Trials@uspto.gov
`571-272-7822
`
`Paper 42
`Entered: December 20, 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.
`
`
`JUDGMENT1
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`1 This Judgment addresses the two proceedings listed above, which raise the
`same issues for different claims of the same patent. We issue this one
`Judgment, 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
`
`INTRODUCTION
`I.
`A. Background and Summary
`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 U.S.C.
`§ 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 entered a consolidated Decision allowing Petitioner to proceed
`with the two distinct Petitions and granting institution of an inter partes
`review of claims 1–13 based on all grounds asserted in the two Petitions.
`
`
`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
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`Patent 9,269,208 B2
`Paper 21 (the “Decision to Institute”). Our Decision to Institute addressed
`the issue of whether the Petition was time-barred, and determined on the
`record at that time that there was no time bar. Paper 21 at 13–37. We also
`addressed the issue of patentability asserted in the Petition.
`Patent Owner submitted a Response to the Decision to Institute.
`Paper 26 (“Patent Owner Response” or “PO Resp.”).
`Petitioner submitted a Reply. Paper 30 (“Reply”).
`Patent Owner submitted a Sur-reply. Paper 36 (“Sur-reply”).
`Petitioner submitted twenty-nine exhibits. See Exs. 1001–1015,
`1017–10304 (there is no exhibit numbered 1016); see also Paper 39
`(Petitioner’s Updated Exhibit List). Petitioner relies on the Declaration
`testimony of Stuart Lipoff. See Exs. 1005, 1029.
`Patent Owner submitted thirty-eight exhibits. See Exs. 2001–2018,
`2023–2029, and 2031–20415 (there are no exhibits numbered 2019–2022 or
`2030; Exhibit 2005 includes Parts 1, 2, and 3); see also Paper 40 (Patent
`Owner’s Updated Exhibit List)6. Patent Owner relies on the Declaration
`testimony of Samuel Russ, Ph.D. See Exs. 2031, 2032.
`A joint hearing was held September 28, 2023. See Paper 41
`(“Transcript” or “Tr.”).
`
`
`4 Exhibit 1030 is a demonstrative exhibit used at the final hearing. It is not
`an evidentiary exhibit. See PTAB Consolidated Trial Practice Guide, 84
`(Nov. 2019 (“CTPG”) (“Demonstrative exhibits used at the final hearing are
`aids to oral argument and not evidence.”).
`5 Exhibit 2041 is a demonstrative exhibit used at the final hearing. It is not
`an evidentiary exhibit. See id.
`6 Exhibits 2029 and 2030 on Patent Owner’s Exhibit list are inconsistent
`with the document filings at the Board. See Ex. 3009.
`
`3
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`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner has the burden of proving unpatentability of a claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e).
`Based on the findings and conclusions below, we determine that
`Petitioner has not established by a preponderance of the evidence that claims
`1–13 are unpatentable. We also determine that the Petition is not barred by
`35 U.S.C. § 315(b).
`
`B. Real Parties-in-Interest
`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.
`We note here that Patent Owner asserts that the Petition is time-barred
`under 35 U.S.C. § 315(b) because, as asserted by Patent Owner, Apple, Inc.
`(“Apple”) is a real party-in-interest (“RPI”) and/or privy of one or more of
`the individual companies that collectively comprise the Petitioner, and
`because 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., PO Resp. 4, 46–64 (asserting that the Petition is time-barred under
`35 U.S.C. § 315(b)). This argument would impact the underlying
`proceeding if we were to determine that Apple is a real party-in-interest or
`privy with Petitioner. See Unified Patents, LLC v. MemoryWeb, LLC,
`
`4
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`IPR2022-01045
`IPR2022-01089
`Patent 9,269,208 B2
`IPR2021-01413, Paper 76, 5 (PTAB May 22, 2023) (Decision granting
`Director review and (1) vacating the Board’s real party-in-interest
`determination in the Final Written Decision, and (2) vacating the Board’s
`Order Identifying the asserted real party-in-interest). As stated in Unified v.
`MemoryWeb,
`[t]he Board can and should make a determination of the real
`parties in-interest or privity in any proceeding in which that
`determination may impact the underlying proceeding, for
`example, but not limited to, a time bar under 35 U.S.C. § 315(b)
`or an estoppel under 35 U.S.C. § 315(e) that might apply.
`Id. That is the situation here. Patent Owner asserts there is a time bar.
`See, e.g., PO Resp. 46–64. Thus, following the guidance in Unified v.
`MemoryWeb, we consider in Section II whether Apple is a real party-in-
`interest, or privy, in this proceeding.
`C. Related Matters
`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, n.2.
`
`5
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`

`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 the ’208 patent.8
`Pet. 2–3.
`Patent Owner also identifies the above matters as related to
`the present IPR proceeding. Paper 6, 2–3. Patent Owner further identifies
`the following IPR proceedings: IPR2022-00600; IPR2022-01006;
`IPR2022-01093; and IPR2022-01094. Id.
`The ’208 Patent
`D.
`We make the following findings regarding the disclosure of the ’208
`patent.
`The ’208 patent discloses a system “for providing secure access to a
`controlled item.” Ex. 1007, Abstr. As stated in the disclosure, the system
`can also be used “to provide authorised access to lighting systems, building
`control devices, exterior or remote devices such as air compressors and so
`on.” Id. at 15:38–40. “The concept of ‘secure access’ is thus extendible
`beyond mere access to restricted physical areas.” Id. at 15:36–38. The
`disclosed system uses a database of “biometric signatures” (id.), such as a
`fingerprint (Ex. 1007, 1:29–30) for determining authorized access.
`Figure 2 from the ’208 patent is reproduced on the following page.
`
`
`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).
`
`6
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`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.
`As described in the written description of the ’208 patent, and as
`illustrated generally in Figure 2, 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. 9 “Other physical
`
`
`9 See Ex. 1007, 10:35–38 (“Although the present description refers to
`‘Users’, in fact it is ‘fingers’ which are the operative entities in system
`operation when the biometric sensor 121 (see FIG. 2) is a fingerprint
`
`7
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`Patent 9,269,208 B2
`attributes that can be used to provide biometric signals include voice, retinal
`or iris pattern, face pattern, [and] palm configuration.” Ex. 1007, 1:30–32;
`see also id. at 16:25–27 (claim 4 stating “the biometric sensor is responsive
`to one of voice, retinal pattern, iris pattern, face pattern, and palm
`configuration”).
`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.
`Database 105 of authorized users is prepared by an “administrator.”
`Id. at 10:38–42 (“The first user of the code entry module 103 . . . is
`automatically categorised10 as an administrator.”). This “first administrator”
`can direct the system 100 to either accept further administrators, or
`alternatively, to accept further “ordinary users.” Id. at 10:28–34.11
`
`
`sensor.”) (emphasis added). Thus, it is clear that biometric sensor 121 is not
`limited to a fingerprint sensor.
`10 The Specification uses the British spelling, which we also use when
`quoting the Specification.
`11 The use of the phrase “ordinary users” at the cited portion of the written
`description (column 10, line 34) is somewhat misleading, and should, more
`accurately, refer to “authorized users.” The written description states that
`“[t]he disclosed remote entry system can accommodate at least three classes
`of user, namely administrators, (ordinary) users, and duress users.”
`Ex. 1001, 10:24–26; see also id. at 12:67–13:3 (stating “It is noted that all
`signatures stored in the database are tagged as belonging to one or more of
`the classes of administrator, ordinary user, and duress users.”). A “duress”
`category signature indicates the user “is in a coercive situation.” Id. at
`11:32–37.
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`8
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`Patent 9,269,208 B2
`The process for enrolling authorized users is shown generally in
`Figure 8 and described in the related written description. See Ex. 1007,
`12:39–13:3 (describing enrollment process 800). In order to add authorized
`biometric signatures of additional users to database 105, the administrator
`must set the system using “control information” or a “legal control signal.”
`Id. at 10:45–56. When biometric sensor 121 is a fingerprint sensor, the legal
`control signal for adding new users may be activated by the administrator
`using a succession of finger presses to biometric sensor 121. Id. at 10:49–
`56. 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. “In one
`arrangement, the control information is encoded by either or both (a) the
`number of finger presses and (b) the relative duration of the finger presses.”
`Id. at 10:49–52 (emphasis added).
`An example of this type of “control information” or “legal control
`signal” is “dit, dit, dit, dah,” where “dit” is a finger press of one second’s
`duration . . . and “dah” is a finger press of two second’s duration.”
`Id. at 10:57–63.12
`After all authorized users have been added to database 105, in
`operation, the disclosed system and method compare biometric input signal
`102 to database 105 of authorized biometric signatures to determine if user
`101 is an authorized user. Id. at 5:60–65 (“Thus for example if the request
`
`
`12 We have not been directed to any persuasive evidence of how the
`enrollment process is activated by an administrator when the biometric
`sensor is something other than a fingerprint sensor.
`
`9
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`Patent 9,269,208 B2
`102 is the thumb press on the biometric sensor panel 121 [producing a
`thumbprint] then the user database 105 contains biometric signatures
`[i.e., thumbprints] for authorised users against which the request 102 can be
`authenticated.”).
`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.
`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.
`
`Illustrative Claim
`E.
`Among the challenged claims in the ’045 Petition and the ’089
`Petition, 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;
`
`10
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`IPR2022-01089
`Patent 9,269,208 B2
`means for matching the biometric signal against members
`of the database of biometric signatures to thereby output an
`accessibility attribute; and
`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
`F.
`Petitioner asserts that the challenged claims are unpatentable based on
`following three grounds (Pet. 4):
`
`11
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`Patent 9,269,208 B2
`
`
`
`Claim(s) Challenged
`
`35
`U.S.C. §13
`
`1
`
`1, 3–5, 9, 10–1314
`
`103
`
`2
`
`2, 6, 7
`
`3
`
`8
`
`103
`
`103
`
`References/Bases
`
`Bianco15, Mathiassen-
`06716 (1, 3–5, 9 in ’045
`petition; 10–13 in ’089
`petition)
`Bianco, Mathiassen-067,
`Houvener17 (’045
`petition)
`Bianco, Mathiassen-067,
`Houvener, Richmond18
`(’045 petition)
`
`Petitioner relies on the declaration testimony of Stuart Lipoff
`(Ex. 1005; Ex. 1029) in support of these grounds.
`
`
`13 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.
`14 IPR 2022-01089 Petition, 4.
`15 Bianco et al., US 6,256,737 B1, issued July 3, 2001 (Ex. 1003, “Bianco”).
`16 Mathiassen, WO 02/28067 A1, published Apr. 4, 2002 (Ex. 1004,
`“Mathiassen-067”).
`17 Houvener et al., US 5,790,674, issued Aug. 4, 1998 (Ex. 1013,
`“Houvener”).
`18 Richmond et al., US 6,856,237 B1, issued Feb. 15, 2005 (Ex. 1005,
`“Richmond”).
`
`12
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`Patent 9,269,208 B2
`II. REAL PARTY-IN-INTEREST
`SECTION 315(b) TIME BAR
`We first address whether the Petition is time-barred.
`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 in CPC Patent Technologies Pty Ltd. v.
`Apple, Inc., No. 6:21-cv-00165 (W.D. Tex., Waco Division) for
`infringement of the ’208 patent on March 1, 2021, more than a year before
`the Petition was filed. PO Resp. 4, 46–64. As stated in Section I.B of this
`Decision, we considered Patent Owner’s Section 315(b) defense in our
`Decision to Institute this IPR proceeding. See Paper 21 at 13–37.
`One fundamental omission in Patent Owner’s Response is that Patent
`Owner fails to cite any evidence establishing the date that Apple was served
`with a complaint alleging infringement of the patent. This evidence is in the
`record (see Exs. 2003, 2004), and was discussed in Patent Owner’s
`Preliminary Response (see Prelim. Resp. 1), but was not cited in the
`Response.19 This evidence also was cited and considered in our Decision to
`Institute this proceeding. See Dec. Inst. 13 (“There is no dispute that Apple
`was served with a complaint alleging infringement of the ’208 patent on
`March 1, 2021” (citing Ex. 2003, 5; Ex. 2004).
`In general, the Federal Rules of Evidence apply to this proceeding.
`37 C.F.R. § 42.62(a). Under Rule 201(b)(2) of the Federal Rules of
`
`
`19 Our Scheduling Order in this proceeding states “Patent Owner is
`cautioned that any arguments not raised in the response may be deemed
`waived.” Paper 22 at 9.
`
`13
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`Evidence, we take official notice20 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).
`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.”
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1346 (Fed.
`Cir. 2018) (“AIT”).
`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 June 3, 2022, filing date (see Paper 5) of the Petition in this proceeding.
`RPX v Applications in Internet Time, LLC, IPR2015-01750, Paper 128 at 6–
`7 (PTAB (Oct. 2, 2020) (precedential), (rehearing denied, Paper 142, Dec.4,
`2020) (“RPX”);21 see also Ventex Co., Ltd. v. Columbia Sportswear N. Am.,
`Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential)
`(citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018).
`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-
`
`20 See 37 C.F.R. § 42.62(c) stating that the term “Judicial notice” in the
`Federal Rules of Evidence means “official notice” in the context of an inter
`partes review proceeding.
`21 We cite to the public version of Board’s decision following remand from
`the Federal Circuit in AIT. This same Decision also was entered in the
`related cases IPR2015-01751 and IPR2015-01752.
`
`14
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`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 alleging
`infringement of the ’208 patent on March 1, 2021, which is more than one
`year before the June 3, 2022 filing date (Ex. 2005) of the Petition in this
`proceeding. 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). Thus, the dispositive issue before us under
`Section 315(b) is whether Apple is an RPI or privy with Petitioner.
`The Petitioner Entities
`A.
`Before addressing in detail Petitioner’s relationship with Apple, and to
`put that relationship in its proper context, it is helpful to identify the parties
`that, collectively, are included as Petitioner.
`ASSA ABLOY AB “is the parent company of several entities
`worldwide, that are leaders in the delivery of secure identity solutions for
`millions of customers throughout the world.” Ex. 2007 ¶ 10. ASSA
`ABLOY AB is the ultimate parent company of ASSA ABLOY Inc. Id.
`ASSA ABLOY Inc. is the main holding entity for ASSA ABLOY
`AB’s North and South American assets and is “the immediate parent
`company of Yale, August, HID, and Hospitality.” Id. ¶ 11; see also id. ¶¶ 6–
`9 (providing complete corporate citations for “Yale,” “August,” “HID,” and
`“Hospitality,” each of which is a named entity collectively comprising the
`Petitioner in this IPR proceeding).
`The Petitioner companies provide “identity solutions used in a variety
`of applications, including physical access control, logical access control,
`
`15
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`access card printing and personalization, highly secure government
`identification, and commercial and residential opening solutions.” Id. ¶ 14.
`These products, solutions, and services “are sold through a well-established
`network of OEMs, developers, systems integrators, and distributors
`worldwide.” Id.
`“Yale protects millions of homes and businesses worldwide and is the
`brand behind locks of every design and function in over 125 countries.”
`Id. ¶ 15. “August is the leading provider of smart locks and smart home
`access products and services. August’s products and services give
`customers total control over the front door from a smartphone.” Id. ¶ 16.
`“HID is a worldwide leader in trusted identity solutions. Its products
`range from physical access control products, like ID cards and readers for
`opening doors, to solutions for accessing digital networks, verifying
`transactions, and tracking assets.” Id. ¶ 19.
`“Hospitality similarly provides advanced electronic locking and
`access solutions to hotels, cruise ships, construction, critical infrastructure,
`education, senior care, and multi-family residential industries worldwide.”
`Id. ¶ 20. “HID and Hospitality offer the HID Mobile Access and ASSA
`ABLOY Mobile Access software solutions, respectively. Each allows an
`individual’s mobile device (e.g., smartphone or wearable) to be used to gain
`access to secured doors, gates, networks, services, and more.” Id. ¶ 21.
`Petitioner filed a Declaratory Judgment action against Patent Owner
`and its parent company based on Patent Owner’s written allegations to
`Petitioner that one or more of the Petitioner companies infringe patents
`owned by Patent Owner, including the ’208 patent challenged in this
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`proceeding. Id. ¶¶ 58–73; Count II (“Declaratory Judgment of Non-
`infringement of the ’208 Patent”).
`There also is no dispute that Petitioner and Apple have a sophisticated
`and substantive business relationship. See, e.g., Ex. 2009 (“Apple
`Developer Program License Agreement”). Petitioner supplies products,
`which are locking systems, to Apple, which Apple then sells to consumers.
`Ex. 2027. Also, Apple’s iPhone is one of the smartphone products that can
`be used with Petitioner’s lock products. Id. Thus, Petitioner must design its
`locking products to interact with the iPhone operating system and software.
`Patent Owner asserts that this arrangement makes Apple a real party-in-
`interest and/or a privy with Petitioner. Petitioner, who has the burden of
`persuasion, disagrees.
`As explained below, when considering the entirety of the evidentiary
`record, including evidence relating to the business model and operating
`relationship between Petitioner and Apple, and considering the equitable and
`practical considerations of the relationship between Petitioner and Apple, we
`determine that Apple is not an RPI or a privy of Petitioner.
`We discuss below the evidence and arguments on which the parties
`rely.
`
`B. RPI Status
`Section 315(b) “is unambiguous: Congress intended that the term ‘real
`party in interest’ have its expansive common-law meaning.” AIT, 897 F.3d
`at 1351. “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
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`with the petitioner.” Id. As stated in AIT, “a patent owner dragged into an
`IPR by a petitioner, who necessarily has an interest in canceling the patent
`owner’s claims, should not be forced to defend against later judicial or
`administrative attacks on the same or related grounds by a party that is so
`closely related to the original petitioner as to qualify as a real party in
`interest.” Id. at 1350. The corollary to this principle is that a patent owner
`who sues, or threatens to sue, several independent and distinct entities
`should not be surprised when each mounts an independent and distinct
`defense, whether in a federal court, in a post-grant proceeding in the Patent
`and Trademark Office, or both.
`This concept of avoiding repeated challenges of a patent by distinct,
`but related, parties also is supported in the legislative history of
`Section 315(b). Id.; see also RPX, Paper 128 at 8–9 (concluding that the
`legislative history supports the concepts that “the RPI and privity
`requirements were designed to avoid harassment [of patent owners] and
`preclude parties from getting ‘two bites at the apple’ by allowing such
`parties to avoid either the estoppel provision or the time-bar”).
`“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. We therefore look “to common law
`preclusion principles for guidance” to determine whether a real party-in-
`interest or privity relationship exists. Id. (emphasis added).
`Whether a party who is not a named participant in a given proceeding
`nonetheless constitutes a “real party-in-interest” or “privy” to that
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`proceeding “is a highly fact-dependent question.” Patent Trial and Appeal
`Board Consolidated Trial Practice Guide, November 2019 (“CTPG”), 13
`(citing Taylor v. Sturgell, 553 U.S. 880 (2008) (summarizing common law
`preclusion principles)).22 “[A]t a general level, the ‘real party-in-interest’ is
`the party that desires review of the patent.” CTPG, 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 (citing the initial Trial Practice Guide, 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.
`As explained in AIT:
`[D]etermining whether a non-party is a “real party in interest”
`demands a flexible approach that takes into account both
`
`22 The CTPG accurately identifies Taylor as focusing on “preclusion
`principles.” Power Integrations also focuses on “preclusion principles.”
`926 F.3d at 1315. Indeed, Taylor did not use the term “privity” in its
`opinion. See Taylor, 553 U.S. at 894, n.8 (“The substantive legal
`relationships justifying preclusion are sometimes collectively referred to as
`‘privity.’ . . . The term ‘privity,’ however, has also come to be used more
`broadly, as a way to express the conclusion that nonparty preclusion is
`appropriate on any ground. . . . To ward off confusion, we avoid using the
`term ‘privity’ in this opinion.”) (internal citations omitted).
`In Taylor, the Court vacated and remanded the appellate court’s decision
`because “we disapprove the theory of virtual representation on which the
`decision below rested. The preclusive effects of a judgment in a federal-
`question case decided by a federal court should instead be determined
`according to the established grounds for nonparty preclusion described in
`this opinion.” Id. at 904 (emphases added).
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`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.
`Indeed, the Trial Practice Guide . . . suggests that the agency
`understands the “fact-dependent” nature of this inquiry,
`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.”
`897 F.3d at 1351 (quoting Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48759 (Aug. 14, 2012)); accord CTPG 13–14.
`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 .