UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ASSA ABLOY AB, ASSA ABLOY INC., ASSA ABLOY RESIDENTIAL
`GROUP, INC., AUGUST HOME, INC., HID GLOBAL CORPORATION,
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-01094
`Patent 8,620,039
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S PRELIMINARY
`
`
`
`RESPONSE REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ASSA ABLOY AB, ASSA ABLOY INC., ASSA ABLOY RESIDENTIAL
`GROUP, INC., AUGUST HOME, INC., HID GLOBAL CORPORATION,
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-01094
`Patent 8,620,039
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S PRELIMINARY
`
`
`
`RESPONSE REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioners contend that Apple cannot be an RPI because it purportedly has no
`
`control over the Petition. Reply at 2, 8. However, the PTAB has repeatedly made
`
`clear that “a non-party may be a real party-in-interest even in the absence of control
`
`or an opportunity to control.” Cisco Sys., v. H.P Enter. Co., IPR2017-01933, Paper
`
`9 at 13 (PTAB Mar. 16, 2018) (emphasis in original).1 Key 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. AIT, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018). Petitioners’
`
`own Exhibit Nos. 1024-1028 demonstrate the specially structured nature of the
`
`business relationship with Apple concerning the relevant products.
`
`Petitioners admit that the ASSA ABLOY products identified in the Parallel
`
`Litigation were sent to Apple for compliance or certification purposes. EX1023
`
`(Rog. 1). Petitioners also admit that only 56 out of the purported 34 million
`
`application developers (or 0.00017%) make similar product submissions to Apple.
`
`Reply at 1, 8. Petitioners also admit that relevant Yale and August products were
`
`submitted to Apple to ensure compliance. Id. at 8. Petitioners submit that Apple
`
`requires similar product submissions from “hundreds” of MFi participants. Id.
`
`
`1 The Board’s institution decisions in related IPR2022-01006, -01045, -01089
`does not appear to acknowledge this principle.
`
`1
`
`
`
`“Hundreds” is ambiguous, but even assigning it the largest possible value (999), then
`
`only 0.003% of the purported 34 million developers make similar submissions.
`
`In its prior institution decisions in the related IPRs, the Board apparently
`
`accepted Petitioners’ assertion that they “have a standard business relationship [with
`
`Apple] like that of over 34 million application developers … and hundreds of MFi
`
`Program12 participants.” See e.g., IPR2022-01006, Paper 27 at 17. However, it
`
`appears that the Board did not consider that Petitioners are amongst an
`
`infinitesimally small percentage of developers that have such a close partnership
`
`with Apple that Apple inspects their physical products, including those implicated
`
`by the patented technology at issue here. As in Ventex, Apple and Petitioners have a
`
`“specially structured, preexisting, and well-established business relationship with
`
`one another” with respect to the technology at issue. Ventex, IPR2017-00651, Paper
`
`148 at 10 (PTAB Jan. 24, 2019).
`
`
`
`Petitioners speculate that a finding that Apple is an RPI here would have an
`
`unfairly deleterious effect on the purported 34 million app developers. Reply at 2.
`
`But there is no evidence that all app developers share the exact same relationship
`
`with Apple and, as demonstrated above, Petitioners’ relationship with Apple is
`
`relatively unique. The Board can only be expected to consider the specific
`
`relationship between Petitioners and Apple, and not some unidentified 34 million
`
`others.
`
`2
`
`
`
`Petitioners’ effort to distinguish the Apple Agreement from the DevPub
`
`agreement in Bungie also fails. Reply at 5-6. The Apple Agreement requires
`
`Petitioners to warrant that “none of the Licensed Applications…violate or infringe
`
`any patent…or other intellectual property or contractual rights of any other person.”
`
`EX2009 at 77. See also id. at 16 (to the best of developer’s knowledge, the relevant
`
`products “do not and will not” violate or infringe any patents.) Contrary to the
`
`Board’s finding in the prior institution decisions, the warranties are not merely
`
`opinions on whether the rights are clear. See e.g., IPR2022-01006, Paper 27 at 23-
`
`24. Rather, they are stated with certainty, for the purpose of ensuring that the rights
`
`are cleared for use.
`
`Next, Ventex does not require an “exclusivity-plus-indemnity arrangement.”
`
`See Reply at 6. The Apple indemnity provision must be considered along with all
`
`other relevant facts in the “flexible approach” and “expansive formulation”
`
`required under AIT. See AIT at 1351. Under AIT, Apple is clearly an RPI.
`
`Petitioners rely on WesternGeco LLC v. ION Geophysical Corp., 889 F.3d
`
`1308 (Fed. Cir. 2018) to support its argument that Apple is not a privy under
`
`Taylor Factor 2. However, in WesternGeco, the Board rejected privity “based on
`
`the ambiguous, undefined nature of the underlying [indemnity] agreements.” Id. at
`
`1321. As discussed in the Preliminary Response, the indemnity clauses in the
`
`Apple Agreement are in no way ambiguous or undefined. Prelim. Resp. at 27-29.
`
`3
`
`
`
`
`
`
`
`
`Dated: January 11, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Andrew C. Ryan/
`Andrew C. Ryan
`Reg. No. 43,070
`Steven M. Coyle (pro hac vice)
`Nicholas A. Geiger (pro hac vice)
`CANTOR COLBURN LLP
`20 Church Street, 22nd Floor
`Hartford, CT 06103
`Tel: (860) 286-2929
`Fax: (860) 286-0115
`ryan@cantorcolburn.com
`scoyle@cantorcolburn.com
`ngeiger@cantorcolburn.com
`
`Attorneys for Patent Owner
`CPC Patent Technologies Pty Ltd.
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on this 11th
`
`day of January 11, 2023, service of the foregoing document was made on the
`
`counsel of record for the Petitioner by filing this document through the PTAB’s
`
`P-TACTS platform as well as delivering a copy via electronic mail to the following
`
`address:
`
`Dion Bregman
`Andrew Devkar
`James J. Kritsas
`Morgan, Lewis & Bockius LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`HID-IPRs@morganlewis.com
`
`Dated: January 11, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`/Andrew C. Ryan/
`Andrew C. Ryan
`Reg. No. 43,070
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
