Trials@uspto.gov
`571-272-7822
`
`Paper 21
`Date: January 3, 2023
`
`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.
`
`IPR2022-01045 and IPR2022-01089
`Patent 9,269,208 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
`
`
`DECISION1
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`1 This Order addresses the two proceedings listed above, which raise the
`same issues for different claims of the same patent. We issue this one
`Decision, which will be filed in each proceeding. Unless specifically
`authorized by the Board, the parties are not authorized to use this style of
`filing.
`
`
`
`
`
`
`
`
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 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”2) filed two
`Petitions, collectively requesting inter partes review of claims 1–13
`(the “challenged claims”) of U.S. Patent No. 9,269,208 B2 (Ex. 1007 in each
`proceeding, “the ’208 patent”). Paper 3, 33 (“Pet.”). CPC Patent
`Technologies Pty Ltd. (“Patent Owner”) filed a Preliminary Response to
`each Petition. Paper 8 (“Prelim. Resp.”). With our authorization to address
`Patent Owner’s arguments that the Petition is time-barred under 35 USC
`§ 315(b) (see Paper 10), Petitioner filed a Reply (Paper 14
`(“Prelim. Reply”)); and Patent Owner filed a Sur-Reply (Paper 18
`(“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
`
`2 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.”).
`3 We cite to the record in IPR2022-01045, unless a specific citation to each
`Petition is required for clarity. Similar documents, generally having the
`identical exhibit number, were filed in each of the two proceedings to which
`this Decision applies.
`
`2
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`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
`‘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”).4
`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
`in each of the ’045 and ’089 proceedings is unpatentable. Accordingly, we
`institute an inter partes review of all challenged claims and on all grounds
`asserted in the ’045 and ’089 Petitions.
`
`4 The TPG is available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`
`3
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`
`Two Petitions
`B.
`We first address Petitioner’s filing two petitions challenging a single
`patent.
`The Petition in IPR2022-01045 (“the ’045 petition”) challenges
`claims 1–9 of the ’208 patent, directed to a “system for providing secure
`access to a controlled item” (claims 1–8) or “a transmitter subsystem” for
`such a system (claim 9). The Petition in IPR2022-01089 (“the ’089
`petition”) challenges claims 10–13 of the ’208 patent, directed to a “method
`for providing secure access to a controlled item in a system.”
`The Board recognizes that there may be circumstances in which more
`than one petition may be necessary, including, for example, when the patent
`owner has asserted a large number of claims in litigation or when there is a
`dispute about priority date requiring arguments under multiple prior art
`references. Patent Trial and Appeal Board Consolidated Trial Practice
`Guide, 59 (Nov. 2019) (“TPG”).5
`Petitioner asserts that two petitions “are necessary to address each of
`the claims and their lengthy claim recitations, including numerous means-
`plus-function limitations.” Paper 2 (Petitioners’ Ranking and Explanation
`for Two Petitions), 2 (emphasis deleted) (“Pet. Ranking”).6 Petitioner also
`
`5 The TPG is available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`6 The TPG provides that if a petitioner files two or more petitions
`challenging the same patent, the petitioner should identify “a ranking of the
`petitions” and provide a succinct explanation of why multiple petitions are
`necessary. TPG, 59–60. If the petitioner provides this information, the
`patent owner could, in its preliminary responses or in a separate paper filed
`with the preliminary responses, respond to the petitioner. Id. at 60. Here,
`Patent Owner did not respond to Petitioner’s ranking and explanation.
`
`4
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`asserts “[b]oth petitions are necessary because each challenges distinct
`independent claims and their dependent claims—an approach that was
`driven by word limits.” Pet. Ranking 4 (citing Intel Corp. v. VLSI
`Technology LLC, IPR2019-01199, Paper 19 at 10 (PTAB Feb. 6, 2020)
`(declining to exercise discretion to deny petitions where “each petition is
`directed to a different independent claim.”); Microsoft Corp. v. IPA Techs.
`Inc., IPR2019-00810, Paper 12 at 14 (PTAB Oct. 16, 2019) (“Faced with
`word count limitations and a large number of challenged claims, Petitioner’s
`decision to divide its analysis of those claims among a number of petitions
`appears reasonable.”)). We also note that the identical references are relied
`on in both Petitions.
`Based on the specific facts of these proceedings, we agree with
`Petitioner and exercise our discretion to allow Petitioner to proceed with
`both the ’045 petition and the ’089 petition.
`Additionally, Patent Owner’s Preliminary Responses and Sur-replies
`in both the ’045 and ’089 Petitions raise identical defenses based on an
`asserted statutory bar to the Petitions under 35 U.S.C. § 315(b).
`Patent Owner does not respond to the merits of Petitioner’s
`unpatentability assertions in either the ’045 or ’089 Petitions.
`Based on the unique factual posture of these proceedings, discussed
`above, and considering the efficiency to the Board and parties of discussing
`the same issues and same evidence for the same patent in a single decision,
`we exercise our discretion to issue a single Decision addressing both the
`’045 petition and the ’089 petition.
`
`5
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`
`Real Parties-in-Interest
`C.
`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,
`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 6, 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 ’208
`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
`D.
`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,7
`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
`
`
`7 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.
`
`6
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`IPR2022-00602 and IPR2022-00601, identified as pending IPR
`4)
`challenges filed by Apple against, respectively, the U.S. Patent No.
`9,665,705 (the “’705 patent”) and related the ’208 patent.8
`Pet. 1–2.
`Patent Owner identifies the above matters as related to the present
`IPR proceeding. Paper 6, 2. Patent Owner further identifies the following
`IPR proceedings: IPR2022-00601; IPR2022-01093; and IPR2022-01094.
`Id. at 2–3.
`
`The ’208 Patent
`E.
`The ’208 patent discloses a system “for providing secure access to a
`controlled item.” Ex. 1007, Abstr. The system uses a database of “biometric
`signatures” (id.), such as a fingerprint (Ex. 1007, 1:29–30) for determining
`authorized access.
`
`
`8 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).
`
`7
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`Figure 2 from the ’208 patent is reproduced below.
`
`
`
`Figure 2 is a functional block diagram of an arrangement for
`providing secure access according to the system disclosed in the ’208 patent.
`Ex. 1007, 5:15–16.
`User 101 makes a request to code entry module 103. Code entry
`module 103 includes biometric sensor 121. Id. at 5:52–53. 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 5:56–59. 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 5:60–65. If user 101 is an authorized user, code entry
`module 103 sends a signal to “controller/transmitter” 107. Id. at 5:65–67.
`
`8
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`The ’208 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 10:45–47. 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 10:47–67.
`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. 1007, 6:1–5. According to the
`written description, “[t]he rolling code protocol offers non-replay encrypted
`communication.” Id. at 6:5–6. Other secure codes, such as “the
`Bluetooth™ protocol, or the Wi Fi™ protocols” also can be used. Id. at
`6:28–34.
`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 6:7–16.
`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.
`Code entry module 103 also incorporates at least one mechanism for
`providing feedback to user 101. Id. at 6:20–21. This mechanism can, for
`
`9
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`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 6:22–27.
`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
`dashed line 119, “via the wireless communication channel” used by access
`signal 108 between controller/transmitter 107 and controller/receiver 109.
`Id. at 6:62–65. As disclosed in the ’208 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 7:3–8.
`
`Illustrative Claim
`F.
`Among the challenged claims, claims 1, 9, and 10 are independent
`claims. Independent claim 1 is directed to a “system for providing secure
`access to a controlled item.” Ex. 1007, 15:42–16:3. Independent claim 9 is
`directed to a “transmitter sub-system for operating in a system for providing
`secure access to a controlled item.” Id. at 16:64–17:18. Independent claim
`10 is directed to a “method for providing secure access to a controlled item.”
`Id. at 17:19–18:13.
`Independent claim 1 is illustrative and is reproduced below.
`1. A system for providing secure access to a controlled
`item, the system comprising:
`a database of biometric signatures;
`a transmitter sub-system comprising:
`a biometric sensor for receiving a biometric signal;
`means for matching the biometric signal against members
`of the database of biometric signatures to thereby output an
`accessibility attribute; and
`
`10
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`means for emitting a secure access signal conveying
`information dependent upon said accessibility attribute; and
`a receiver sub-system comprising:
`means for receiving the transmitted secure access signal;
`
`and
`
`means for providing conditional access to the controlled
`item dependent upon said information,
`wherein the transmitter sub-system further comprises
`means for populating the data base of biometric signatures, the
`population means comprising:
`means for receiving 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;
`means for mapping said series into an instruction; and
`means for populating the data base according to the
`instruction,
`wherein the controlled item is one of: a locking
`mechanism of a physical access structure or an electronic lock on
`an electronic computing device.
`Ex. 1007, 15:42–16:3.
`Prior Art and Asserted Grounds
`G.
`Petitioner asserts that the challenged claims are unpatentable based on
`following three grounds (Pet. 4):
`
`11
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`
`
`
`Claims Challenged
`
`35
`U.S.C. §9
`
`1
`
`1, 3–5, 9, 10–1310
`
`103
`
`2
`
`2, 6, 7
`
`3
`
`8
`
`103
`
`103
`
`References/Basis
`
`Bianco11, Mathiassen-
`06712 (1, 3–5, 9 in ’045
`petition; 10–13 in ’089
`petition)
`
`Bianco, Mathiassen-067,
`Houvener13 (’045
`petition)
`
`Bianco, Mathiassen-067,
`Houvener, Richmond14
`(’045 petition)
`
`Petitioner relies on the declaration testimony of Stuart Lipoff
`(Ex. 1005) in support of these grounds. Pet., passim.
`
`
`9 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.
`10 IPR 2022-01089 Petition, 4.
`11 Bianco et al., US 6,256,737 B1, issued July 3, 2001 (Ex. 1003, “Bianco”).
`12 Mathiassen, WO 02/28067 A1, published Apr. 4, 2002 (Ex. 1004,
`“Mathiassen-067”).
`13 Houvener et al., US 5,790,674, issued Aug. 4, 1998 (Ex. 1013,
`“Houvener”).
`14 Richmond et al., US 6,856,237 B1, issued Feb. 15, 2005 (Ex. 1005,
`“Richmond”).
`
`12
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 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 ’208 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”15).
`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 ’208 patent on March 1, 2021. See Ex. 2003, 5
`(Complaint alleging as its “First Cause of Action” “Infringement of the ’208
`Patent”); Ex. 2004, (Affidavit of Service on Apple on March 1, 2021).
`
`
`15 Patent Owner’s citations to Exhibits 2001 and 2002 are incorrect. The
`correct citations are Ex. 2003 (complaint in the cited Apple litigation) and
`Ex. 2004 (affidavit of service of the Apple complaint).
`
`13
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`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 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
`’208 patent on March 1, 2021. The dispositive issue before us is whether
`Apple is an RPI or privy with Petitioner.
`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 Circuit 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
`
`14
`
`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 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 non-party’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 an 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 &
`
`15
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`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 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.
`
`16
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`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 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.D (Related Matters), Apple timely filed
`its own petition, IPR2022-00601 challenging some, but not all, claims, of
`the ’208 patent. See Apple, Inc. v. CPC Patent Technologies, PTY, LTD.,
`IPR2022-00601, Paper 1 (PTAB Feb. 23, 2022) (the “’601 Apple petition”).
`The ’601 Apple petition challenges claims 1, 3–7, 9–11, and 13 of the ’208
`patent based on three references, Mathiassen-113, McKeeth, and Anderson.
`Id. The Petitions now before us collectively challenge claims 1–9 and 10–
`1316 of the ’208 patent based on various combinations of four references,
`Bianco, Mathiassen-067, Houvener, and Richmond. Pet. 4. In the ’601
`Apple petition, the Board instituted trial on all asserted grounds and all
`asserted claims. Apple, IPR2022-00601, Paper 11 (PTAB Sept. 28, 2022).
`The instituted proceeding based on the Apple ’601 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
`
`16 As explained above, the ’045 petition challenges claims 1–9, and the ’089
`petition challenges claims 10–13.
`
`17
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`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 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 ’601 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
`
`18
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`

`

`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 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 Program17 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
`specifically for interrogatories between the parties. Apparently, Petitioner
`
`
`17 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”).
`
`19
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`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`agreed to 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
`co