UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ASSA ABLOY AB, ASSA ABLOY INC., ASSA ABLOY RESIDENTIAL
`GROUP, INC., AUGUST HOME, INC., HID GLOBAL CORPORATION,
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioner,
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`v.
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`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
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`Case IPR2022-01006
`Patent 9,665,705
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`

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`B.
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`C.
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`D.
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`
`TABLE OF CONTENTS ........................................................................................... i
`TABLE OF AUTHORITIES ................................................................................... iii
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`FACTUAL AND PROCEDURAL BACKGROUND .................................... 3
`A.
`The Apple Action Was Served More Than 1 Year Before The
`Petition Was Filed ................................................................................. 3
`The ’705 Patent And The Yale/August Products At Issue In The
`Parallel Litigation .................................................................................. 4
`Patent Owner Contacted Petitioner Yale Regarding The ’705
`And The ’208 Patents (But Not The ’039 Patent) ................................. 9
`The Petitioners’ Declaratory Judgment Complaint And IPR
`Petitions Against All Three Of The Patents Asserted In The
`Apple Action .......................................................................................10
`The Petitioners’ Admissions Regarding Apple ...................................11
`E.
`The Apple Developer Program License Agreement ...........................12
`F.
`III. LEGAL STANDARDS .................................................................................14
`A.
`Petitioners Bear The Burden Of Persuasion ........................................14
`B.
`Real Parties-In-Interest And Privity Standards ...................................15
`1.
`Scope Of Real Parties In Interest ..............................................16
`2.
`Scope Of Privity ........................................................................17
`INSTITUTION IS BARRED UNDER SECTION 315(b) BECAUSE
`APPLE IS AN RPI AND PRIVY OF PETITIONERS .................................18
`A. Apple Is An Unnamed RPI To This Proceeding .................................18
`1.
`Apple Has A Preexisting, Established Relationship With
`Petitioners ..................................................................................18
`a.
`Petitioners Admitted To A Preexisting, Established
`Relationship With Apple In The Declaratory
`Judgment Complaint .......................................................18
`The Apple Agreement Also Establishes That
`Apple Is An RPI To This Proceeding .............................22
`
`IV.
`
`TABLE OF CONTENTS
`
`b.
`
`i
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`

`

`Representations And Warranties Of
`Noninfringement ..................................................24
`Indemnification Clauses .......................................26
`Product Inspection And Insurance Coverage
`Clauses ..................................................................29
`iv. Apple Appointed As Petitioners’ Agent ..............31
`v.
`Summary Of Apple Agreement Significance ......31
`Apple’s Homekit Platform And Related
`Documents Are Further Evidence That Apple Is A
`RPI To This Proceeding .................................................34
`Apple Is A Clear Beneficiary Of The Petition ..........................36
`The Petitioners Filed An IPR Petition Against The ’039
`Patent For Apple’s Benefit ........................................................38
`Apple Is A Privy To This Proceeding .................................................39
`B.
`CONCLUSION ..............................................................................................41
`
`c.
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`2.
`3.
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`i.
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`ii.
`iii.
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`V.
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`ii
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`

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`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc., v. Achates Reference Publ, Inc.,
`IPR2013-00080 (PTAB June 2, 2014) ................................................... 32, 33
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) ............................................................. passim
`Bungie v. Worlds Inc.,
`IPR2015-01264 (PTAB Jan. 14, 2020) ................................................. passim
`Cisco Sys., Inc. v. Hewlett Packard Enter. Co.,
`IPR2017-01933 (PTAB Mar. 16, 2018) .......................................................16
`CPC Patent Technologies Pty Ltd. v. Apple, Inc.,
`No. 5:22-cv-02553-NC (N.D. Cal., San Jose Division) .................................. 4
`CPC Patent Technologies Pty Ltd. v. Apple, Inc.,
`No. 6:21-cv-00165 (W.D. Tex., Waco Division) ............................................ 1
`Power Integrations, Inc. v. Semiconductor Components Indus., LLC,
`926 F.3d 1306 (Fed. Cir. 2019) ............................................................. 15, 17
`RPX Corp. v. Applications in Internet Time, LLC,
`IPR2015-01750 (PTAB Oct. 2, 2020) ..........................................................39
`Taylor v. Sturgell,
`553 U.S. 880 (2008) ......................................................................... 18, 39, 40
`U.S. v. N.Y., New Haven & Hartford R.R. Co.,
`355 U.S. 253 (1957) ......................................................................................19
`Ventex Co., Ltd., v. Columbia Sportswear North America, Inc.,
`IPR2017-00651 (PTAB Jan. 24, 2019) ................................................. passim
`WesternGeco LLC v. ION Geophysical Corp.,
`889 F.3d 1308 (Fed. Cir. 2018) ....................................................................17
`Wi-Fi One, LLC v. Broadcom Corp.,
`887 F.3d 1329 (Fed. Cir. 2018) ............................................................. 15, 16
`Worlds, Inc. v. Bungie, Inc.,
`903 F.3d 1237 (Fed. Cir. 2018) ............................................................. passim
`Statutes
`35 U.S.C. § 314 ........................................................................................................37
`
`iii
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`

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`35 U.S.C. § 315(b) ........................................................................................... passim
`Other Authorities
`BLACK’S LAW DICTIONARY (10th ed. 2014) ..................................................17
`Congressional Record Volume 157, Number 132
`(Thursday, September 8, 2011) ....................................................................39
`Office Patent Trial Guide, 77 Fed. Reg. 48756, 48759 (Aug. 14, 2012) ..............16
`Rules
`37 C.F.R. § 42.51(b)(2) .............................................................................................. 2
`
`
`
`
`
`iv
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`

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`I.
`
`INTRODUCTION
`CPC Patent Technologies Pty. Ltd. (“CPC” or “Patent Owner”), respectfully
`
`submits this Preliminary Response to Petition IPR2022-01006 (“Petition”) for inter
`
`partes review U.S. Patent No. 9,665,705 (“the ’705 Patent”) filed by Petitioners
`
`ASSA ABLOY AB, ASSA ABLOY Inc., ASSA ABLOY Residential Group, Inc.
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`(“Yale”), August Home, Inc. (“August”), HID Global Corporation (“HID”), ASSA
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`ABLOY Global Solutions, Inc. (“Hospitality”) (collectively “Petitioners”). The
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`Board should deny the Petition for at least the reason that it is time-barred under 35
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`U.S.C. 315(b). Specifically, the Petition is time-barred because Apple, Inc.
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`(“Apple”) is a real party-in-interest (“RPI”) and privy, and Patent Owner served a
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`complaint on Apple alleging infringement of the ’705 Patent more than 1 year
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`before this Petition was filed.1 Petitioners bear the burden of proving that Apple is
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`not an RPI or privy to this proceeding.
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`1 In particular, the complaint in CPC Patent Technologies Pty Ltd. v. Apple, Inc.,
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`No. 6:21-cv-00165 (W.D. Tex., Waco Division) (“the Apple Action”) was served
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`on Apple on March 1, 2021. See EX2001, EX2002. The complaint in the Apple
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`Action asserts infringement of the ’705 Patent as well as CPC’s U.S. Patent Nos.
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`9,269,208 (“the ’208 Patent”) and 8,620,039 (“the ’039 Patent”), which are also the
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`subject of IPR petitions filed by Petitioners more than 1 year after service of the
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`1
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`

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`As discussed below, at the time this Petition was filed Apple possessed a
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`pre-existing substantive legal relationship with Petitioners concerning at least the
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`Yale and August technology at issue. Indeed, Petitioners admit that Apple is their
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`“business partner” with respect to the relevant products. Further, it is clear that
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`Apple would receive more than a merely generalized benefit from institution of the
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`Petition. To the contrary, Apple would be a direct and specific beneficiary of a
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`potential finding of unpatentability of patent claims for which Patent Owner has
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`accused Apple of infringing in the Apple Action.
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`While Patent Owner respectfully submits that the evidence presented below
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`is more than sufficient to establish that this Petition is time-barred under § 315(b),
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`Patent Owner is in the process of seeking additional discovery on the RPI and
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`privity issues under 37 C.F.R. § 42.51(b)(2). To that end, on August 17, 2022,
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`Patent Owner (through counsel), contacted Petitioners’ counsel to initiate a meet-
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`and-confer regarding additional discovery. See EX2010 at 4. Petitioners’ counsel
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`responded and indicated that Apple and the Petitioners are parties to the Apple
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`Developer Program License Agreement (“Apple Agreement” or “Agreement”) (id.
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`Apple Action (namely IPR2022-01045; IPR2022-01089; IPR2022-01093;
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`IPR2022-01094). CPC maintains that those petitions are time-barred under 35
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`U.S.C. 315(b) as well and will make timely filings in those matters to that effect.
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`2
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`

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`at 2), which is submitted with this Preliminary Response as EX2009 and is
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`discussed in detail below. After reviewing the Apple Agreement, Patent Owner
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`sent Petitioners a set of narrowly tailored proposed discovery requests. Id. at 1. In
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`the event the parties are unable to agree on the scope of additional discovery,
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`Patent Owner will promptly seek leave from the Board to file a motion for
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`additional discovery.
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`For at least the reasons discussed below, this Petition is barred by 35 U.S.C.
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`§ 315(b). In view of that, Patent Owner will not address in this Preliminary
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`Response the invalidity grounds advanced by Petitioners, other than to state that
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`the invalidity grounds are deficient, as Patent Owner will demonstrate as needed if
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`institution is granted.
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`II.
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`FACTUAL AND PROCEDURAL BACKGROUND
`A. The Apple Action Was Served More Than 1 Year Before The
`Petition Was Filed
`On February 23, 2021, Patent Owner filed a complaint against Apple in the
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`Western District of Texas for infringement of three patents, the ’705 Patent (the
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`subject of this Petition), the ’208 Patent, and the ’039 Patent. EX2003. The
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`complaint in the Apple Action was served on March 1, 2021. EX2004. The Apple
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`Action was subsequently transferred to the Northern District of California and is
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`now pending as CPC Patent Technologies Pty Ltd. v. Apple, Inc., No. 5:22-cv-
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`3
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`

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`02553-NC (N.D. Cal., San Jose Division). The Apple Action is identified as a
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`related matter in the Petition’s mandatory notices. Petition at 4.
`
`B.
`
`The ’705 Patent And The Yale/August Products At Issue In The
`Parallel Litigation
`The ’705 Patent describes a secure access system that includes at least a
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`transmitter subsystem and a controlled item such as a physical locking mechanism
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`on a door. EX1001, Abstract. The transmitter subsystem includes a sensor to
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`receive a biometric signal such as a fingerprint of facial data, and can match the
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`biometric signal against a database of stored biometric signatures in order to output
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`an accessibility attribute. The transmitter subsystem also includes the ability to
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`enroll biometric data in the database. Some embodiments of the ’705 Patent further
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`include a receiver subsystem that receives information corresponding to the
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`accessibility attribute and provides access to the controlled item. Id. at Abstract,
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`5:54–6:20, 6:67–7:3, 7:15-26, 8:24-38, FIG. 2.
`
`4
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`

`

`
`Yale markets a line of smart lock products called Yale Assure Locks. These
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`
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`door locks can connect to a user’s existing deadbolt, replacing the other door
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`hardware to allow key-free entry with a keypad. EX2011. Yale Assure Locks are
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`also sold with a module that allows users to control, monitor, and share access
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`from anywhere through the Yale Access mobile app installed on the user’s mobile
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`device, specifically including an Apple iPhone. EX2012. The Yale Access mobile
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`app further allows users to restrict access to users that have been authenticated on
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`their mobile device, including through the use of biometric authentication.
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`EX2013.
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`5
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`

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`August also markets a line of smart locks, the most current version of which
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`is called the August Wi-Fi Smart Lock. Like the Yale product, the August line of
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`smart locks connect to a user’s existing deadbolt, replacing some of the user’s
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`other door hardware. EX2014. August Wi-Fi Smart Locks provide the user with
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`the ability to control, monitor, and share access from anywhere through the August
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`mobile app installed on the user’s mobile device, again including an Apple iPhone.
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`Id. The August mobile app further allows users to restrict access to users that have
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`been authenticated on their mobile device, including through the use of biometric
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`authentication. EX2015.
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`6
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`

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`1.
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`Yale Assure Locks:
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`Yale’s August 25, 2020, announcement is submitted as EX2013.
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`
`
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`7
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`

`

`2.
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`August Smart Locks:
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`
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`August’s August 25, 2020, announcement is submitted as EX2015.
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`In its August 25, 2020, announcement, August described the biometric
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`feature as using “your phone’s built-in authentication tools to prompt fingerprint or
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`facial recognition before you can unlock or lock your home,” which “further
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`ensures that your smart lock is only operated by the right people at the time you
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`intend for it.” Id.
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`Each of the Yale and August products at issue, specifically the App for each,
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`is offered on the Apple App Store. See EX2024-EX2025.
`
`8
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`

`

`C.
`
`Patent Owner Contacted Petitioner Yale Regarding The ’705 And
`The ’208 Patents (But Not The ’039 Patent)
`On or about October 18, 2021, Patent Owner sent a letter to Yale asserting
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`infringement of the ’705 and ’208 Patents by Yale’s “Smart Locks” products.
`
`EX2005.2 More particularly, the letter included claim charts identifying certain
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`“Accused Instrumentalities” that include the Yale Assure Lock SL with the Yale
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`Access software solution as well as “Biometric Verification for August and Yale
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`Locks.” See e.g., id. at 6-7. In this letter, Patent Owner invited Yale to engage in
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`licensing discussions. After receiving no response, Patent Owner sent a follow-up
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`letter on November 4, 2021. EX2006. (The October 18, 2021 letter and the
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`November 4, 2021 letter are hereinafter referred to collectively as “the Yale
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`Letters”).
`
`Neither of the Yale Letters made any mention of the ’039 Patent. EX2005-
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`EX2006. Neither of the Yale Letters made any mention of any of the other
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`Petitioners, including HID and Hospitality, or any of their products. Id. Patent
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`Owner never raised or otherwise mentioned the ’039 Patent to Yale or any of the
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`Petitioners at any time. See EX2008.
`
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`2 The October 18, 2020 date on the face of the letter is a typographical error. The
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`parties agree the letter was sent on or about October 18, 2021. See, e.g., EX2007 at
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`¶ 53.
`
`9
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`

`

`D. The Petitioners’ Declaratory Judgment Complaint And IPR
`Petitions Against All Three Of The Patents Asserted In The Apple
`Action
`The Petitioners never responded to the Yale Letters. Instead, on May 23,
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`2022, Petitioners filed a complaint for declaratory judgment of non-infringement of
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`the ’705, ’208, and ’039 Patents (“the Declaratory Judgment Complaint”).
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`EX2007.3 The Petitioners did not file the Declaratory Judgment Complaint only as
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`to Yale and August, however, or only as to the products and patents raised in the
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`Yale Letters. Instead, the Petitioners also filed the Declaratory Judgment
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`Complaint as to HID and Hospitality, whom Patent Owner had never contacted
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`regarding the patents or technology at issue. See EX2005-EX2006, EX2008.
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`Notably, the Declaratory Judgment Complaint raises the ’039 Patent primarily in
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`the context of HID and Hospitality’s products and services, and not in connection
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`with Yale or August. See EX2007 at ¶¶ 100-106. Thus, the Petitioners included
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`HID and Hospitality as plaintiffs to the Declaratory Judgment Complaint for the
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`purpose of alleging an apprehension of suit with respect to the ’039 Patent, which
`
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`3 There is complete overlap among the named Petitioners and the named plaintiffs
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`in the Declaratory Judgment Complaint (referred to collectively in the Declaratory
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`Judgment Complaint as “the ASSA ABLOY Entities”). See EX2007 at ¶ 1.
`
`10
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`

`

`Patent Owner previously asserted against Apple in the Apple Action but never
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`raised with respect to any of the Petitioners.
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`After filing the Declaratory Judgment Complaint, Petitioners filed IPR
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`petitions against all three patents asserted in the Apple Action, as follows:
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`IPR2022-01006 (’705 Patent); IPR2022-01045 & IPR2022-01089 (’208 Patent);
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`IPR2022-01093 & IPR2022-01094 (’039 Patent).
`
`The Petitioners’ Admissions Regarding Apple
`E.
`In the Declaratory Judgment Complaint, Petitioners admit that Apple is their
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`“business partner” with respect to the products at issue. EX2007 at ¶ 30. In an
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`effort to support their basis for declaratory judgment jurisdiction – i.e., the
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`existence of a justiciable case or controversy even where Patent Owner never
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`contacted some of the Petitioners nor ever raised the ’039 Patent at all – Petitioners
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`Complaint also pleads that Patent Owner’s “litigation campaign that includes
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`Apple … is likely to expand to include the ASSA ABLOY Entities.” Id. Petitioners
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`further asserted that “it is highly likely that Charter Pacific4 will sue the Assa
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`Abloy Entities on the same patents that have been asserted against Apple.” Id. In
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`4 Charter Pacific Corporation Ltd. is Patent Owner CPC’s parent company and is a
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`named co-defendant in the Declaratory Judgment Complaint, wherein they are
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`collectively referred to as “Charter Pacific.” See EX2005 at ¶ 1.
`
`11
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`

`

`addition, Petitioners asserted that “Charter Pacific has a history of alleging
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`infringement of all three Patents-in-Suit, including against Apple, the ASSA
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`ABLOY Entities’ business partner.” Id. at ¶¶ 43-44.5 Petitioners also pled that
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`Patent Owner’s potential infringement allegations against Apple in Germany added
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`to Petitioners’ purported apprehension of suit. Id. at ¶ 46.
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`The Declaratory Judgment Complaint includes further assertions regarding
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`Petitioners’ relationship with Apple and Apple’s connections to the Petitioners’
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`products at issue. For example, under a heading related to August and Yale’s
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`alleged reasonable apprehension of suit, the Declaratory Judgment Complaint
`
`references Patent Owner’s “broad interpretation of the claims in the allegations
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`brought against Apple” and, further, that “the Apple Touch ID and Face ID
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`features were a prominent focus of the claim charts presented to Yale.” Id. at ¶¶
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`62-63. The Petitioners further note that “[t]he download page for Yale Access app
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`identifies August as the developer in the Apple App Store.” Id. at ¶ 65.
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`The Apple Developer Program License Agreement
`F.
`Consistent with having pled that Apple is their “business partner,” the
`
`Petitioners have also acknowledged that they and Apple are parties to the Apple
`
`Agreement. EX2010 at 2. According to its terms, generally the Apple Agreement
`
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`5 Unless otherwise indicated, all emphasis is added.
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`12
`
`

`

`grants a limited license to use the Apple Software and Services for the purpose of
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`developing and testing Applications (i.e., “Apps”) to be used in conjunction with
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`Apple devices (e.g., iPhone, iPad, etc.) on the terms and conditions set forth in the
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`Agreement. EX2009 at 1. The Agreement states that “[t]hese terms and conditions
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`constitute a legal agreement between you and Apple.” Id.
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`As discussed in detail below, the Apple Agreement includes several patent-
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`related obligations and multiple conditions indicating the existence of a structured
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`and established business relationship between Apple and the Petitioners that
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`demonstrate that Apple is a real party in interest. Such provisions include, for
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`example:
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`• warranties of non-infringement of any third-party patents (EX2009 at 13-14,
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`16, 77);
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`• indemnification and defense arrangements in the event of a patent
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`infringement suit (id. at 10);
`
`• the obligation to get Apple’s approval to settle patent infringement suits that
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`may affect Apple (id.);
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`• Apple’s right to inspect the physical samples or components of Petitioners’
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`products (id. at 36);
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`• The Petitioners’ obligation to carry certain levels of insurance for certain
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`types of products as Apple requests (id.);
`
`13
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`

`

`• The Petitioners’ obligation to name Apple as an additional insured (id.);
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`• Appointment of Apple as Petitioners’ agent with respect to the distribution
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`of Petitioners’ software on the Apple App Store (id. at 79-80).
`
`As will be explained in detail below, the facts concerning Apple’s relationship
`
`to Petitioners clearly establish that Apple is a real party in interest and/or privy for
`
`purposes of the present IPR.
`
`III. LEGAL STANDARDS
`35 U.S.C. § 315(b) provides, in pertinent part, that “[a]n inter partes review
`
`may not be instituted if the petition requesting the proceeding is filed more than 1
`
`year after the date on which the petitioner, real party in interest, or privy of the
`
`petitioner is served with a complaint alleging infringement of the patent.” See also
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`Worlds, Inc. v. Bungie, Inc., 903 F.3d 1237, 1240 (Fed. Cir. 2018) (“Correctly
`
`identifying all real parties in interest with respect to each IPR petition is important,
`
`as the determination may impact whether a petition may be instituted.” Id. citing
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`35 U.S.C. § 315(b) (concerning a patent owner’s civil action against a real-party-
`
`in-interest)).
`
`Petitioners Bear The Burden Of Persuasion
`A.
`Once Patent Owner introduces some evidence indicating an RPI relationship
`
`between Apple and one or more of the Petitioners, then Petitioners “bear[] the
`
`ultimate burden of persuasion to show that its petitions are not time-barred under §
`
`14
`
`

`

`315(b) based on a complaint served on an alleged real party in interest more than a
`
`year earlier.” Worlds Inc., 903 F.3d at 1242. This same burden applies to proofs on
`
`privity. See Ventex Co., Ltd., v. Columbia Sportswear North America, Inc.,
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`IPR2017-00651, Paper 148 at 4 (PTAB Jan. 24, 2019) (“Ventex”).
`
`B. Real Parties-In-Interest And Privity Standards
`The law regarding real parties-in-interest and privity has changed
`
`significantly in recent years, beginning with the Federal Circuit’s 2018 decision
`
`in Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed.
`
`Cir. 2018) (“AIT”). In AIT, the Federal Circuit found that the Board erred by
`
`taking an “unduly narrow view” of the meaning of real party-in-interest and by
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`failing to consider the entirety of the record. Id. at 1345. As the court explained,
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`the inquiry into whether a party is a RPI or privy “demands a flexible approach
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`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
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`preexisting, established relationship with the petitioner.” AIT, 897 F.3d at 1351.
`
`“The statutory terms ‘real party in interest’ and ‘privy’ are not defined in Title 35.
`
`However, they are well-established common law terms.” Power Integrations, Inc.
`
`v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1315 (Fed. Cir. 2019)
`
`(citing Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1335 (Fed. Cir.
`
`2018). Moreover:
`
`15
`
`

`

`[The] Practice Guide explains that “real party in interest,” as used in
`the AIA trial context, differs from the traditional understanding of the
`term: [T]he spirit of that formulation as to [inter partes review] . . .
`proceedings means that, at a general level, the “real party-in-interest”
`is the party that desires review of the patent.
`Cisco Sys., Inc. v. Hewlett Packard Enter. Co., IPR2017-01933, Paper 9 at 12
`
`(PTAB Mar. 16, 2018) (“Cisco”) (quoting Office Patent Trial Guide, 77 Fed.
`
`Reg. 48756, 48759 (Aug. 14, 2012) (“Guide”)).
`
`Scope Of Real Parties In Interest
`1.
`“Congress intended for [the term “real party-in-interest”] to have an
`
`expansive formulation.” AIT, 897 F.3d at 1350. “[T]he focus of the real-party-in-
`
`interest inquiry is on the patentability of the claims challenged in the IPR
`
`petition, bearing in mind who will benefit from having those claims canceled or
`
`invalidated.” AIT, 897 F.3d at 1348. Also relevant is “whether some party other
`
`than the petitioner is the ‘party or parties at whose behest the petition has been
`
`filed.’” Wi-Fi One, 887 F.3d at 1336 (quoting Guide at 48759).
`
`The Trial Practice Guide indicates that “a non-party may be a real party-in-
`
`interest even in the absence of control or an opportunity to control.” Cisco at 13
`
`(citing Guide at 48760). Analysis of who benefits from an IPR petition is a
`
`central focus of the RPI analysis. See Ventex at 7-8 (finding a real party-in-
`
`interest relationship where the parties had “mutual interest in the continuing
`
`commercial and financial success of each other” and where the “clear
`16
`
`

`

`beneficiary” of the IPRs was a party who was otherwise “barred under § 315(b)
`
`from seeking [relief] for itself”).
`
`Scope Of Privity
`2.
`“‘[T]he legislative history [of the Leahy-Smith America Invents Act
`
`(‘AIA’)] . . . lends support to the conclusion that privity in § 315(b) should be
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`given its common law meaning.’” Power Integrations, 926 F.3d at 1315 (quoting
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`WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1318 (Fed. Cir.
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`2018)). “Privity is a well-recognized common law concept that is primarily based
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`on the legal relationship between two parties. The general definition of privity is
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`‘[t]he connection or relationship between two parties, each having a legally
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`recognized interest in the same subject matter (such as transaction, proceeding, or
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`piece of property).’” AIT, 897 F.3d at 1359 (quoting Privity, BLACK’S LAW
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`DICTIONARY (10th ed. 2014)).
`
`The Supreme Court has provided a non-exhaustive list for examining
`whether the legal relationship between two parties establishes that one
`is the privy of the other. The list consists of six categories that create
`independent exceptions to the common law rule that normally forbids
`non-party preclusion in litigation: (1) an agreement between the
`parties to be bound; (2) pre-existing substantive legal relationships
`between the parties; (3) adequate representation by the named party;
`(4) the non-party’s control of the prior litigation; (5) where the non-
`party acts as a proxy for the named party to relitigate the same issues;
`
`17
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`

`

`and (6) where special statutory schemes foreclose successive litigation
`by the non-party (e.g., bankruptcy and probate).
`AIT, 897 F.3d at 1360 (citing Taylor v. Sturgell, 553 U.S. 880, 894-95 (2008)).
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`Importantly, in the precedential Ventex decision, the Board held that
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`“[a]nalysis under any one of the factors can support a finding of privity.” Ventex
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`at 12 (citing AIT, 897 F.3d at 1360).
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`IV.
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`INSTITUTION IS BARRED UNDER SECTION 315(b) BECAUSE
`APPLE IS AN RPI AND PRIVY OF PETITIONERS
`As set forth in detail below, pursuant to the precedents of the Federal Circuit
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`and the Board, Apple is an RPI and privy to this proceeding, which is therefore
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`time-barred.
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`A. Apple Is An Unnamed RPI To This Proceeding
`Apple Has A Preexisting, Established Relationship With
`1.
`Petitioners
`Petitioners Admitted To A Preexisting, Established
`a.
`Relationship With Apple In The Declaratory
`Judgment Complaint
`There can be no dispute that Apple has a preexisting, established
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`relationship with the Petitioners. Petitioners admitted in the Declaratory
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`Judgment Complaint that Apple is their “business partner” with respect to the
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`technology at issue. EX2007 at ¶¶ 30, 43. Further, as discussed below, Plaintiffs
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`affirmatively relied on its relationship with Apple and the Apple related features
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`used in connection with at least the accused Yale and August products as grounds
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`18
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`

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`for asserting that they had a reasonable apprehension that the ’705 Patent would be
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`asserted against them. These admissions are, by themselves, sufficient to satisfy
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`the low threshold of putting the RPI issue “into dispute.” See Worlds, 903 F.3d at
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`1243.
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`As the Federal Circuit explained, a petitioner’s statement that it is the sole
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`RPI is not entitled to any legal presumption of truth. Id. Instead, the Petitioners
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`must show that they “complied with the statutory requirement to identify all the
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`real parties in interest.” Id. at 1242. Although the Federal Circuit has stated that it
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`is “practical” for a petitioner’s initial identification to be “accepted unless and
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`until disputed by a patent owner,” it is nonetheless improper to treat this
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`pragmatic approach as a presumption, or to shift the burden to the Patent Owner.
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`Id. at 1243.
`
`It is important that the evidentiary burden remains at all times with the
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`petitioner. As the court recognized, “an IPR petitioner will usually be in a better
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`position, at least relative to the patent owner, to access evidence relevant to the
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`real-party-in-interest inquiry.” Id. at 1242-43; see also U.S. v. N.Y., New Haven &
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`Hartford R.R. Co., 355 U.S. 253, 256 n.5 (1957) (“The ordinary rule, based on
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`considerations of fairness, does not place the burden upon a litigant of
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`establishing facts peculiarly within the knowledge of his adversary.”).
`
`19
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`

`

`It is true that a patent owner must do more than make a mere assertion,
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`devoid of any evidentiary support, to bring the real party in interest issue into
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`debate. Worlds, at 1244. But the quantum of evidence needed to properly raise
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`the issue is low. As Worlds explained, to “sufficiently raise the issue,” the Patent
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`Owner need only “produce some evidence that tends to show that a particular
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`third party should be named a real party in interest.” Id. at 1244 (emphasis in
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`original). It is then for the Petitioner to meet its burden of persuasion to prove its
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`RPI statement with admissible evidence. Id. at 1241-44.
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`Here, in addition to Petitioners’ admission that they and Apple are business
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`partners with respect to the technology at issue, Petitioners also asserted that
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`Patent Owner’s “litigation campaign that includes Apple … is likely to expand to
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`include the ASSA ABLOY Entities.” EX2007 at ¶ 30. Petitioners further asserted
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`that “it is highly likely that Charter Pacific will sue the Assa Abloy Entities on the
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`same patents that have been asserted against Apple.” Id. In addition, Petitioners
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`asserted that “Charter Pacific has a history of alleging infringement of all three
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`Patents-in-Suit, including against Apple, the ASSA ABLOY Entities’ business
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`partner.” Id. at ¶¶ 43-44. Petitioners also asserted that Patent Owner’s potential
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`infringement allegations against Apple in Germany added to Petitioners’ purported
`
`apprehension of suit. Id. at ¶ 46.
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`20
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`

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`The Petitioners further relied on the close relationship between the Yale and
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`August products and the Apple technology at issue in the Apple Action. For
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`example, under a heading related to August and Yale’s reasonable apprehension of
`
`suit, the Petitioners referenced Patent Owner’s “broad interpretation of the claims
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`in the allegations brought against Apple” and, further, that the Apple Touch ID and
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`Face ID features were a prominent focus of the claim charts presented to Yale.” Id.
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`at ¶¶ 62-63. The Petitioners further noted that “[t]he download page for Yale
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`Access app identifies “August as the developer in the Apple App Store.” Id. at ¶
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`65.
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`In sum, therefore, Petitioners pled and relied upon their close relationship
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`with Apple concerning the patents and technology in question so as to support their
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`allegations of reasonable apprehension of suit to justify purported declaratory
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`judgment jurisdiction. This reliance by Petitioners on their relationship wi