IPR—along with others
`challenging patents asserted against Samsung—
`
`” Id. (citing Ex. 2033, 17–20).
`
`G.
`
`Analysis7
`1.
`Unified’s Business Model, Finances, and Operations
`The evidence shows that Unified operates as a membership
`organization wherein member companies, such as Apple and Samsung, enter
`into annual “Membership Agreements” with Unified and pay Unified
`“annual, non-refundable, membership fees” in exchange for Unified’s
`services. Ex. 2016, 1; Ex. 2017, 1; Ex. 1024, 1, 6; Ex. 1025, 1, 5.
`
`7 The factors enumerated in RPX for analyzing whether an unnamed third-
`party is an RPI have been partially consolidated here to facilitate the analysis
`of the evidence in this case. See RPX, IPR2015-01750, Paper 128 at 10–11.
`20
`
`
`
`IPR2021-01413
`Patent 10,621,228 B2
`The evidence also shows that Unified seeks to “[d]eter Non-Practicing
`Entities (NPEs) who assert bad patents (aka Patent Trolls)” and “protect
`against frivolous patent litigation.” Ex. 2017, 1. Unified “[m]onitor[s]
`companies in the protected technology (Micro-Pool) to identify NPE
`activity.” Ex. 2016, 1. Unified provides “benefits” to its member
`companies by “work[ing] to reduce NPE activity through monitoring . . . and
`USPTO challenges.” Ex. 2017, 1. Unified’s operating structure “provides
`complete alignment between Unified Patents and its member companies.”
`Ex. 2016.
`Unified’s Membership Agreements provide that Unified “
`
`. Ex. 1024, Sec.
`
`4.1, 4.1(c); see also Ex. 1025 Sec. 3.1, 3.1(c)).
`The evidence shows that
`
` Ex. 2036, 36:3–13. Unified’s
`members pay subscription fees based upon the company’s revenue and the
`number of Unified’s “zones” they wish to subscribe to. Id. at 74:5–21,
`75:4–6.
`
`75:10.
`75:7–10.
`at 89:5–23.
` Id. at 36:3–13.
`
`21
`
` Id. at 74:22–
` Id. at
` Id.
`
`
`
`
`
`IPR2021-01413
`Patent 10,621,228 B2
`According to Unified’s CEO,
`
` Id. at 131:23–132:2.
`
`According to Patent Owner’s analysis,
` PO Resp. 23 (citing Ex. 2033, 11–12;
`Ex. 2036, 131:25–132:2, 133:4–15). Unified’s website indicates that
`Unified has filed “185 IPR petitions since 2012” and claims a “95% Success
`Rate in 2020”. Ex. 2018, 1–2. Unified claims to have “filed more patent
`challenges than all other third-party petitioners combined,” and that it has
`“successfully neutralized more patents that any other third-party.” Id. at 1.
`Taken together, this evidence indicates that Unified’s business model,
`finances, and operations are structured to support Unified’s patent validity
`challenges, including patent reexamination and the filing of petitions for
`IPR. These activities act to protect Unified’s members, including Apple and
`Samsung, from the threat of patent litigation and are important components
`of Unified’s core subscription business. This is substantial evidence that
`Unified has a strong financial incentive to serve its members’ needs—
`expressed or not—and those of its other current and potential future clients.
`This evidence leads to the inference that Unified filed the Petition in this
`case to benefit its members Apple and Samsung, supporting a conclusion
`that Apple and Samsung are RPIs in this proceeding.
`2.
`Unified’s Relationships and Communications with Apple
`and Samsung
`
`
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