UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ASSA ABLOY AB, ASSA ABLOY INC., ASSA ABLOY RESIDENTIAL
`GROUP, INC., AUGUST HOME, INC., HID GLOBAL CORPORATION,
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioner,
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`v.
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`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
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`Case IPR2022-01094
`Patent 8,620,039
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`B.
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`C.
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`
`TABLE OF CONTENTS ........................................................................................... i
`TABLE OF AUTHORITIES ................................................................................... iii
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`FACTUAL AND PROCEDURAL BACKGROUND .................................... 5
`A.
`The Apple Action Was Served More Than 1 Year Before The
`Petition Was Filed ................................................................................. 5
`The ’039 Patent And The ASSA ABLOY Products At Issue In
`The Parallel Litigation ........................................................................... 5
`Patent Owner Contacted Petitioner Yale Regarding The ’705
`And The ’208 Patents (But Not The ’039 Patent) ................................. 6
`The Petitioners’ Declaratory Judgment Complaint And IPR
`Petitions Against All Three Of The Patents Asserted In The
`Apple Action ......................................................................................... 7
`The Petitioners’ Admissions Regarding Apple ..................................... 8
`E.
`The Apple Developer Program License Agreement ...........................10
`F.
`G. Apple’s Inspection of Petitioners’ Products-At-Issue .........................13
`III. LEGAL STANDARDS .................................................................................14
`A.
`Petitioners Bear The Burden Of Persuasion ........................................15
`B.
`Real Parties-In-Interest And Privity Standards ...................................15
`1.
`Scope Of Real Parties In Interest ..............................................16
`2.
`Scope Of Privity ........................................................................19
`INSTITUTION IS BARRED UNDER SECTION 315(b) BECAUSE
`APPLE IS AN RPI AND PRIVY OF PETITIONERS .................................20
`A. Apple Is An Unnamed RPI To This Proceeding .................................21
`1.
`Apple Has A Preexisting, Established Relationship With
`Petitioners ..................................................................................21
`a.
`Petitioners Admitted To A Preexisting, Established
`Relationship With Apple In The Declaratory
`Judgment Complaint .......................................................21
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`IV.
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`D.
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`i
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`

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`b.
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`The Apple Agreement Also Establishes That
`Apple Is An RPI To This Proceeding .............................25
`i.
`Representations And Warranties Of
`Noninfringement ..................................................28
`Indemnification Clauses .......................................31
`ii.
`Product Inspection Clause ....................................34
`iii.
`Insurance Coverage Clause ..................................36
`iv.
`Apple Appointed As Petitioners’ Agent ..............37
`v.
`Summary Of Apple Agreement Significance ......38
`vi.
`Apple Is A Clear Beneficiary Of The Petition ..........................40
`The Petitioners Filed An IPR Petition Against The ’039
`Patent For Apple’s Benefit ........................................................42
`Apple Is A Privy To This Proceeding .................................................43
`B.
`CONCLUSION ..............................................................................................45
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`2.
`3.
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`ii
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`V.
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`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc., v. Achates Reference Publ, Inc.,
`IPR2013-00080 (PTAB June 2, 2014) ................................................... 39, 40
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) ............................................................. passim
`Bae Sys. Info. & Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC,
`IPR2013-00175 (PTAB July 23, 2013) .........................................................18
`Bungie v. Worlds Inc.,
`IPR2015-01264 (PTAB Jan. 14, 2020) ................................................. passim
`Cisco Sys., Inc. v. Hewlett Packard Enter. Co.,
`IPR2017-01933 (PTAB Mar. 16, 2018) .......................................................16
`CPC Patent Technologies Pty Ltd. v. Apple, Inc.,
`No. 5:22-cv-02553-NC (N.D. Cal., San Jose Division) .................................. 5
`CPC Patent Technologies Pty Ltd. v. Apple, Inc.,
`No. 6:21-cv-00165 (W.D. Tex., Waco Division) ............................................ 1
`Google LLC et al v. Cywee Grp. Ltd.,
`IPR2018-01257 (PTAB Jan. 9, 2020) ..........................................................17
`Power Integrations, Inc. v. Semiconductor Components Indus., LLC,
`926 F3d 1306 (Fed. Cir. 2018) .....................................................................19
`RPX Corp. v. Applications in Internet Time, LLC,
`IPR2015-01750 (PTAB Oct. 2, 2020) ................................................... 43, 44
`RR Donnelley & Sons Co. v. ScriptChek Visual Verification Sys., Inc.,
`IPR2021-00564 (PTAB Sept. 14, 2021) .......................................................17
`Taylor v. Sturgell,
`553 U.S. 880 (2008) ......................................................................... 20, 44, 45
`U.S. v. N.Y., New Haven & Hartford R.R. Co.,
`355 U.S. 253 (1957) ......................................................................................22
`Uniloc 2017 LLC v. Facebook Inc.,
`989 F.3d 1018 (Fed. Cir. 2021) ............................................................. 16, 17
`Ventex Co., Ltd., v. Columbia Sportswear North America, Inc.,
`IPR2017-00651 (PTAB Jan. 24, 2019) ................................................. passim
`
`iii
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`

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`WesternGeco LLC v. ION Geophysical Corp.,
`889 F.3d 1308 (Fed. Cir. 2018) ....................................................................19
`Wi-Fi One, LLC v. Broadcom Corp.,
`887 F.3d 1329 (Fed. Cir. 2018) ............................................................. 16, 18
`Worlds, Inc. v. Bungie, Inc.,
`903 F.3d 1237 (Fed. Cir. 2018) ............................................................. passim
`Statutes
`35 U.S.C. § 314 ........................................................................................................42
`35 U.S.C. § 315(b) ........................................................................................... passim
`Other Authorities
`BLACK’S LAW DICTIONARY (10th ed. 2014) ..................................................20
`Congressional Record Volume 157, Number 132
`(Thursday, September 8, 2011) ....................................................................44
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759
` (Aug. 14, 2012) ............................................................................................16
`Patent Trial and Appeal Board Consolidated Trial Practice Guide 13
` (Nov. 2019) ..................................................................................................43
`
`
`
`iv
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`I.
`
`INTRODUCTION
`CPC Patent Technologies Pty. Ltd. (“CPC” or “Patent Owner”), respectfully
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`submits this Preliminary Response to Petition IPR2022-01094 (“Petition”) for inter
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`partes review U.S. Patent No. 8,620,039 (“the ’039 Patent”) filed by Petitioners
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`ASSA ABLOY AB, ASSA ABLOY Inc., ASSA ABLOY Residential Group, Inc.
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`(“Yale”), August Home, Inc. (“August”), HID Global Corporation (“HID”), ASSA
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`ABLOY Global Solutions, Inc. (“Hospitality”) (collectively “the ASSA ABLOY
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`Entities” or “Petitioners”). The Board should deny the Petition for at least the reason
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`that it is time-barred under 35 U.S.C. 315(b). Specifically, the Petition is time-barred
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`because Apple, Inc. (“Apple”) is a real party-in-interest (“RPI”) and privy, and
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`Patent Owner served a complaint on Apple alleging infringement of the ’039 Patent
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`more than 1 year before this Petition was filed.1 Petitioners bear the burden of
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`proving that Apple is not an RPI or privy to this proceeding.
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`1 The complaint in CPC Patent Technologies Pty Ltd. v. Apple, Inc., No. 6:21-cv-
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`00165 (W.D. Tex., Waco Division) (“the Apple Action”) was served on Apple on
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`March 1, 2021. See EX2003, EX2004. The complaint asserts infringement of the
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`’039 Patent as well as CPC’s U.S. Patent Nos. 9,269,208 (“the ’208 Patent”) and
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`9,665,705 (“the ’705 Patent”), which are also the subject of IPR petitions filed by
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`Petitioners more than 1 year after service of the Apple Action (namely IPR2022-
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`1
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`

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`In their Reply filed in related IPR2022-01006 (Paper 18), 01045 (Paper 15)
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`and 01089 (Paper 14), Petitioners argue that Apple cannot be an RPI or privy because
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`it purportedly has not directed, controlled, or contributed financially to the ASSA
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`ABLOY Entities’ Petitions. However, the Federal Circuit and the Board have
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`repeatedly made clear that a non-party may be an RPI or privy even without control
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`or financial investment. Key to the analysis is not simply who controlled the IPR
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`filing, but rather whether the petitioner and the alleged RPI have a structured,
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`preexisting business relationship and whether the alleged RPI would receive more
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`than a merely generalized benefit from the filing of the petition. Under the proper
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`standard, Apple is clearly an RPI.
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`As discussed below, Petitioners admitted that Apple is their “business partner”
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`with respect to the products at issue in the parallel district court litigation (“Parallel
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`Litigation”) (collectively the “products-at-issue”). Petitioners also admit that they
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`are parties to the Apple Developer Program License Agreement (“Apple
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`Agreement” or “Agreement”) (EX2009) which includes multiple patent-related
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`01006, 01045 and 01089). Patent Owner maintains that those petitions are also
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`time-barred under 35 U.S.C. 315(b) as set forth in the Preliminary Responses filed
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`on September 6, 2022 (IPR2022-01006, Paper 9) and October 7, 2022 (IPR2022-
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`01045 and 01089, Paper 8 in both proceedings).
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`2
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`legal obligations as well as other obligations that illustrate the structured and
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`established business relationship between Apple and Petitioners with respect to the
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`products-at-issue. Indeed, Petitioners have now admitted that certain relevant ASSA
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`ABLOY products identified in the Parallel Litigation were sent to Apple to be
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`inspected for compliance and/or certification purposes. EX2032 (Response to
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`Interrogatory No. 1). In sum, the structured and well-established nature of the
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`business relationship between Apple and Petitioners is beyond dispute. Further,
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`according to Petitioners, only 56 out of the purported 34 million application
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`developers have products compatible with Apple Wallet functionality and similarly
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`submitted their products to Apple for inspection purposes, which demonstrates the
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`close, structured business relationship between Apple and the ASSA ABLOY
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`Entities as pertains to the products-at-issue. See Reply at 1, 8. Indeed, the ASSA
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`ABLOY Entities are amongst an infinitesimally small percentage (0.00017%) of the
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`alleged 34 million application developers that share this type of close business
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`relationship with Apple.
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`Next, Apple has been sued for infringement of the ’039 patent (as well as the
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`’705 and ’208 patents) and therefore would receive much more than a merely
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`generalized benefit from institution of the Petition. Rather, as the defendant in the
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`pending Apple Action, Apple would be a direct and specific beneficiary of a
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`potential finding of unpatentability. In the Reply, Petitioners repeatedly contend that
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`3
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`

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`they had their own motivations to file the Petitions. But that argument ignores the
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`well-established case law that the point of the inquiry is not to probe the petitioner’s
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`interest, but rather to probe the extent to which the alleged RPI has an interest in and
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`will benefit from the petitioner’s actions.
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`Petitioners additionally contend that barring the related Petitions (and
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`therefore presumably this Petition) would somehow be inequitable and in violation
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`of due process. Reply at 1. But this is incorrect. Importantly, Petitioners had ample
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`time to file their Petition before the § 315(b) time bar expired on March 1, 2022.
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`EX2004. Petitioners state that they were motivated to file this Petition “[b]ased on
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`[CPC’s] broad infringement allegations against Apple.” Reply at 9. Petitioners also
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`indicate they were motivated by “CPC’s demand letter [regarding the ’705 and ’208
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`Patents] and accompanying infringement charts sent to Petitioners.” Id. at 3. The
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`Complaint against Apple was filed on February 23, 2001 (EX2003) and the demand
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`letter was sent on October 18, 2021. EX2005. Petitioners therefore had ample time
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`to file their Petition well in advance of March 1, 2022. Petitioners’ own lack of
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`diligence does not equate to a violation of due process.
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`For at least the reasons discussed below, this Petition is barred by 35 U.S.C.
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`§ 315(b). In view of that, Patent Owner will not address in this Preliminary Response
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`the invalidity grounds advanced by Petitioners, other than to state that the invalidity
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`4
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`grounds are deficient, as Patent Owner will demonstrate as needed if institution is
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`granted.
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`II.
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`FACTUAL AND PROCEDURAL BACKGROUND
`A. The Apple Action Was Served More Than 1 Year Before The
`Petition Was Filed
`On February 23, 2021, Patent Owner filed a complaint against Apple in the
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`Western District of Texas for infringement of three patents, the ’208 Patent, the ’705
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`Patent, and the ’039 Patent (the subject of this Petition). EX2003. The complaint in
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`the Apple Action was served on March 1, 2021. EX2004. The Apple Action was
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`subsequently transferred to the Northern District of California and is now pending
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`as CPC Patent Technologies Pty Ltd. v. Apple, Inc., No. 5:22-cv-02553-NC (N.D.
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`Cal., San Jose Division). The Apple Action is identified as a related matter in the
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`Petition’s mandatory notices. Petition at 1-2.
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`B.
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`The ’039 Patent And The ASSA ABLOY Products At Issue In The
`Parallel Litigation
`The ’039 Patent, titled “Card Device Security Using Biometrics,” describes
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`systems and methods for storing a user’s biometric information at a memory location
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`defined by card data read from a card. EX1001, Abstract, 2:51-67. Specifically, the
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`’039 Patent relates to a biometric card pointer (BCP) system intended to more
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`efficiently and securely permit a user to store biometric information during an
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`enrollment process, and in future verification processes access their account using
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`5
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`

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`an identification (ID) card and biometric information such as a fingerprint. Id. at
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`2:51–3:11; 7:43-49.
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`Petitioners have sought declaratory judgment claims of non-infringement for
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`their respective products with respect to the ’039 Patent in the Parallel Litigation.
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`Specific products identified in Petitioners’ complaint include HID’s Mobile Access
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`credential in Apple Wallet and Hospitality’s similar Mobile Access for Hotels
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`credential for Apple Wallet. Both of these products allow a user —using a mobile
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`application on an iPhone—to store access credentials in Apple Wallet in order to
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`gain access to a controlled item or area. Notably, Patent Owner has not asserted the
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`’039 Patent against any of the Petitioners in the Parallel Litigation, and has moved
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`to dismiss claims related to the ’039 Patent from the Parallel Litigation.
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`C.
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`Patent Owner Contacted Petitioner Yale Regarding The ’705 And
`The ’208 Patents (But Not The ’039 Patent)
`On or about October 18, 2021, Patent Owner sent a letter to Yale asserting
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`infringement of the ’705 and ’208 Patents by Yale’s “Smart Locks” products.
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`EX2005. 2 More particularly, the letter included claim charts identifying certain
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`“Accused Instrumentalities” that include the Yale Assure Lock SL with the Yale
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`2 The October 18, 2020 date on the face of the letter is a typographical error. The
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`parties agree the letter was sent on or about October 18, 2021. See, e.g., EX2007 at
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`¶ 53.
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`6
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`Access software solution as well as “Biometric Verification for August and Yale
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`Locks.” See, e.g., id. at 6-7. In this letter, Patent Owner invited Yale to engage in
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`licensing discussions. After receiving no response, Patent Owner sent a follow-up
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`letter on November 4, 2021. EX2006. (The October 18, 2021 letter and the
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`November 4, 2021 letter are hereinafter referred to collectively as “the Yale
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`Letters”).
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`Neither of the Yale Letters made any mention of the ’039 Patent. EX2005-
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`EX2006. Neither of the Yale Letters made any mention of any of the other
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`Petitioners, including HID and Hospitality, or any of their products. Id. Patent Owner
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`never raised or otherwise mentioned the ’039 Patent to Yale or any of the Petitioners
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`at any time. See EX2008.
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`D. The Petitioners’ Declaratory Judgment Complaint And IPR
`Petitions Against All Three Of The Patents Asserted In The Apple
`Action
`The Petitioners never responded to the Yale Letters. Instead, on May 23, 2022,
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`Petitioners filed a complaint for declaratory judgment of non-infringement of the
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`’705, ’208, and ’039 Patents (“the Declaratory Judgment Complaint”). EX2007.3
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`3 There is complete overlap among the named Petitioners and the named plaintiffs
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`in the Declaratory Judgment Complaint (referred to collectively in the Declaratory
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`Judgment Complaint as “the ASSA ABLOY Entities”). See EX2007 at ¶ 1.
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`7
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`The Petitioners did not file the Declaratory Judgment Complaint only as to Yale and
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`August, however, or only as to the products and patents raised in the Yale Letters.
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`Instead, the Petitioners also filed the Declaratory Judgment Complaint as to HID and
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`Hospitality, whom Patent Owner had never contacted regarding the patents or
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`technology at issue. See EX2005-EX2006, EX2008. Notably, the Declaratory
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`Judgment Complaint raises the ’039 Patent primarily in the context of HID and
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`Hospitality’s products and services, and not in connection with Yale or August. See
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`EX2007 at ¶¶ 100-106. Thus, the Petitioners included HID and Hospitality as
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`plaintiffs to the Declaratory Judgment Complaint for the purpose of alleging an
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`apprehension of suit with respect to the ’039 Patent, which Patent Owner previously
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`asserted against Apple in the Apple Action but never raised with respect to any of
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`the Petitioners.
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`After filing the Declaratory Judgment Complaint, Petitioners filed IPR
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`petitions against all three patents asserted in the Apple Action, as follows: IPR2022-
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`01006 (’705 Patent); IPR2022-01045 & IPR2022-01089 (’208 Patent); IPR2022-
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`01093 & IPR2022-01094 (’039 Patent).
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`The Petitioners’ Admissions Regarding Apple
`E.
`Petitioners have repeatedly admitted that Apple is their “business partner”
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`with respect to the products-at-issue. EX2007 at ¶¶ 30, 43; EX2029 at 009-010, 016.
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`Further, in an effort to support their basis for declaratory judgment jurisdiction – i.e.,
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`8
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`the existence of a justiciable case or controversy even where Patent Owner never
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`contacted some of the Petitioners nor ever raised the ’039 Patent at all – Petitioners’
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`Complaint pleads that Patent Owner’s “litigation campaign that includes Apple …
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`is likely to expand to include the ASSA ABLOY Entities.” EX2007 at ¶ 30.
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`Petitioners further asserted that “it is highly likely that Charter Pacific4 will sue the
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`Assa Abloy Entities on the same patents that have been asserted against Apple.” Id.
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`In addition, Petitioners asserted that “Charter Pacific has a history of alleging
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`infringement of all three Patents-in-Suit, including against Apple, the ASSA
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`ABLOY Entities’ business partner.” Id. at ¶¶ 43-44.5 Petitioners also pled that Patent
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`Owner’s potential infringement allegations against Apple in Germany added to
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`Petitioners’ purported apprehension of suit. Id. at ¶ 46.
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`The Declaratory Judgment Complaint includes further assertions regarding
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`Petitioners’ relationship with Apple and Apple’s connections to the Petitioners’
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`products at issue. For example, under a heading related to HID’s and Hospitality’s
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`reasonable apprehension of suit, Petitioners note that “Charter Pacific has asserted
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`4 Charter Pacific Corporation Ltd. is Patent Owner CPC’s parent company and is a
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`named co-defendant in the Declaratory Judgment Complaint, wherein they are
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`collectively referred to as “Charter Pacific.” See EX2005 at ¶ 1.
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`5 Unless otherwise indicated, all emphasis is added.
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`9
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`infringement of the ’039 patent against Apple”, and that “[b]ased on Charter
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`Pacific’s broad infringement allegations against Apple, it is likely that Charter
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`Pacific would consider HID’s and Hospitality’s products and software solutions to
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`be covered by the ’039 patent.” Id. at ¶¶ 100, 105. Petitioners also contend that the
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`“HID Mobile Access software solution” and Hospitality’s hotel room key product
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`work in close conjunction with Apple technology. See id. at ¶¶ 102-103.
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`Similarly, under a heading related to August and Yale’s alleged reasonable
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`apprehension of suit, the Declaratory Judgment Complaint references Patent
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`Owner’s “broad interpretation of the claims in the allegations brought against
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`Apple” and, further, that “the Apple Touch ID and Face ID features were a
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`prominent focus of the claim charts presented to Yale.” Id. at ¶¶ 62-63. Petitioners
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`further note that “[t]he download page for Yale Access app identifies August as the
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`developer in the Apple App Store.” Id. at ¶ 65.
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`The Apple Developer Program License Agreement
`F.
`Consistent with having pled that Apple is their “business partner,” the
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`Petitioners have also confirmed that they and Apple are parties to the Apple
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`Agreement. 6 EX2010 at 2. According to its terms, generally the Apple Agreement
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`6 Petitioners have also confirmed the existence of other agreements between Apple
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`and Petitioners related to the technology at issue and have represented that they are
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`10
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`

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`grants a limited license to use the Apple Software and Services for the purpose of
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`developing and testing Applications (i.e., “Apps” or “apps”) to be used in
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`conjunction with Apple devices (e.g., iPhone, iPad, etc.) on the terms and conditions
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`set forth in the Agreement. EX2009 at 1. The Agreement states that “[t]hese terms
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`and conditions constitute a legal agreement between you and Apple.” Id.7
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`As discussed in detail below, the Apple Agreement includes several patent-
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`related obligations and multiple conditions indicating the existence of a structured
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`and established business relationship between Apple and the Petitioners that
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`endeavoring to produce them. See EX2038 (joint email submitted to Board in
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`related IPR2022-01006, 01045, 01089). Once produced, Patent Owner will bring
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`any further relevant information to the Board’s attention in accordance with the
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`Board’s Order in those proceedings of October 20, 2022.
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`7 Petitioners refer to the Apple Agreement as a “click-through” agreement (see
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`Reply at 3, 8) but they offer no explanation as to why this would have any effect
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`on the legal relationship between Apple and Petitioners, including the patent-
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`related legal obligations, created by the Apple Agreement. Presumably neither
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`Petitioners nor Apple contend that the Apple Agreement is unenforceable because
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`it is a “click-through” agreement.
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`11
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`demonstrate that Apple is a real party in interest. Such provisions include, for
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`example:
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`• warranties of non-infringement of any third-party patents (EX2009 at 13-14,
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`16, 77);
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`• indemnification and defense arrangements in the event of a patent
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`infringement suit (id. at 10);
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`• the obligation to get Apple’s approval to settle patent infringement suits that
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`may affect Apple (id.);
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`• Apple’s right to inspect the physical samples or components of Petitioners’
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`products (id. at 36);
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`• The Petitioners’ obligation to carry certain levels of insurance for certain types
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`of products as Apple requests (id.);
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`• The Petitioners’ obligation to name Apple as an additional insured (id.);
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`• Appointment of Apple as Petitioners’ agent with respect to the distribution of
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`Petitioners’ software on the Apple App Store (id. at 79-80).
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`As will be explained in detail below, the facts concerning Apple’s relationship to
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`Petitioners clearly establish that Apple is a real party in interest and/or privy for
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`purposes of the present IPR.
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`12
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`G. Apple’s Inspection of Petitioners’ Products-At-Issue
`Petitioners admit that numerous ASSA ABLOY products identified in the
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`Parallel Litigation were sent to Apple for compliance and/or certification purposes,
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`as follows:
`
`The following ASSA ABLOY product(s) identified in the Complaint
`filed in the district court litigation were sent to Apple for compliance
`purposes: HID Mobile Access software; Hardware and software
`components associated with Student ID in Apple Wallet; Hardware and
`software components associated with Employee badge in Apple Wallet;
`Hardware and software components associated with Hotel keys in
`Apple Wallet.
`
`
`EX2032 (Response to Interrogatory No. 1). According to Petitioners, these products
`
`were submitted to Apple because they work in conjunction with Apple Wallet. Reply
`
`at 8. Further, Petitioners admit that only 56 out of the purported 34 million
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`application developers (or 0.00017%) make similar product submissions to Apple.
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`See id. at 1, 8.
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`In addition, Petitioners admit that the following products were also submitted
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`to Apple for inspection:
`
`The following ASSA ABLOY product(s) identified in the Complaint
`filed in the district court litigation were submitted to Apple for
`certification purposes: at least one exemplary product from the August
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`13
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`

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`Smart Lock family of products; and at least one exemplary product
`from the Yale Assure Lock family of products.
`
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`EX2032 (Response to Interrogatory No. 1). According to Petitioners, these products
`
`were submitted to Apple to ensure compliance with Apple Pay Technology’s
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`security requirements (ASM Agreement) or compatibility with other Apple products
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`(MFi Agreements). Reply at 8. Petitioners submit that Apple requires similar product
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`submissions from “hundreds” of MFi participant. Id. “Hundreds” is an ambiguous
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`term, but even assigning it its largest possible number, 999, then by Petitioners’
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`admission only 0.003% of the purported 34 million application developers make
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`similar product submissions to Apple. See Reply at 1, 8.
`
`III. LEGAL STANDARDS
`35 U.S.C. § 315(b) provides, in pertinent part, that “[a]n inter partes review
`
`may not be instituted if the petition requesting the proceeding is filed more than 1
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`year after the date on which the petitioner, real party in interest, or privy of the
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`petitioner is served with a complaint alleging infringement of the patent.” See also
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`Worlds, Inc. v. Bungie, Inc., 903 F.3d 1237, 1240 (Fed. Cir. 2018) (“Correctly
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`identifying all real parties in interest with respect to each IPR petition is important,
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`as the determination may impact whether a petition may be instituted.” Id.)
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`14
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`

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`Petitioners Bear The Burden Of Persuasion
`A.
`Once Patent Owner introduces some evidence indicating an RPI relationship
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`between Apple and one or more of the Petitioners, then Petitioners “bear[] the
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`ultimate burden of persuasion to show that its petitions are not time-barred under §
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`315(b) based on a complaint served on an alleged real party in interest more than a
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`year earlier.” Worlds Inc., 903 F.3d at 1242. This same burden applies to proofs on
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`privity. See Ventex Co., Ltd., v. Columbia Sportswear North America, Inc., IPR2017-
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`00651, Paper 148 at 4 (PTAB Jan. 24, 2019) (“Ventex”).
`
`B. Real Parties-In-Interest And Privity Standards
`The law regarding real parties-in-interest and privity has changed
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`significantly in recent years, beginning with the Federal Circuit’s 2018 decision in
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`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir.
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`2018) (“AIT”). In AIT, the Federal Circuit found that the Board erred by taking an
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`“unduly narrow view” of the meaning of real party-in-interest and by failing to
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`consider the entirety of the record. Id. at 1345. As the court explained, the inquiry
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`into whether a party is a RPI or privy “demands a flexible approach that takes into
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`account both equitable and practical considerations, with an eye toward
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`determining whether the non-party is a clear beneficiary that has a preexisting,
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`established relationship with the petitioner.” AIT, 897 F.3d at 1351.
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`15
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`

`

`Scope Of Real Parties In Interest
`1.
`“Congress intended for [the term “real party-in-interest”] to have an
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`expansive formulation.” AIT, 897 F.3d at 1350. “[T]he focus of the real-party-in-
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`interest inquiry is on the patentability of the claims challenged in the IPR petition,
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`bearing in mind who will benefit from having those claims canceled or
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`invalidated.” AIT, 897 F.3d at 1348. Also relevant is “whether some party other
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`than the petitioner is the ‘party or parties at whose behest the petition has been
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`filed.’” Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1336 (Fed. Cir. 2018)
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`(quoting Trial Practice Guide at 48759).
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`In their Reply, Petitioners ignore the “expansive formulation” required under
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`AIT and, instead, focus too heavily on whether Apple provided any direction,
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`control, or financing in this proceeding. See Reply at 2, 4. However, it is well-
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`established that “a non-party may be a real party-in-interest even in the absence of
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`control or an opportunity to control.” Cisco Sys., Inc. v. Hewlett Packard Enter.
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`Co., IPR2017-01933, Paper 9 at 13 (PTAB Mar. 16, 2018) (emphasis added) (citing
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`Trial Practice Guide at 48760). This basic principle is recognized in several cases
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`cited by Petitioners. See, e.g., Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018,
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`1027–28 (Fed. Cir. 2021) (control and funding of an IPR are among the “relevant
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`considerations” in an RPI analysis, but they are in no way dispositive because
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`“[t]his determination has no bright-line test”); see also Google LLC et al v. Cywee
`
`16
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`

`

`Grp. Ltd., IPR2018-01257, Paper 91 at 17 (PTAB Jan. 9, 2020) (“funding” and
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`“control” are among a list of non-exclusive considerations); RR Donnelley & Sons
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`Co. v. ScriptChek Visual Verification Sys., Inc., IPR2021-00564, Paper 17 at 32
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`(PTAB Sept. 14, 2021) (“In determining whether a non-party is an RPI, relevant
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`considerations may include” control and funding of the proceeding).
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`Thus, the absence of control or funding from Apple, even if true, is but one
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`consideration in the RPI inquiry. As is plainly stated in AIT, the RPI analysis must
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`be made “with an eye toward determining whether the non-party is a clear
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`beneficiary that has a preexisting, established relationship with the petitioner.” AIT,
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`897 F.3d at 1351. Petitioners ignore this standard and, indeed, go so far as to
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`inaccurately argue that “[b]oth the Federal Circuit and the Board have repeatedly
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`rejected RPI arguments based on pre-existing business relationships.” Reply at 2.
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`This is simply a mischaracterization of the law under AIT. Moreover, none of the
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`cases cited by Petitioners support this baseless proposition.
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`For example, in Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018 (Fed. Cir.
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`2021), the issue of whether there was a pre-existing business relationship was never
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`part of the analysis in the case. Rather, the appellant’s (Uniloc) entire argument
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`was based on whether the alleged RPI (LG) “exerted control over substantive
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`filings and oral argument in the proceeding below” and whether LG agreed to be
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`bound by the results of that proceeding. Uniloc at 1028. Therefore, Petitioners’
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`17
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`

`

`citation to Uniloc for the premise that “[b]oth the Federal Circuit and the Board
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`have repeatedly rejected RPI arguments based on pre-existing business
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`relationships” (Reply at 2-3) is misleading.
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`In Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329 (Fed. Cir. 2018), the
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`appellant (Wi-Fi) argued that the Board erred by “imposing an inflexible standard”
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`that required the exercise of control over the proceedings bel