Trials@uspto.gov
`571-272-7822
`
`Paper 23
`Date: December 1, 2022
`
`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, and
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
`
`IPR2022-01006
`Patent 9,665,705 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`
`I.
`
`INTRODUCTION
`Background and Summary
`A.
`ASSA ABLOY AB, ASSA ABLOY Inc., ASSA ABLOY Residential
`Group, Inc., August Home, Inc., HID Global Corporation, and ASSA
`ABLOY Global Solutions, Inc. (collectively “Petitioner”1) filed a Petition
`requesting inter partes review of claims 1–17 (the “challenged claims”) of
`U.S. Patent No. 9,665,705 B2 (Ex. 1001, “the ’705 patent”). Paper 2
`(“Pet.”), 1, 4. CPC Patent Technologies Pty Ltd. (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 9 (Prelim. Resp.”). With our
`authorization to address Patent Owner’s arguments that the Petition is
`time-barred under 35 USC § 315(b) (see Paper 16), Petitioner filed a Reply
`(Paper 18 (“Prelim. Reply”)); and Patent Owner filed a Sur-Reply (Paper 20
`(“Sur-Reply”)).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (permitting
`the Board to institute trial on behalf of the Director). To institute an inter
`partes review, we must determine that the information presented in
`the petition, any preliminary response, or other pre-institution briefing shows
`“a reasonable likelihood that the petitioner would prevail with respect to
`at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “The
`
`
`1 See Cradlepoint, Inc. et al v. 3G Licensing S.A., IPR2021-00639, Paper 12,
`2 (PTAB May 13, 2021) (“[F]or each ‘petition’ there is but a single party
`filing the petition, no matter how many companies are listed as petitioner or
`petitioners and how many companies are identified as real parties-in-
`interest. . . . Even though the separate sub-entities regard and identify
`themselves as ‘Petitioners,’ before the Board they constitute and stand in the
`shoes of a single ‘Petitioner. . . . they must speak with a single voice, in both
`written and oral representation.”).
`
`2
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`‘reasonable likelihood’ standard is a somewhat flexible standard that allows
`the Board room to exercise judgment.” Patent Trial and Appeal Board
`Consolidated Trial Practice Guide, 53 (Nov. 2019) (“TPG”).2
`Petitioner has the burden of proof. Petitioner’s burden does not
`change even if Patent Owner does not file a preliminary response, or files a
`preliminary response without addressing the substantive unpatentability
`assertions. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (“In an [inter partes review], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.”). This burden of persuasion never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015).
`A decision to institute is “a simple yes-or-no institution choice
`respecting a petition, embracing all challenges included in the petition.”
`PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For
`the reasons set forth below, we determine that Petitioner has demonstrated
`that there is a reasonable likelihood that at least one of the challenged claims
`is unpatentable. Accordingly, we institute an inter partes review of all
`challenged claims and on all grounds asserted in the Petition.
`Real Parties-in-Interest
`B.
`Petitioner identifies “ASSA ABLOY AB, ASSA ABLOY Inc. and its
`wholly owned subsidiaries ASSA ABLOY Residential Group, Inc., August
`Home, Inc., HID Global Corporation, and ASSA ABLOY Global Solutions,
`
`
`2 The TPG is available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`
`3
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`Inc.” as the real parties-in-interest. Pet. 1. Petitioner also states “ASSA
`ABLOY AB is the ultimate parent of all parties-in-interest.” Id.
`Patent Owner identifies itself as the sole real party-in-interest.
`Paper 5, 2.
`The entirety of Patent Owner’s Preliminary Response is devoted to the
`issue of whether “the Petition is time-barred under 35 U.S.C. § 315(b)
`because Apple, Inc. (‘Apple’) is a real party in interest (‘RPI’) or privy, and
`Patent Owner served a complaint on Apple alleging infringement of the ’705
`Patent more than 1 year before this Petition was filed.” See, e.g.,
`Prelim. Resp. 1. We address this issue in Section II of this Decision.
`Related Matters
`C.
`Petitioner identifies the following matters as being related to this
`proceeding:
`1)
`ASSA ABLOY AB, et al. v. CPC Patent Technologies Pty Ltd.,
`et al., No. 3-22-cv-00694 (D. Conn.);
`CPC Patent Technologies Pty Ltd v. HMD Global Oy,3
`2)
`WDTX-6-21-cv-00166-ADA (W.D. Tex.);
`CPC Patent Technologies Pty Ltd v. Apple Inc.,
`3)
`No. 5:22-cv-02553-NC (N.D. Cal); and
`IPR2022-00602 and IPR2022-00601, identified as pending IPR
`4)
`challenges filed by Apple against, respectively, the ’705 patent and
`related U.S. Patent No. 9,269,208 (the “’208 patent).4
`
`
`3 Petitioner states HID Global, one of the named Petitioners in this IPR
`proceeding, and HMD Global, the named defendant in the cited litigation,
`“have no relation to one another.” Pet. 2, fn 2.
`4 The ’705 patent is a “[c]ontinuation of application No. 13/572,166, filed on
`Aug. 10, 2012, now Pat. No. 9,269,208.” Ex. 1001 code (63).
`
`4
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`Pet. 1–2.
`Petitioner also informs us that it has filed “two petitions (IPR2022-
`01045 and -01089) challenging the claims of” the related ’208 patent.
`Pet. 1.
`Patent Owner identifies the above matters as related to the present
`IPR proceeding. Paper 5, 2. Patent Owner further identifies the following
`IPR proceedings: IPR2022-00600; IPR2022-01093; and IPR2022-01094.
`Id. at 2–3.
`
`The ’705 Patent
`D.
`The ’705 patent discloses a system “for providing secure access to a
`controlled item.” Ex. 1001, Abstr. The “controlled item” can be, for
`example, the locking mechanism of a door or an electronic lock on a
`personal computer. Id. at 1:43–46.5 The system uses a database of
`“biometric signatures” (id. at 2:32), such as a fingerprint (id. at 7:36) for
`determining authorized access.
`Figure 2 from the ’705 patent is reproduced below.
`
`
`5 Citations are to column:line[s] of the ’705 patent.
`
`5
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`
`
`
`Figure 2 is a functional block diagram of an arrangement for
`providing secure access according to the system disclosed in the ’705 patent.
`Ex. 1001, 5:18–19.
`User 101 makes a request to code entry module 103. Id. at 5:56–57.
`Code entry module 103 includes biometric sensor 121. Id. at 5:57–58. If
`biometric sensor 121 is a fingerprint sensor, for example, then the request
`“typically takes the form of a thumb press” on a sensor panel (not shown) on
`code entry module 103. Id. at 5:60–63. Code entry module 103 then
`“interrogates” an authorized user identity database 105, which contains
`“biometric signatures” for authorized users, to determine if user 101 is an
`authorized user. Id. at 5:64–6:2. If user 101 is an authorized user, code
`entry module 103 sends a signal to “controller/transmitter” 107. Id. at 6:2–4.
`
`6
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`The ’705 patent also discloses that code entry module 103 may be
`activated by providing a succession of finger presses to biometric sensor 121
`included in module 103. Id. at 10:56–58. If these successive presses are of
`the appropriate duration, the appropriate quantity, and are input within a
`predetermined time, controller 107 accepts the presses as potential control
`information and checks the input information against a stored set of legal
`control signals. Id. at 10:58–67.
`If user 101 is an authorized user based on the inputs to code entry
`module 103, controller/transmitter 107 then sends “an access signal,” based
`on a “rolling code,” to controller 109. Ex. 1001, 6:2–9. According to the
`written description, “[t]he rolling code protocol offers non-replay encrypted
`communication.” Id. at 6:9–10. Other secure codes, such as “the
`Bluetooth™ protocol, or the Wi Fi™ protocols” also can be used.
`Id. at 6:32–38.
`If controller 109 determines that the rolling code received is
`“legitimate,” then controller 109 sends a command to “controlled item 111,”
`which, for example “can be a door locking mechanism on a secure door, or
`an electronic key circuit in a personal computer” that is to be accessed by
`user 101. Id. at 6:11–20.
`Code entry module 103 also incorporates at least one mechanism for
`providing feedback to user 101. Id. at 6:24–25. This mechanism can, for
`example, take the form of “one or more Light Emitting Diodes (LEDs) 122,”
`and/or audio transducer 124, which provide visual or audio feedback to the
`user. Id. at 6:25–31.
`In Figure 2, “sub-system 116,” shown on the left of vertical dashed
`line 119, communicates with “sub-system 117,” shown on the right of
`
`7
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`dashed line 119, “via the wireless communication channel” used by access
`signal 108 between controller/transmitter 107 and controller/receiver 109.
`Id. at 6:61–67. As disclosed in the ’705 patent, “[a]lthough typically the
`communication channel uses a wireless transmission medium, there are
`instances where the channel used by the access signal 108 can use a wired
`medium.” Id. at 7:9–14.
`
`Illustrative Claim
`E.
`Among the challenged claims, claims 1, 10, 11, 14, 15, 16, and 17 are
`independent claims.
`Independent claims 1 and 15 are directed to a “system for providing
`secure access to a controlled item.” Ex. 1001, 15:62–63, 18:39–40. These
`claims are identical except for claim 1 using the phrase “configured to,”
`whereas claim 15 uses the phrase “capable of.” For example, claim 1
`includes “a biometric sensor configured to receive a biometric signal” (id.,
`15:66–67 (emphasis added)), whereas claim 15 includes “a biometric sensor
`capable of receiving a biometric signal.” (id., 18:43–44 (emphasis added)).
`This same distinction also applies to the claimed elements of “a transmitter
`sub-system controller,” “a transmitter,” and “a receiver sub-system
`controller.” Compare id., 16:1–23 (claim 1) with id., 18:45–67 (claim 15).
`Independent claims 10 and 16 are directed to a “transmitter sub-
`system for operating in a system for providing secure access to a controlled
`item.” Id. at 17:19–20; 19:1–2. The only distinction between claims 10 and
`16 is the same “capable of”/”configured to” distinction discussed above for
`claims 1 and 15. Compare id., 17:19–39 (claim 10) with id., 19:1–20 (claim
`16).
`
`8
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`Independent claims 11 and 17 are directed to a “method for providing
`secure access to a controlled item.” Id., 17:40–41. Again, the only
`distinction between claims 11 and 17 is the same “capable of”/”configured
`to” distinction discussed above for claims 1 and 15. Compare id., 17:40–67
`(claim 11) with id., 19:21–20:23 (claim 17).
`Independent claim 14 is directed to a “non-transitory computer
`readable storage medium storing a computer program.” Id., 18:18–19.
`Independent claim 1 is illustrative and is reproduced below.
`1. A system for providing secure access to a controlled
`item, the system comprising:
`a memory comprising a database of biometric signatures;
`a transmitter sub-system comprising:
`a biometric sensor configured to receive a biometric
`signal;
`a transmitter sub-system controller configured to match
`the biometric signal against members of the database of
`biometric signatures to thereby output an accessibility attribute;
`and
`
`a transmitter configured to emit a secure access signal
`conveying
`information dependent upon said accessibility
`attribute; and
`a receiver sub-system comprising:
`a receiver sub-system controller configured to:
`receive the transmitted secure access signal; and
`provide conditional access
`to
`the controlled
`dependent upon said information;
`wherein the transmitter sub-system controller is further
`configured to:
`receive a series of entries of the biometric signal, said
`series being characterised according to at least one of the number
`of said entries and a duration of each said entry;
`map said series into an instruction; and
`populate the data base according to the instruction,
`wherein the controlled item is one of: a locking mechanism of a
`
`item
`
`9
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`physical access structure or an electronic lock on an electronic
`computing device.
`Ex. 1001, 15:62–16:23.
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on following three grounds (Pet. 4):
`
`
`
`1
`
`2
`
`3
`
`Claims Challenged
`
`1, 3–5, 9–17
`
`35
`U.S.C. §6
`103
`
`2, 6, 7
`
`8
`
`103
`
`103
`
`References/Basis
`
`Bianco7, Mathiassen8
`
`Bianco, Mathiassen,
`Houvener9
`
`Bianco, Mathiassen,
`Houvener, Richmond10
`
`Petitioner relies on the declaration testimony of Stuart Lipoff
`(Ex. 1005) in support of these grounds. Pet., passim.
`
`
`6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes
`to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent
`application filed before March 16, 2013. Because the application for the
`patent at issue in this proceeding has an effective filing date before
`March 16, 2013, we refer to the pre-AIA version of the statute.
`7 Bianco et al., US 6,256,737 B1, issued July 3, 2001 (Ex. 1003, “Bianco”).
`8 Mathiassen, WO 02/28067 A1, published Apr. 4, 2002 (Ex. 1004,
`“Mathiassen”).
`9 Houvener et al., US 5,790,674, issued Aug. 4, 1998 (Ex. 1013,
`“Houvener”).
`10 Richmond et al., US 6,856,237 B1, issued Feb. 15, 2005 (Ex. 1005,
`“Richmond”).
`
`10
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`II.
`
`REAL PARTY-IN-INTEREST
`SECTION 315(B) TIME BAR
`Patent Owner asserts the Petition should be denied as time-barred
`under 35 U.S.C. § 315(b) because Apple, an argued real party-in-interest or
`privy, was served with a complaint for infringement of the ’705 patent on
`March 1, 2021, more than a year before the Petition was filed. Prelim.
`Resp. 1 (citing CPC Patent Technologies Pty Ltd. v. Apple, Inc., No. 6:21-
`cv-00165 (W.D. Tex., Waco Division) and “EX2001, EX2002”11).
`Under 35 U.S.C. § 315(b), an 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.”
`“The IPR petitioner bears the burden of persuasion to demonstrate that its
`petitions are not time-barred under § 315(b).” Game & Tech. Co. v.
`Wargaming Grp. Ltd., 942 F.3d 1343, 1349 (Fed. Cir. 2019) (citing Worlds
`Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)). Thus, Petitioner
`bears the burden of establishing that no RPI or privy was served with a
`complaint alleging infringement more than one year prior to the May 31,
`2022, filing date (see Paper 3) of the Petition in this proceeding.
`There is no dispute that Apple was served with a complaint alleging
`infringement of the ’705 patent on March 1, 2021. See Ex. 2003, 6
`(Complaint alleging as its “Second Cause of Action” “Infringement of the
`’705 Patent”); Ex. 2004, (Affidavit of Service on Apple on March 1, 2021).
`
`
`11 The citation to Exhibits 2001 and 2002 in this IPR proceeding are
`incorrect citations. The correct citations are Ex. 2003 (complaint in the cited
`Apple litigation) and Ex. 2004 (affidavit of service of the Apple complaint).
`
`11
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`In Power Integrations, Inc. v. Semiconductor Components Industries,
`LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019), the Federal Circuit stated,
`[t]he Board’s decision under § 315(b) is whether to institute or
`not. The condition precedent for this decision is whether a time-
`barred party (a party that has been served with a complaint
`alleging infringement of the patent more than one year before the
`IPR was filed) is the petitioner, real party in interest, or privy of
`the petitioner.
`There is no dispute that Apple was served with a complaint for infringing the
`’705 patent on March 1, 2021. The dispositive issue before us is whether
`Apple is an RPI or privy with the Petitioners.
`RPI Status
`A.
`Section 315(b) “is unambiguous: Congress intended that the term ‘real
`party in interest’ have its expansive common-law meaning.” Applications in
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018)
`(hereinafter “AIT”). “Determining whether a non-party is a ‘real party in
`interest’ demands a flexible approach that takes into account both equitable
`and practical considerations, with an eye toward determining whether the
`non-party is a clear beneficiary that has a preexisting, established
`relationship with the petitioner.” Id. 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, 926 F.3d at 1315. The Federal Circuit has determined “that
`Congress intended to adopt common law principles to govern the scope of
`the section 315(b) one-year bar.” Id. The Federal Circuited therefore looks
`“to common law preclusion principles for guidance.” Id.
`Whether a party who is not a named participant in a given proceeding
`nonetheless constitutes a “real party-in-interest” or “privy” to that
`
`12
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`proceeding “is a highly fact-dependent question.” TPG, 13 (citing Taylor v.
`Sturgell, 553 U.S. 880 (2008) (summarizing common law preclusion
`principles)). “[A]t a general level, the ‘real party-in-interest’ is the party that
`desires review of the patent.” TPG at 14. Thus, the “real party-in-interest”
`may be the petitioner itself, and/or it may be the party or parties “at whose
`behest the petition has been filed.” Id; see AIT, 897 F.3d at 1351
`(recognizing the “fact-dependent” nature of the RPI inquiry, and explaining
`that the two questions lying at its heart are whether a non-party “desires
`review of the patent” and whether a petition has been filed at a nonparty’s
`“behest”). A common meaning of “behest” is “because someone has
`ordered or requested it.” See Ex. 3002.
`In Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018 (Fed. Cir. 2021),
`the Federal Circuit stated that:
`[Determining whether a party is a RPI] has no bright-line test—
`relevant considerations, however, may include, “whether a
`[ ] party exercises [or could exercise] control over a petitioner’s
`participation in a proceeding, or whether a [ ] party is funding the
`proceeding or directing the proceeding.”
`Id. at 1028 (emphasis added) (quoting AIT, 897 F.3d at 1342, which cited
`“Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14,
`2012)”); see also TPG, 16 (“A common consideration is whether the non-
`party exercised or could have exercised control over a party’s participation
`in a proceeding. The concept of control generally means that ‘it should be
`enough that the nonparty has the actual measure of control or opportunity to
`control that might reasonably be expected between two formal coparties.’”
`(citing 18A CHARLES ALAN WRIGHT, ARTHUR R. MILLER &
`
`13
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`EDWARD H. COOPER, FEDERAL PRACTICE & PROCEDURE § 4451
`(2d ed. 2011) (hereinafter cited generally as “WRIGHT & MILLER”)).
`Thus, factors such as “control” and “funding” clearly are relevant.
`Consistent with Uniloc 2017, and as further explained in the Trial
`Practice Guide, “[c]ourts and commentators agree . . . that there is no
`‘bright-line test’ for determining the necessary quantity or degree of
`participation to qualify as a ‘real party-in-interest’ or ‘privy’ based on the
`control concept.” TPG at 16 (emphasis added) (citing Gonzalez v. Banco
`Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994); WRIGHT &MILLER § 4451
`(“The measure of control by a nonparty that justifies preclusion cannot be
`defined rigidly.”)).
`As stated in Gonzalez, the evidence as a whole must establish that
`“the nonparty possessed effective control over a party’s conduct . . . as
`measured from a practical, as opposed to a purely theoretical, standpoint.”
`Gonzalez, 27 F.3d at 759 (emphases added). Theoretical, hypothetical, or
`speculative assertions about effective control, unsupported by evidence, are
`neither probative nor persuasive.
`Additional relevant factors include: the non-party’s relationship with
`the petitioner; the non-party’s relationship to the petition itself, including the
`nature and/or degree of involvement in the filing; and the nature of the entity
`filing the petition. TPG at 17–18. Generally, a party does not become a
`“real party-in-interest” merely through association with another party in an
`unrelated endeavor. Id. at 17. A party also is not considered a real party-in-
`interest in an inter partes review solely because it is a joint defendant with a
`petitioner in a patent infringement suit or is part of a joint defense group
`with a petitioner in the suit. Id.
`
`14
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`Patent Owner takes a different view of the criteria to establish status
`as a real party-in-interest. According to Patent Owner, the “[k]ey to the RPI
`analysis is whether Apple and Petitioners have a structured, preexisting
`business relationship and whether Apple would receive more than a merely
`generalized benefit if trial is instituted.” Prelim. Sur-reply 1 (citing AIT, 897
`F.3d at 1351). We address this contention below.
`Apple’s Prior IPR Petition
`1.
`As noted above in Section I.C (Related Matters), Apple timely filed
`its own petition, IPR2022-00602 (the ’602 Petition), challenging some, but
`not all, claims, of the ’705 patent. See Apple, Inc. v. CPC Patent
`Technologies, PTY, LTD., IPR2022-00602, Paper 1 (PTAB February 23,
`2022) (the “’602 Apple petition”). The ’602 Apple petition challenges
`claims 1, 4, 6, 10–12, and 14–17 based on three references, Mathiassen,
`McKeeth, and Anderson. Id. The Petition now before us challenges all 17
`claims of the ’705 patent based on various combinations of four references,
`Bianco, Mathiassen, Houvener, and Richmond. Pet. 4. Mathiassen is the
`only reference common to both the ’602 Apple petition and the Petition in
`the case now before us. In the ’602 Apple petition, the Board instituted trial
`on all asserted grounds and all asserted claims. Apple, IPR2022-00602,
`Paper 11 (PTAB Sep. 28, 2022). The instituted proceeding based on the
`Apple ’602 petition is still pending.
`In Unified Patents v. Uniloc USA, Inc. et al, IPR2018-00199, Paper 33
`(PTAB May 31, 2019), the Board determined that the fact that Apple, also
`asserted to be an unnamed RPI in that case, filed its own similar petition
`around the same time as the petitioner in that case “does not suggest Apple
`is an unnamed RPI. To the contrary, it suggests that Apple did not need
`
`15
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`Petitioner to file this Petition on its behalf, and chose to file its own similar
`petition, giving Apple control over its own proceeding.” Unified Patents,
`IPR2018-00199, Paper 33 at 9. Based on the record before us, a similar
`determination can be made here. The fact that Apple filed the ’602 Apple
`petition on February, 23, 2022, about three months before the Petition in the
`case before us was filed, suggests that Apple did not need Petitioner to file
`the Petition in this case on its behalf, because Apple had previously filed its
`own similar petition, giving Apple control over its own proceeding.
`Apple’s Relationship to Petitioner
`2.
`There is no dispute that Apple has some relationship with Petitioner.
`Petitioner filed a Declaratory Judgment complaint against “CPC Patent
`Technologies Pty. Ltd.” (Patent Owner in the proceeding before us) and
`“Charter Pacific Corporation Ltd.” (collectively referred to in the complaint
`as “Charter Pacific”). Ex. 2007 ¶ 1. In the Declaratory Judgment complaint,
`Petitioner states “Charter Pacific is also engaged in an aggressive litigation
`campaign that includes Apple Inc. (“Apple”), a business partner of the
`ASSA ABLOY Entities.” Id. ¶ 30 (emphasis added); see also, e.g.,
`id. ¶¶ 21, 43, 98–106 (referring to products sold by Petitioner to Apple).
`The business relationship between Apple and Petitioner is that
`Petitioner, or one of the named entities collectively referred to as Petitioner,
`makes products that interface with Apple products and may be sold on
`Apple’s website. For example, ASSA ABLOY Residential Group, Inc., a
`named entity included as a Petitioner in this proceeding, makes and sells
`security locks under the brand name “Yale.” See Ex. 2007 ¶¶ 53–73
`(discussing the infringement allegation against “Yale Smart Locks”);
`Ex. 2027 (screen shots from Apple’s website concerning the “Yale Assure
`
`16
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`Lock SL Touchscreen Deadbolt”). As described, in Exhibit 2007, the Yale
`Assure Lock uses a software application (“App”) on one’s mobile phone,
`here on an iPhone sold by Apple, to lock and unlock doors. The App is
`developed by Petitioner, or one of its business partners, and distributed to
`iPhone users through the Apple App store.
`Petitioner’s Assertions
`a)
`Petitioner asserts “Petitioners and Apple have a standard business
`relationship like that of over 34 million application developers on Apple’s
`platform (EX-1023 at 6-7) and hundreds of MFi Program12 participants
`(collectively its business partners).” Prelim. Reply. 1 (citing Ex. 1024).
`Essentially, Petitioner sells its products with and through Apple, and creates
`software applications that allows those products to interface with Apple’s
`iPhone and other Apple products.
`Our rules provide that “[t]he parties may agree to additional discovery
`between themselves.” 37 C.F.R. § 42.51(b)(2)(i). Our rules do not provide
`for interrogatories between the parties. Apparently, Petitioner agreed to
`
`
`12 The acronym “MFi” refers to “Made for iPhone/iPod/iPad.”
`See Ex. 3003. Apple’s Developer Program License Agreement (Ex. 2009)
`defines “MFi Program” to mean “a separate Apple program that offers
`developers, among other things, a license to incorporate or use certain Apple
`technology in or with hardware accessories or devices for purposes of
`interfacing, communicating or otherwise interoperating with or controlling
`select Apple-branded products.” (Ex. 2009, 6); see also Ex. 2017 (explaining
`how the MFi program works); Ex. 3004 (summarizing who needs to join the
`MFi program, and who does not need to join); Ex. 3005 (referring to
`undefined “MFi certification requirements”); Ex. 1022, 6 (stating that “at
`least one exemplary product from the August Smart Lock family of
`products; and at least one exemplary product from the Yale Assure Lock
`family of products” were “submitted to Apple for certification purposes”).
`
`17
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`respond to interrogatories from Patent Owner. Petitioner asserts that its
`“verified responses to CPC’s Interrogatories confirm that Apple never
`provided any direction, control, or financing in this proceeding.” Prelim.
`Reply 2 (citing Ex. 1022, responses to Interrogatories Nos. 3, 4).
`Exhibit 1022 contains responses to five interrogatories posed by
`Patent Owner to Petitioner in this IPR proceeding and its related
`proceedings. Ex. 1022, 1 (“These answers are made solely for the purpose
`of IPR2022-01006, IPR2022-01045, IPR2022-01089, IPR2022-01093, and
`IPR2022-01094”).
`In the interrogatories, Petitioner states:
`1. “Petitioners do not have any insurance policy or policies that name
`Apple as an additional insured” (id. at 7);
`2. “Petitioners have not had any communications with Apple, directly
`or through counsel, . . . other than communications that relate
`solely to Petitioners seeking Apple’s permission to produce
`documents in response to CPC’s discovery request” ((id. at 8);
`3. “Petitioners and other ASSA ABLOY entities have not had any
`communications with Apple, directly or through counsel, regarding
`the validity or invalidity of the . . . ’705 Patent” (id. at 10); and
`4. “There have been no communications between Petitioners and
`Apple, directly or through counsel, relating to indemnification or
`obligation to indemnify based on assertion of . . . U.S. Patent No.
`9,665,705) (id. at 11–12).
`Additionally, Petitioner states in its interrogatory responses:
`• Apple had no role whatsoever in Petitioners’ IPRs.
`
`18
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`• Petitioners never informed Apple that the IPR petitions were
`being prepared, never communicated with Apple regarding the
`substance of the IPR petitions, and never told Apple when or why
`the IPR petitions would be filed.
`• Petitioners provide all direction to their outside counsel
`regarding the IPRs and the district court litigation between
`Petitioners and Apple [sic].[13]
`• Apple previously filed its own IPR petitions regarding the
`subject patents (IPR2022-00600, IPR2022-00601, and IPR2022-
`00602). Petitioners likewise had no involvement whatsoever in
`Apple’s IPR petitions. Petitioners never knew that Apple’s IPR
`petitions were being prepared or that they would be filed.
`• Petitioners did not file any of Petitioners’ IPR petitions at
`Apple’s behest. Apple never requested that Petitioners file any
`IPR petitions challenging any of the patents-at-issue.
`• Apple has never had any control or say whatsoever in
`Petitioners’ IPR petitions.
`• Apple has not contributed financially or in any other manner to
`any of Petitioners’ IPR petitions.
`Ex. 1022, 8–9.
`Based on the record before us, there is no evidence that refutes or
`contradicts these interrogatory responses. The record before us contains no
`evidence of communications between Petitioner and Apple regarding this
`proceeding or the preparation of the Petition filed in this proceeding.
`
`
`13 This appears to be a misstatement. We have not been informed of any
`litigation between “Petitioners and Apple.” The only litigation cited by the
`parties involves Petitioner and Patent Owner, Patent Owner and Apple, or
`Patent Owner and HMD Global. See Section I.C (“Related Matters”) of this
`Decision.
`
`19
`
`

`

`IPR2022-01006
`Patent 9,665,705 B2
`
`Patent Owner’s Assertions
`b)
`Patent Owner asserts essentially two factual reasons to support its
`argument that Apple should be named a real party-in-interest in this
`proceeding:
`(1) Petitioner is an App developer for Apple and entered into Apple’s
`standard “Apple Developer Program License Agreement” (the “Developer
`Agreement”) (Prelim. Resp. 12–14, 22–29 (citing Ex. 2009)); and
`(2) Petitioner participates in Apple’s MFi certification program for
`non-Apple products made to be compatible with Apple products (Prelim.
`Resp. 29–31).
`Patent Owner states that “the Apple [Developer] Agreement appears
`to be the primary agreement governing the relationship between Apple and
`Petitioners with respect to at least the Yale Access App and the August
`App.” Prelim. Resp. 22. Patent Owner relies on several specific clauses in
`the Developer Agreement to establish the asserted RPI relationship,
`including: (1) representations and warranties of noninfringement (id. at 24–
`26); indemnification clauses (id. at 26–29); product inspection and insurance
`coverage clauses (id. at 29–31); and appointment of Apple as an agent for
`distribution of Petitioner’s “software on the Apple App Store;” (id. at 31).
`Patent O