IPR2021-01413
`U.S. Patent 10,621,228
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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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`MEMORYWEB, LLC
`Patent Owner
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`IPR2021-01413
`U.S. PATENT 10,621,228
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`REDACTED VERSION
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`IPR2021-01413
`U.S. Patent 10,621,228
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`TABLE OF CONTENTS
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`C.
`D.
`E.
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`F.
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`I.
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`II.
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`CLAIM CONSTRUCTION .......................................................................... 1
`A.
`Limitations [1b], [1d], [1e]/Claim 3 .................................................... 1
`B.
`Limitations [1n], [1p]/Claim 5 ............................................................ 2
`THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 3
`A.
`Limitation [1c] .................................................................................... 3
`B.
`Limitation [1d] .................................................................................... 4
`1.
`Okamura Does Not Teach Away .............................................. 4
`2.
`Okamura’s Related Art is Different from Flora ..................... 10
`3.
`A POSITA Would Have Been Motivated to Combine
`Okamura and Flora ................................................................. 15
`Limitations [1d], [1e], [1f], [1i] (thumbnail image) .......................... 17
`Limitations [1b], [1d], and [1e] ......................................................... 17
`Limitations [1g] and [1j] ................................................................... 18
`1.
`Okamura and Flora (Ground 1) .............................................. 18
`2.
`Okamura, Flora, and Wagner (Ground 2)/Okamura,
`Flora, Wagner, and Gilley (Ground 4) .................................... 19
`Limitations [1n] and [1p] .................................................................. 20
`1.
`Okamura and Flora (Ground 1) .............................................. 20
`2.
`Okamura, Flora, and Gilley (Ground 3)/Okamura, Flora,
`Wagner, and Gilley (Ground 4) .............................................. 20
`G. Dependent Claims 2, 4, and 6-7 ........................................................ 21
`H.
`Claim 3 .............................................................................................. 21
`I.
`Claim 5 .............................................................................................. 21
`J.
`Okamura, Flora, Wagner, and Gilley (Ground 4) ............................. 22
`III. REAL PARTY IN INTEREST AND ESTOPPEL ..................................... 22
`A. Unified is the Sole RPI ...................................................................... 22
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`IPR2021-01413
`U.S. Patent 10,621,228
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`1.
`2.
`3.
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`Business Model ....................................................................... 23
`No Benefit to Any Individual Members ................................. 25
`No Considering or Representing of Any Member Interest
`or Desire .................................................................................. 27
`Remaining Factors .................................................................. 33
`4.
`Any Inquiry into §315(e) is Both Premature and Irrelevant ............. 33
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`B.
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`I.
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`CLAIM CONSTRUCTION
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`IPR2021-01413
`U.S. Patent 10,621,228
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`Even under PO’s incorrect interpretations, claims 1-7 (the “Challenged
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`Claims”) are unpatentable.
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`A. Limitations [1b], [1d], [1e]/Claim 3
`PO alleges the plain and ordinary meaning requires the “map view” displayed
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`in response to the “first input” must “includ[e]” first and second “thumbnail
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`image[s]…on the interactive map” and an “indication feature” connected to the first
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`thumbnail image. POR, 27-28, 30-31. PO asserts there cannot be any intervening
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`inputs between the first input and displaying the map view. Id., 27-28, 30-31, 52-54,
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`64-66. As an initial matter, the Okamura-Flora combination does not have any
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`intervening inputs as discussed below in Sections II.D and II.H.
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`Regardless, the intrinsic record does not restrict these limitations as PO
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`asserts—that displaying a map view is solely responsive to a first input. EX1038,
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`¶¶9-15, 21-26 (plain meaning encompasses intervening inputs). No restrictions exist
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`in the claim language. Id.; EX1001, claims 1, 3. Dr. Reinman’s declaration parroting
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`the POR is unhelpful. POR, 27-28, 30-31; EX2038, 73-77, 82-87. The specification
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`is unsupportive; 23:34-35,1 29:41-56, and Figure 41 do not exclude intervening
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`inputs. POR, 28; EX1001, 23:34-35; EX1038, ¶¶9-15, 21-26. Dr. Reinman admitted
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`1 Column 43 does not exist. PO likely intended column 23.
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`Figure 41 is not limiting. EX1034, 51:14-19. Mere embodiments should not limit
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`claims. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). And the file
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`history is silent. EX1003.
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`B.
`Limitations [1n], [1p]/Claim 5
`PO alleges the plain and ordinary meaning requires the “people view” must
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`include displaying a first name and a second name simultaneously in the same view
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`(limitations[1n], [1p]) and the “map view” must display a first indication feature and
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`second indication feature simultaneously in the same view (claim 5). POR, 28-29,
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`32, 63, 66-68.
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`The claim language is unsupportive as it does not recite the alleged restriction.
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`EX1001, claims 1, 5. EX1038, ¶¶16-20, 27-30. The specification is not limiting;
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`nowhere (including 22:59-23:4, Figures 32 & 41) is there a requirement according
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`to PO’s assertion. Id. These passages teach an example. The file history is silent.
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`See generally, EX1003. Dr. Reinman’s declaration is unhelpful as it again parrots
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`the POR. POR, 28-29, 32; EX2038, 78-81, 88-90. The claims should not be limited
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`beyond their plain meaning. Phillips, 415 F.3d at 1323. A POSITA would not have
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`understood the plain meaning as having the requirement argued by PO and would
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`have instead understood it encompasses first and second names displayed at different
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`times in a people view and first and second indication features displayed at different
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`times in a map view. EX1038, ¶¶16-20, 27-30. Louie corroborates this
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`understanding, describing a user interface view displaying text “at the same time” or
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`“different times.” Id.; EX1037, ¶¶0034-0038.
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`II. THE CHALLENGED CLAIMS ARE UNPATENTABLE
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`A. Limitation [1c]
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`PO argues Okamura does not render obvious a map.2 POR, 34-37. The
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`Petition explained Okamura’s cluster maps 417 arranged in a 3x5 matrix form a map.
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`Petition, 18-19; EX1002, ¶76.3 The arranged cluster maps 417 show geographic map
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`areas where content has been captured and are arranged on a “map display area 414.”
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`Id. A POSITA would have understood or at least found obvious Okamura’s cluster
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`map arrangement forms a map for these reasons and because the arrangement
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`provides information about particular geographic areas, showing geographic
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`locations where content has been captured. EX1038, ¶¶32-37 (citing dictionary
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`definitions of map).
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`2 Claim language is italicized throughout.
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`3 Dr. Bederson performed an element-by-element analysis of the prior art when
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`forming his opinions. EX1038, ¶31.
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`If Okamura is found not to disclose/render obvious a map, Flora does via
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`U.S. Patent 10,621,228
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`geographic map 46. Petition, 20-22; EX1038, ¶37. PO does not dispute this.4
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`B.
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`Limitation [1d]
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`PO only alleges the Okamura-Flora combination is improper because
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`Okamura teaches away from Flora’s use of a map. POR, 37-50.
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`1. Okamura Does Not Teach Away
`The Board correctly found Okamura does not “criticize, discredit, or
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`otherwise discourage” Flora. Decision on Institution (“DI”), Paper 15, 55. At most,
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`Okamura expresses a “preference for an alternative way of displaying images
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`representing contents associated with positions on a map.” Id.; In re Fulton, 391 F.3d
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`1195, 1200-1201 (Fed. Cir. 2004); EX1038, ¶¶38, 50. Okamura describes terms of
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`degree and preference, showing it recognized “other alternatives, with their own
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`attendant advantages and attractiveness, exist.” Arctic Cat, Inc. v. Polaris Industries,
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`Inc., IPR2014-01427, Paper 73, 9 (Decision on Remand) (PTAB, March 4, 2019)
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`(Polaris Remand); Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed.
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`Cir. 2018) (Polaris); EX1004, 0008-0012. A POSITA would have understood as
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`much. EX1038, ¶¶50-52. Okamura does not having a “definable acceptable” way
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`to display content excluding Flora and does not describe the aspects of related art as
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`4 PO cannot raise this waived issue in the sur-reply. Scheduling Order, Paper 16, 9.
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`relating to Okamura’s “most important or [] critical design factor.” Id.; Polaris
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`Remand, 9-10.
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`Okamura uses the very characteristics PO says it disparages. In re Gurley, 27
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`F.3d 551, 552-553 (Fed. Cir. 1994) (reference’s “statement of inferiority” does not
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`teach away when reference utilized alleged inferior aspect). Okamura’s first
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`embodiment displays content organized by location, where “cluster map display
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`screen 480 is provided with list display area 481 and map display area 482.”
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`EX1004, ¶0275-0281; Petition, 15, 19. Inverted triangle “position marks”
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`representing content within circle 483 on wide area map are 482 correspond to photo
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`clusters listed in list display area. Id., ¶¶0278-0280, Figs. 27A-27B; EX1038, ¶53.
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`EX1004, Figs. 27A-27B (annotated).
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`This embodiment is like Takakura and Fujiwara, discussed by Okamura as example
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`related art, where marks on a map correspond to images selected from list. Id.;
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`EX2040, Fig. 7; EX2002, Fig. 12; EX1038, ¶¶53-54.
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`EX2040, Fig. 7 (annotated)
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`EX2002, Fig. 12 (annotated)
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`Thus, Okamura itself displays content (represented by inverted triangles) from a
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`single location (within circle 483) without simultaneously displaying content from
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`another geographic location, and a POSITA would have been motivated to combine
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`Okamura with Flora as the Petition explained. POR, 42-44; EX1034, 123:3-125:20,
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`129:19-130:2; Petition, 20-29; EX1038, ¶55.
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`PO’s assertions regarding “scaling” and how “the ability to zoom in on a
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`scalable geographic map created problems” ignores Okurmura’s disclosure. POR,
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`40-42. As the Board observed, Okamura uses “maps with changing or differing
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`U.S. Patent 10,621,228
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`scales” to display information. DI, 55. ¶0093, which the Petition cited in its
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`motivation to combine (Petition, 25-26), and which the POR does not address, states,
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`“map information storing section 220 stores map data related to maps displayed
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`on the display section 181” and “the map information storing section 220 stores
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`map data corresponding to a plurality of scales.” EX1004, ¶0093. This refers to
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`display of a map for an individual cluster as well as display of a map as a
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`“background image[]” upon which markers are located. Id. “Background map
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`generating section 610 acquires map information from the map information storing
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`section 220, and generates a background map….” Id., ¶¶0093, 0312, 0314. The
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`background map is displayed as part of a map view, which includes a “map view
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`screen 780” having a “scale-changing bar 781” by which a user can change map
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`scale. Id., ¶¶0321, 0355, Fig. 41. The background map is a “wide-area map.” Id.,
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`¶¶0405-0407. The Okamura-Flora combination therefore would not have “scaling
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`issues” because Okamura itself utilizes scaling when displaying map content
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`organized by location. POR, 41-42; Petition, 15, 18-27; EX1038, ¶¶56-57.5
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`5 PO’s discussion regarding Figure 41 of Okamura’s second embodiment misses
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`the point; the Petition relied on Okamura’s disclosure of scalable maps—at least
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`2. Okamura’s Related Art is Different from Flora
`PO’s identified disparagement is not relevant to the proposed combination
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`with Flora. Okamura’s “related art” is not broadly directed to “using a geographic
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`map,” but instead goes to “images representing contents [] displayed while being
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`arranged side by side,” such as in “time series,” and “marks indicating the generated
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`positions of these contents [] displayed on a map.” EX1004, ¶¶0004-0007; POR, 40;
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`EX1038, ¶¶39-48. Okamura’s discussion in ¶¶0007-0012, including scalability
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`aspects in ¶¶0009-0010, is only relevant to such related art. Id. Okamura points to
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`Fujiwara's Figure 12 as an example. EX1004, ¶0005.
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`shown in ¶0093—which is further elaborated by Okamura as discussed. POR, 45-
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`47; EX1038, ¶¶56-57; Polaris, 882 F.3d 1056, 1069 (Fed. Cir. 2018) (reference
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`must be considered for all it taught).
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`EX2002 (Fujiwara), Fig. 12 (annotated)
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`Okamura points to Takakura’s Figure 7 as another example. Id., ¶0006.
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`EX2040 (Takakura), Fig. 7 (annotated)
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`But Flora does not display “image contents” arranged in time series “side by
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`side” and corresponding map markers, as shown by Okamura, Fujiwara, and
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`Takakura. EX1038, ¶¶47-48. Flora simply uses “thumbnails” representing images
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`associated with the locations on a map, where a thumbnail selection prompts an
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`overlay media viewer 64 to show media items at the indicated location. Id.; EX1005,
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`6:29-32, 7:1-13, 7:32-52, Figs. 2, 3.
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`EX1005, Fig. 3; EX1038, ¶48
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`Further, the POR equates Flora with a Takakura figure not even addressed by
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`Okamura, let alone disparaged. PO equates Flora’s Figure 3 with Takakura’s Figure
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`1. POR, 40. But Okamura never discussed Figure 1. EX1004, ¶0006. Rather,
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`Okamura points to Figure 7 as including the “side by side” content in an “image
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`list” of related art—features missing from Figure 1.
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`EX2040, Fig. 7 (annotated)
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`EX2040, Fig. 1
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`3.
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`A POSITA Would Have Been Motivated to Combine
`Okamura and Flora
`Even if Okamura’s related art statements are pertinent, a POSITA would have
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`been motivated to combine Okamura and Flora. EX1038, ¶¶59-60. Citing Dr.
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`Bederson,6 the Petition explained the combination would have provided “improved
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`awareness regarding locations associated with content,” had a reasonable
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`6 Dr. Bederson reviewed Okamura’s “related art” discussion including Fujiwara
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`and Takakura. EX1038, ¶58; POR, 47.
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`expectation of success, and a predictable result. Petition, 22-27. A POSITA would
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`not have been discouraged from the combination of Okamura and Flora, at least
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`because Okamura's discussion of related art is not relevant to Flora and Okamura
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`uses the aspects PO argues it disparages. Supra, Section II.B.1-2; EX1038, ¶59-60.
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`PO’s cited caselaw is inapposite. Okamura does not “criticize, discredit[s], or
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`otherwise discourage” Flora, and at most describes alternatives for different
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`interactive map designs. The prior art in Merck “criticized,” Trivascular
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`“destroy[ed] the basic objective,” and Application of Ratti “require[d] a substantial
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`reconstruction and redesign” and “basic principles” change. POR, 48-50. Not here.
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`PO’s basis—that “Okamura’s primary objective is to avoid scaling issues cause [sic]
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`by the use of markers on a map”—and reliance on these cases is belied by the fact
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`Okamura itself displays a scalable map having markers, as discussed above and cited
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`in the Petition. Supra, Sections II.B.1-2; Petition, 15, 18-27. The POR’s InTouch
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`Techs and Arctic Cat discussion is also irrelevant; the Petition did not simply assert
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`a POSITA could combine Okamura and Flora—it affirmatively explained over five
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`pages with expert support why and how a POSITA would have been motivated to
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`combine. POR, 49-50; Petition, 22-27.
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`C. Limitations [1d], [1e], [1f], [1i] (thumbnail image)
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`Flora’s icons 58 and 59 disclose or render obvious thumbnail image even if
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`construed as a “reduced-size duplicate of an image”7 because they have a “reduced-
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`pixel or thumbnail” format. Petition, 28. The phrase “reduced pixel or thumbnail
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`image” in Flora encompasses a duplicate having smaller dimensions and fewer
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`pixels than the original (providing a “reduced-size duplicate”) as well as a cropped
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`portion of the original. EX1038, ¶¶61-63; EX1005, 7:5-22; POR, 51-52, FN8. A
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`POSITA would have understood “reduced pixel” refers to the format of icons 58 and
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`59 relative to an original image and Flora never limits how this original image
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`becomes reduced into icons (e.g., as a shrunken duplicate or a cropped portion). Id.
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`D. Limitations [1b], [1d], and [1e]
`Under PO’s incorrect interpretation discussed in Section I.A and or the proper
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`interpretation, the Petition demonstrates Okamura describes responsive to a first
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`input (depressing PLACE tab 413), a cluster map display area 414 is displayed
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`(causing a map view to be displayed) on a display interface of Okamura’s content
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`playback application (on an interface). Petition, 14-20. Combined with Flora,
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`Okamura’s cluster map display area 414 (map view) displays content as taught by
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`7 No party in this proceeding proposes this construction of thumbnail image. POR,
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`50.
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`Flora’s geographic map 46 (interactive map) and media viewer 64, where
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`Okamura’s content is indicated at various locations on the map by Flora’s icons 58
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`and 59 (first location selectable thumbnail image, second location selectable
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`thumbnail image). Id., 20-29. PO’s argument that the combination would result in
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`not displaying Flora’s icons is wrong—it reads out Okamura and Flora’s
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`contributions. POR, 52-54. Regardless of whether Flora requires an input to display
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`icons, the Petition does not rely on this aspect of Flora and instead relies on the fact
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`Flora displays icons 58 and 59 on map 46 to show locations associated with media
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`content. Id.; Petition, 22-27; EX1038, ¶64.
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`E.
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`Limitations [1g] and [1j]
`1. Okamura and Flora (Ground 1)
`The POR argues Flora’s disclosure of “Baikanur Cosmodrome” in Figure 3 is
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`“blurry and unclear” and would not teach “location name.” POR, 54-59. However,
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`Flora explains it displays the location’s “entire description” (EX1005, 7:45-51) and
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`Flora’s file history (EX1008) confirms Figure 3 recites “Baikanur Cosmodrome.”
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`EX1038, ¶65. At minimum, Flora’s file history Figure 3 is corroborating evidence a
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`POSITA would have understood the Flora reference Figure 3 recites “Baikanur
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`Cosmodrome.” Id. Unified is not relying on the file history, but the substance of
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`Figure 3 of the issued patent. This is proper. See, e.g, Application of Mraz, 455 F.2d
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`1069, 1072 (CCPA 1972). PO does not dispute Flora’s Figure 3 is a copy of the
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`application’s figure; the content of Figure 3 should not be disregarded simply due to
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`resolution reduction when Flora issued.
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`Further, the Petition argued Okamura and Flora disclose or render obvious
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`location name via Okamura’s “information 18” including this. Petition, 35-39, 42-
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`47, 70-80. PO concedes “Okamura already discloses accomplishing this function
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`[displaying a location name].” POR, 61-62, 69-70. As combined with Flora, which
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`describes including the entire description of the location, a user would “understand
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`the name, address, and spelling of locations at which content was captured,”
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`allowing them to “avoid confusion and ensure accuracy, for example, when
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`researching and viewing a content library.” Petition, 35-39; EX1002, ¶¶91-99;
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`EX1038 ¶¶66-67.
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`2. Okamura, Flora, and Wagner (Ground 2)/Okamura, Flora,
`Wagner, and Gilley (Ground 4)
`PO generically contests whether the references in Grounds 2 and 4 would have
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`been combined as taught by the Petition. POR, 69-71; Petition, 70-84. The Petition
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`demonstrated a POSITA would have combined the Okamura-Flora system with
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`Wagner because Wagner explicitly specifies the location name, such as a city name,
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`in a media viewer, which makes clear location associated with content and allows
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`for improved efficiency for displaying and navigating content. Id. The same analysis
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`applies to Ground 4. EX1038, ¶68.
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`F.
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`Limitations [1n] and [1p]
`1. Okamura and Flora (Ground 1)
`The POR alleges Okamura does not teach these limitations solely under PO’s
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`incorrect interpretation (which is wrong as discussed above in Section I.B). POR,
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`63-64. The Petition demonstrates under the proper interpretation, Okamura discloses
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`or at least renders obvious these limitations. Petition, 55-61; EX1038, ¶69.
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`2. Okamura, Flora, and Gilley (Ground 3)/Okamura, Flora,
`Wagner, and Gilley (Ground 4)
`PO generically contests whether the references in Grounds 3 and 4 would have
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`been combined as taught by the Petition. POR, 73-75. The Petition demonstrates
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`why a POSITA would have been motivated to combine the Okamura, Flora, and
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`Gilley (and similarly Okamura, Flora, Wagner, and Gilley), noting the numerous
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`benefits (e.g., improved accessibility, intuitive scheme, quick understanding it
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`would have offered, improved organization and usability), how a POSITA would
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`have effectuated the combination, that a POSITA would have recognized the
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`predictable results, and that the combination had a reasonable expectation of success.
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`Petition, 88-93. And whether PO’s interpretation is adopted or not, Grounds 3 and 4
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`render the limitations obvious as Gilley teaches displaying a first name and second
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`name simultaneously. Petition, 85-96; EX1038, ¶70.
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`G. Dependent Claims 2, 4, and 6-7
`PO does not individually contest claims 2, 4, and 6-7. POR, 64.
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`H. Claim 3
`PO misapprehends the combination of Okamura and Flora. POR, 64-66. The
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`Petition demonstrated Okamura’s teaches depressing “PLACE” tab (first input)
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`which causes display of cluster map display area 414 (Petition, 14-18), and in the
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`combination Okamura’s display area 414 (the map view) displays content indicated
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`at various locations on Flora’s geographic map 46 by icons 58 and 59. Petition, 62-
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`67. Okamura’s information 418 teaches displaying the number of contents for each
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`icon and would have been connected to each icon by overlapping as taught by
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`Okamura’s Figures 19-21. Id. That a user operation causes display of information
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`418 is irrelevant to the combination, which simply utilized the fact information 418
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`is displayed in overlapping form. Id.; EX1038, ¶72.
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`I.
`Claim 5
`Under PO’s incorrect interpretation discussed in Section I.B or the proper
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`plain meaning interpretation, the combination of Okamura and Flora renders obvious
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`claim 5 because it results in Okamura’s displayed information 418 showing the
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`number of contents associated with both the first and second of icons 58 and 59 (first
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`indication feature and second indication feature) displayed simultaneously for each
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`icon. Petition, 62-68; supra, Section II.H; POR, 66-67; EX1038, ¶¶73-74. PO
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`misapprehends the combination. Id.
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`J. Okamura, Flora, Wagner, and Gilley (Ground 4)
`The Petition explains a POSITA would have been motivated to combine
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`Okamura, Flora and Wagner with Gilley for the same reasons discussed regarding
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`the Okamura, Flora, and Gilley combination and the reasons discussed for that
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`combination apply equally. Petition, 95-96; POR, 76; EX1038, ¶75.
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`III. REAL PARTY IN INTEREST AND ESTOPPEL
`A. Unified is the Sole RPI
`PO alleges Apple and Samsung should be RPI using the same arguments the
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`Board has routinely rejected. POR, 14, 18-26. Unified v. Arigna Tech. Ltd.,
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`IPR2022-00285, Paper 10, 6-7 (PTAB June 17, 2022) (Institution Decision
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`collecting cases) (Arigna); Unified Patents, LLC v. Intellectual Ventures II, LLC,
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`IPR2022-00429, Paper 12, 10-11 (P.T.A.B. 2022) (IV II); Unified Patents Inc. v.
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`Barkan Wireless IP Holdings, LP, IPR2018-01186, Paper 57, 3-12 (PTAB Dec. 4,
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`2019) (Barkan), aff’d, 838 F’Appx 565 (Fed. Cir. 2021); Unified Patents, LLC v.
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`American Patents, LLC, IPR2019-00482, Paper 122 (PTAB Dec. 3, 2020)
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`(American); id., Paper 115, 40-52 (PTAB Aug. 13, 2020).
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`PO has not alleged or submitted any evidence of direction, control, joint
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`funding, or any relevant communication or coordination between Unified and any
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`other entity, much less an interested one; without such evidence, a finding of “RPI
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`or privity would be improper.” POR, 25-26; Uniloc 2017 LLC v. Facebook Inc., 989
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`F.3d 1018, 1029 (Fed. Cir. 2021) (Uniloc). None exists. Without such evidence,
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`PO’s argument fails. Arigna, Paper 10, 6-7.
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`The factors of AIT (Applications in Internet Time, LLC v. RPX Corp., 897
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`F.3d 1336 (Fed. Cir. 2018)) and AIT II (RPX Corp v. Applications in Internet Time,
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`LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential)) demonstrate Unified
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`is the sole RPI.
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`1.
`Business Model
`Unified deters non-practicing entity (NPE) assertions of questionable patents
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`in various technology zones without coordinating with members. See, e.g., EX1023,
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`¶5; EX2036, 13:7-13, 18:18-21, 38:13-17, 136:6-15,137:16-24. Previous decisions
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`assessing this business found Unified “properly named itself as the only RPI.” See,
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`e.g., American, Paper 122, 8; Barkan, Paper 57, 9, aff’d under Rule 36; Arigna, Paper
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`10, 5-7; IV II, Paper 12, 9-12.
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`PO’s generalized and speculative contentions about filing at Apple and
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`Samsung’s behest, portraying independence, and Unified’s business model are
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`untrue and unsupported by citation—let alone evidence. POR, 19. It is contradicted
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`by specific evidence provided by Unified about its deterrence mission and process,
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`proving Unified is the sole RPI. Arigna, 6-7.
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`Unified operates independently in its deterrence and does not file validity
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`challenges at any member’s behest. EX1023, ¶5. Unified (1) has sole and absolute
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`discretion over its decisions without input, assistance, or approval from members;
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`(2) does not coordinate with members regarding Unified filings or member
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`litigation; and (3) controls all aspects of its post-grant challenges. Id. ¶¶7, 10;
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`EX1024, 6; EX1025, 5, 9. Members are unable to participate or exercise any
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`direction or control over Unified’s filings. Id.
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`Unified deters NPE litigation through a variety of activities not limited to
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`validity challenges. EX1023, ¶¶4, 8; EX2036, 38:13-17; 136:6-15. Membership fees
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`are paid annually at standardized levels based on revenue, are designated toward
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`funding these activities but never to a particular IPR or patent, or even for
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`challenging any patent. EX1023, ¶8. The majority of Unified’s paying members pay
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`less than the average cost of a post-grant proceeding and most members pay no fees.
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`Id.
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`PO’s bare statement that “[a]pproximately 95% of Unified’s IPRs from 2021
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`through the present challenged patents that were asserted in district court” (POR, 20)
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`is irrelevant. Unified’s mission is to deter abusive patent use by NPEs, which most
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`often happens when NPEs assert patents in district court.
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`2.
`No Benefit to Any Individual Members
`Unified’s decision to challenge the ’228 Patent was without the insight,
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`assistance, or approval from any member, and was not in furtherance of any
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`member’s stated or implied benefit. EX1023, ¶13. Regarding the ’228 Patent: (1) no
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`member made Unified aware of, or expressed any interest in, the patent or PO (id.);
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`(2) Unified never sought to ascertain the desires of any third-party regarding the
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`patent (id.); and (3) Unified does not and cannot know if there is a specific benefit
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`to any individual members from this IPR (id.).
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`PO generally alleges “Apple and Samsung desire review of the ’228 patent”
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`by virtue of Unified challenging claims 1-7 of the ’228 patent, and Apple and
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`Samsung filing respective challenges against the “same claims.” POR, 24. PO’s
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`argument is misleading because Apple and Samsung each filed different challenges
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`against claims 1-19 rather than 1-7. IPR2022-00031, Paper 1, 1; IPR2022-00222,
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`Paper 2, 1. PO’s generalized argument is incorrectly premised on Unified’s validity
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`challenges “benefitting its members,” which has been rejected. IV II, Paper 12, 9-
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`12; POR, 19. Unified has 3,000+ members and no way of knowing whether its
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`members will benefit from its validity challenges or not, not only because it has no
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`member pre-filing communications about particular challenges, but also because its
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`many members from various diverse industries and market positions have variegated
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`and often conflicting
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`interests
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`(e.g., claim construction,
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`invalidity, or
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`noninfringement positions, lawsuits against competitors, market and competitive
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`complexities). EX1023, ¶8. Any supposed benefit to Apple and Samsung from
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`Unified’s IPR is entirely speculative and questionable; this is at least because Apple
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`and Samsung each evidently felt the need to expend their own resources filing their
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`own challenges against the ’228 patent, after Unified, using different prior art
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`combinations and attacking more claims, and each clearly have their own interests
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`differing from both each other’s and Unified’s. IPR2022-00031; IPR2022-00222;
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`EX1032, 2-4 (Samsung’s proposed district court constructions for ’228 claims,
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`differing from Unified’s).8 PO agrees, devoting an entire POR section to a
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`construction proposed by Samsung in district court, noting “the conflicting positions
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`of the different Petitioners.” POR, 50-51.
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`PO further argues if Unified, Apple, or Samsung succeed in their IPRs,
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`Apple’s and Samsung’s benefit would be the same. POR, 24. But the benefit would
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`not be the same; Unified challenged fewer claims. Further, this alleged same general
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`benefit could be argued about joint defense groups, trade associations, competitors,
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`or would-be defendants in general. That Apple and Samsung may (or may not)
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`8 In the Samsung IPR, the Board preliminarily determined Samsung’s and Unified’s
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`interests differed. IPR2022-00222, Paper 12, 11.
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`benefit, directly or indirectly, from Unified’s challenge due to a suit is not enough.
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`Uniloc, 1028; American, Paper 122, 6-7; IV II, Paper 12, 11.
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`The “heart of the inquiry” is whether Unified acted at the “behest” of another,
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`including “whether a party exercises or could exercise control over a petitioner’s
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`participation in a proceeding, or whether a party is funding the proceeding or
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`directing the proceeding.” Uniloc, 1028; AIT, 1351; AIT II, 33. Neither this specific
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`nor any other proceeding was filed at another’s behest and no third party is or could
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`exercise control over this proceeding. EX1023, ¶¶5-6, 24. Apple’s and Samsung’s
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`filings are indicative of this lack of direction or control and demonstrate “the
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`companies were not motivated to avoid the estoppel associated with filing an IPR,”
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`contrasting AIT, where RPX’s challenge benefitted a time-barred third party.
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`Barkan, Paper 57, 8. And there is no other evidence—communications or
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`otherwise—showing Unified’s challenge was made at the behest of any third party