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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`World Programming Limited
`Petitioner
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`v.
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`SAS Institute Inc.
`Patent Owner
`______________________
`
`Case IPR2019-01458
`Patent 7,170,519
`______________________
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.107
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`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 2
`I.
`II. THE ’519 PATENT AND ITS PROSECUTION HISTORY .................... 3
`A. Overview of the ’519 Patent .................................................................. 3
`B.
`Prosecution History of the ’519 Patent ................................................. 9
`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. §§ 312(a)(2)
`& 315(b) BECAUSE WPL INTENTIONALLY OMITTED “DECEMBER
`2015 SOFTWARE LIMITED” AS A REAL PARTY-IN-INTEREST ............19
`A.
`The Real Party-In-Interest Inquiry ......................................................21
`B.
`The 2018+ E.D. Texas Litigation – The Predicate Lawsuit For This
`IPR 22
`The 2010+ E.D. North Carolina Litigation – The Earlier Case
`C.
`Between The Parties Resulting In A $79 Million Judgment Against WPL ..23
`1.
`The Directors/Owners Of WPL And D2SL Largely Overlap
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`24
`2.
`D2SL Controls And Funds This IPR ....................................26
`3. WPL’s Conduct Demonstrates Gamesmanship And Bad
`Faith 29
`D. D2SL Is An RPI, And WPL’s Glaring Omission Was Intentional .....34
`E.
`Any Amended Petition Should Receive A New Filing Date ..............36
`F.
`A New Filing Date Would Time Bar the Petition ...............................37
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`MAP THE CHALLENGED CLAIMS, AS WPL CONSIDERS THEM
`PROPERLY CONSTRUED, TO THE ASSERTED PRIOR ART ..................38
`A. WPL does not offer constructions for many terms in dispute ............38
`Petition has not identified a corresponding structure in its definition of
`B.
`“graph generator module” .............................................................................42
`V. CONCLUSION ............................................................................................44
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`-1-
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`I.
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`INTRODUCTION
`World Programming Limited (“WPL”) seeks review of claims 5-11, 22-26,
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`and 37-38 of U.S. Patent No. 7,170,519 (“the ’519 Patent”) based on obviousness
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`grounds.1 WPL’s petition is deficient and should not be instituted for a number of
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`reasons, both procedural and substantive. For example, WPL intentionally omitted
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`a real party-in-interest from its petition. Because WPL’s omission is an attempt to
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`game the system and was made in bad faith, the Board should decline to exercise its
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`discretion in this case to give WPL a free pass to correct its petition without
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`concomitantly receiving a new filing date. WPL also has failed to properly map the
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`claims—as construed by WPL—to the alleged prior art. WPL failed to propose
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`constructions for a number of claim terms at in dispute, failed to alert to the Board
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`to a number of conflicts between its proposed claim constructions and its positions
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`in district court, and failed to abide by the requirements to properly construe means-
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`plus-function terms. For these reasons, as explained herein, SAS Institute (“SAS”)
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`respectfully requests that the Board deny institution of this IPR.2
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`1 WPL seeks review of claims 1-4, 14-18, 21, 27, 29-30, 39, 42-46, 47, 49,
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`51-53, and 56 of the ’519 Patent in IPR2019-01457.
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`2 To the extent the United States Court of Appeals for the Federal Circuit
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`and/or the United States Supreme Court find the remedy in Arthrex, Inc. v. Smith &
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`-2-
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`II. THE ’519 PATENT AND ITS PROSECUTION HISTORY
`A. Overview of the ’519 Patent
`The ’519 Patent, titled “Computer-Implemented System and Method for
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`Generating Data Graphical Displays,” generally relates to the generation of data
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`graphical displays using graph style data items that contain display characteristics
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`for displaying the data in a non-textual format. The ’519 Patent issued on January
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`30, 2007, from an application filed on April 15, 2002, and claims priority to
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`Provisional Patent Application No. 60/368,898, filed on March 29, 2002.
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`The Background section of the ’519 Patent recognizes that many types of
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`software applications can display graphical data, such as data graphs, but the styles
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`that define the appearance of the graphical displays were traditionally tightly
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`coupled with the software application generating the graphical display. Ex. 1001
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`(the ’519 Patent) at 1:27-31. For this reason, difficulties often arose during attempts
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`to use graphical styles defined in one software application in a different software
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`application. Id. at 1:31-33. The ’519 Patent addresses this problem by providing a
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`Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019) to be insufficient to cure the
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`Constitutional Appointments Clause defect the Federal Circuit identified in that case,
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`and to the extent making a record of the issue in this preliminary response is required
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`to preserve that argument, then SAS reserves the right to raise such a challenge.
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`-3-
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`system and method for generating data graphical displays using graph styles data
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`that is substantially independent of the application generating the data or the
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`application generating the graphical output. See id. at 2:38-40.
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`Fig. 1 of the ’519 Patent (reproduced below) shows an example of a computer-
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`implemented system 30 that generates graphical output 38 based on input data 32.
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`Id. at 2:12-13. The system includes a graph generator software module 36 that
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`processes the input data 32 to generate graphical output 38, such as pie charts, bar
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`charts, maps, scatter plot, etc. Id. at 2:16-19. In order to determine how the graphical
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`output 38 should appear, the graph generator 36 accesses graph styles data 40 that
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`defines the display characteristics 42 of the input data 32. Id. at 2:20-23.
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`-4-
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`An example data structure for storing graph styles data is shown in Fig. 2 of
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`the ’519 Patent (reproduced below). As shown in Fig. 2, the graph styles data 40
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`includes both graph styles format data 52 and graph styles metadata 54. Ex. 1001 at
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`2:29-31. “The graph styles format data 52 may designate the format attributes for
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`one or more regions of the graphical output 38, such as designating that a graph’s
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`axis should display major ticks and not display minor ticks. Id. at 2:31-35. “The
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`graph styles metadata 54 may designate format attributes based upon the role(s) that
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`a variable has within the input data.” Id. at 2:35-37. For example, the graphs styles
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`metadata 54 may designate a variable in the data set as having the role of a “category”
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`variable. Id. at 2:63-64.
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`-5-
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`The ’519 Patent explains that “the graph styles data structure uses a metadata
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`approach whose abstraction is at a level above the particular type of graphic used to
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`display the data.” Ex. 1001 at 5:64-66. “Thus, the metadata (such as what role a
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`variable has within a data set and the format style of a variable based upon its role)
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`is used independent of the graphic type used to depict the data.” Id. at 5:67-6:3.
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`“Thus, the same graphs styles data 40 may be universally used by multiple software
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`applications 56 to define the applications’ respective graphical output appearance as
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`well as the output type (e.g., HTML, PDF, etc.).” Id. at 2: 40-44.
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`“Many different graphical outputs can be created via the graphical styles data.”
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`Ex. 1001 at 7:45-46. One such example is shown in Fig. 15 of the ’519 Patent
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`(reproduced below), which shows a “statistical graphical output” with a format that
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`has been dictated using graphical styles data. Id. at 7:46-48. In Fig. 15, the
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`“statistical graphical output 430 shows a response variable analysis graph that
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`contains two response profiles (438 and 444).” Id. at 7:48-50. “The first response
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`profile 438 predicts the number of people who have viewed a particular company’s
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`Internet web site.” Id. at 7: 50-52. “The second response profile 444 depicts the
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`advertisement exposure amount for a particular age group of people.” Id. at 7:52-
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`54. “The predicted daily number of viewings of the company’s web site product
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`information pages is shown by the points on curve 438.” Id. at 7:63-66. “Upper and
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`lower confidence bands 440 bound the curve at a 95% confidence level.” Id. at 7:66-
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`67.
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`With reference to the “statistical graphical output” example shown in Fig. 15
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`of the ’519 Patent, the patent explains that the graph styles metadata may be used to
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`designate particular statistical roles for displayed characteristics of the data:
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`The graphs styles data may be used to format different aspects of
`the graphical output. The confidence bands 440 may be shown in a
`different color and with a different line thickness than the response
`curve 438. Any actual points 436 that reside outside the confidence
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`-7-
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`bands 440 may have a different style than actual points 436 within the
`confidence bands 440. The graph styles metadata may indicate that a
`certain set of points or set of curves has as its role to be the confidence
`bands within a graph. The graph styles metadata may also designate
`the role of any other data to have a statistical meaning. For example,
`the graph styles metadata may designate that a line is to act as the
`mean for the graph.”
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`Id. at 8:13-24 (emphasis added).
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`Claim 1 of the ’519 Patent is exemplary:
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`1. A computer-implemented method for generating data graphical
`displays, comprising the steps of:
`receiving data to be displayed in a non-textual format, said received
`data being indicative of a plurality of variables;
`retrieving graph style data items from a data file,
`said graph style data items containing display characteristics to be
`used in displaying the data in a non-textual format; and
`accessing of the graph style data items in order to display non-
`textual formatted output based upon the graph style data items;
`said graph style data items containing graph style metadata that have
`descriptors specifying what statistical roles different data
`variables have within the data;
`wherein the specified statistical roles are used to define display
`characteristics for the data;
`wherein the data is displayed in a non-textual format in accordance
`with the graph style data items and the graph style metadata.
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`-8-
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`Prosecution History of the ’519 Patent
`B.
`U.S. Patent Application No. 10/122,584 (“the ’584 Application”), which later
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`issued as the ’519 Patent, was filed on April 15, 2002. The ’584 Application was
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`subject to an extensive examination by the Patent Office, including four substantive
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`Office Actions over the span of more than two years.
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`The ’584 Application was filed on April 15, 2002 with 3 independent claims
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`(claims 1, 33, and 56) and 53 dependent claims. Claim 1 of the ’584 Application, as
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`filed, read as follows:
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`Ex. 1004 at 332. Dependent claim 5 of the ’584 Application, as filed, further recited
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`that the graph style data items contain graph style metadata that describes display
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`characteristics for data based upon roles of the data’s variables:
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`-9-
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`Id. at 420.
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`The first Office Action was issued by the Patent Office on March 29, 2004,
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`rejecting all 56 claims of the ’584 Application over combinations including U.S.
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`Patent No. 6,614,433 (“Watts”) and U.S. Appl. Pub. No. 2002/0149604
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`(“Wilkinson”). See Ex. 1004 at 237-256. In response, SAS conducted a first
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`telephone interview with the Patent Examiner on June 29, 2004, and filed a
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`Responsive Amendment on June 29, 2004. See id. at 213-235. In the telephone
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`interview and Responsive Amendment, SAS argued that the prior art relied upon by
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`the Office Action failed to disclose the ability to access graph style data items by
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`different types of software applications, as recited in claim 1, and further failed to
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`disclose the “use of variable roles in determining how a display should be generated,”
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`as recited in dependent claim 5. See id. at 216, 232-233. With regard to the rejection
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`of dependent claim 5, SAS explained the significance of the “role” that a variable
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`has within the input data:
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`As a non-limiting example, graph styles metadata may designate
`format attributes based upon a role that a variable has within the input
`data. A variable can have many roles, such as having as its role in the
`data set to be the “category” variable. Based upon that role, the
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`-10-
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`metadata designates format attributes for use in displaying data
`associated with that variable.
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`Id. at 233.
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`A second Office Action was issued by the Patent Office on October 19, 2004,
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`rejecting SAS’s arguments and maintaining the claim rejections over combinations
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`of Watts and Wilkinson. See id. at 185-208. In response, SAS conducted a second
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`telephone interview with the Patent Examiner on January 18, 2005, and filed a
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`second Responsive Amendment on January 19, 2005. In the second Responsive
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`Amendment, SAS argued that the “different types of software applications,” as
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`recited in claim 1, should not be broadly interpreted as requiring only “multiple
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`software application outputting graphical data.” See id.at 164-184. In addition, SAS
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`further amended dependent claim 5 to require that the “graph style data items contain
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`graph style metadata that specify one or more roles that a data’s variable has within
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`the data.” Id. at 170. With regard to amended claim 5, Paten Owner explained:
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`Claim 5 further recites that “the specified one or more roles are used to
`describe display characteristics for the data.” For example, a data
`variable may have its role be a response variable role (e.g., a dependent
`variable role). Because the graph styles data items use a metadata
`approach whose abstraction is at a level above the particular type of
`graphic used to display the data, the metadata (such as what role a
`variable has within a data set) can be used independent of the graphic
`type to graphically depict the data.
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`-11-
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`Id. at 183-184. An Advisory Action was thereafter issued on January 19, 2005,
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`maintaining the rejections. See id. at 159-162.
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`SAS filed a request for continued examination (RCE) on April 19, 2005,
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`followed by a Preliminary Amendment on May 25, 2005. See id. at 132-156. In the
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`Preliminary Amendment, SAS further amended independent claim 1 and dependent
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`claim 5, as follows:
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`-12-
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`Id. at 133-134. With regard to amended claim 5, SAS again explained the
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`importance of metadata specifying “one or more roles” used to describe display
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`characteristics for the data:
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`Assignee respectfully disagrees with other rejections. For example,
`claim 5 recites that the graph style data items contain graph style
`metadata that specify one or more roles that a data’s variable has within
`the data (e.g., a data variable may have its role be a response variable
`role). The roles are used to describe display characteristics for the data
`such that the display characteristics are defined for the data at the data
`role level… Because the graph styles data items use a metadata
`approach whose abstraction is at a level above the particular type of
`graphic used to display the data (i.e., at the data role level), the metadata
`(such as what role a variable has within a data set) can be used
`independent of the graphic type to graphically depict the data. For
`example, a data variable may have its role be a response variable role
`(e.g., a dependent variable role).
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`Id. at 148.
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`-13-
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`A third Office Action was issued by the Patent Office on July 13, 2005, once
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`again rejecting all of the claims over combinations of Watts and Wilkinson. See id.
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`at 104-127. In response to SAS’s argument that the cited Wilkinson reference does
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`not disclose the use of metadata to specify the one or more roles that a data variable
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`has within the data for the purpose of generating a graphic output, the Office Action
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`concluded: “Applicant’s specification defines metadata as defining a role, which
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`specifies a category. Therefore, the categories of metadata as taught by Wilkinson
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`correspond to the Applicant’s claimed metadata.” Id. at 126.
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`In response to the third Office Action, SAS conducted another telephone
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`interview with the Patent Examiner on November 9, 2005, and filed a third
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`Responsive Amendment on January 13, 2006. Id. at 77-100. In the Responsive
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`Amendment, SAS amended claim 1 to require metadata that specifies “analytical
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`roles” that different data variables have within the data, and amended dependent
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`claim 5 to further require that the roles of the different data variables are used to
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`express what “mathematical meanings” the different data variables have within an
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`analytical graph:
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`-14-
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`1. {Currently Amended) A computer-implemented method for generating data
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`graphical displays, comprising the steps of:
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`receiving data to be displayed in a non-textual format, said received data
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`being indicative of a plurality of variables;
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`retrieving graph style data items from a data file,
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`said graph style data items containing display characteristics to be used it
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`displaying the data in a non-textual fom'tat; and
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`accessing of the graph style data items by difi‘erent types of sofiware
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`applications in order to display through the different types of software applications non-
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`tcxtual formatted output based upon the graph style data items;.
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` tistiea—l-eefiwareappiieatiaa
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`said graph style data items containing graph style meladata that Specifv
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`analflical roles that different data variables have witlfltfihgtlata‘,
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`wherein the specified roles are used to define display characteristics for
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`the data
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`wherein the data is displayed in a nonrtextual format in accordance with
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`the graph style data items and the graph style metadata.
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`-15-
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`Id. at 78-79.
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`The Patent Office thereafter issued a fourth Office Action on April 6, 2006,
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`again rejecting all of the pending claims, and now rejecting claims 1 and 5 as being
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`anticipated by Watts alone.3 Id. at 48-74. In response to SAS’s claim amendment,
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`requiring metadata that specifies “analytical roles,” the Office Action concluded:
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`“Applicant’s specification fails to define or identify analytical roles. Thus, the
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`Examiner interprets the claimed “analytical roles” as data that is displayed as a
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`category along a x axis and/or data that is displayed as a response along a y axis.
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`Watt teaches displaying data along both x and y axes (Fig. 2) as well as storing data,
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`3 Claims 1-12, 14-17, 20, 27-32 and 56 were rejected under 35 U.S.C. § 102(e)
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`as being anticipated by Watts. The remaining claims were rejected as obvious over
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`Watts in view of Wilkinson.
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`-16-
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`i.e. variables, with codes that define the various graphic styles that are to be applied
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`during display of the data in any graphic format (col. 4) applicable to a variety of
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`systems (col. 3, ll. 9-15).” Id. at 72-73.
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`In response to the fourth Office Action, SAS held another telephone interview
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`with the Patent Examiner on June 27, 2006, and filed a fourth Responsive
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`Amendment on June 30, 2006, in which all of the independent claims were amended
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`to specify graph style metadata that specifies “statistical roles” for different data
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`variables. See id. at 18-22. For example, claim 1 was amended as follows:
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`-17-
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`Id. at 22.
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`A Notice of Allowance was thereafter issued by the Patent Office on
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`September 15, 2006 (id. at 6-9), and the ’519 Patent issued on January 30, 2007 (id.
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`at 3).
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`-18-
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`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C.
`§§ 312(a)(2) & 315(b) BECAUSE WPL INTENTIONALLY
`OMITTED “DECEMBER 2015 SOFTWARE LIMITED” AS A
`REAL PARTY-IN-INTEREST
`The Board should decline to institute this inter partes review because WPL
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`intentionally failed to identify all of the real parties-in-interest (“RPIs”). The
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`petition identifies the following RPIs: World Programming Limited; Yum! Brands,
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`Inc.; Pizza Hut, Inc.; Pizza Hut, LLC; and Angoss Software Corporation. These
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`RPIs are the defendants named in SAS’ original E.D. Texas complaint for patent
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`infringement (viz., WPL and its customers or resellers). Ex. 2002 at 1; see infra Part
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`III.B. But WPL failed to name an important U.K. party called “December 2015
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`Software Limited” (“D2SL”) as an RPI. Indeed, WPL was fully aware of D2SL’s
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`intimate relationship with WPL and control over this IPR. But WPL intentionally
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`omitted D2SL as an RPI for purposes of the parties’ ongoing litigations in North
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`Carolina and Texas – thus avoiding D2SL making an appearance in any U.S. legal
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`proceeding – as part of WPL’s continuing efforts to evade a $79 million judgment
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`to SAS. In these circumstances, where this petitioner has made a strategic decision
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`to omit an RPI intentionally and in bad faith, the Board should decline to exercise
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`its discretion to allow WPL to amend its RPI designation without concomitantly
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`forfeiting its filing date.
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`SAS appreciates that in some cases the Board has exercised its discretion to
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`allow a petitioner to amend its RPI designation without affecting the petition’s filing
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`-19-
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`date; but those were cases where there was no “indication of an attempt to
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`circumvent estoppel rules, a petitioner’s bad faith, or prejudice to a patent owner.”
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`See Elekta Inc. v. Varian Med. Sys., Inc., No. IPR 2015-01401, 2015 WL 9898990,
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`at *5 (PTAB Dec. 31, 2015) (holding that Board has discretion to permit a petitioner
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`to correct defective real-party-in-interest disclosures “without changing the filing
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`date”) (emphasis added); Lumentum Holdings, Inc. v. Capella Photonics, Inc., No.
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`IPR2015-00739, 2016 WL 2736005, at *3 (PTAB Mar. 4, 2016) (precedential). But
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`such is not the situation here. The incontrovertible evidence reveals WPL’s
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`purposeful attempt to omit D2SL as an RPI (endeavoring to evade a U.S. judgment
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`and circumvent IPR estoppel), WPL’s and D2SL’s bad faith in so doing, and serious
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`prejudice to SAS as a result. Thus, in this case, the Board should decline to exercise
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`its discretion to allow WPL to amend its RPI designation without concomitantly
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`forfeiting its filing date. To do otherwise would encourage petitioners to attempt to
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`game the system, purposely omitting known RPIs, and if they get caught in the act,
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`simply seek a “no harm, no foul” decision from a lenient PTAB panel. Such
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`petitioner conduct violates both the letter and the spirit of the America Invents Act
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`(35 U.S.C. § 312(a)(2)), and is directly contrary to a fundamental quid pro quo
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`required of all IPR petitioners.
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`In its current form, the petition is defective under 35 U.S.C. § 312(a)(2)
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`because WPL did not identify D2SL as an RPI. Thus, to maintain this proceeding,
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`-20-
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`WPL must obtain leave from the Board to amend the petition to add D2SL as an RPI.
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`But because of WPL’s gamesmanship and bad faith, WPL should not be permitted
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`to make any such amendment while also preserving the petition’s original filing date.
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`And any amended petition with D2SL identified as an RPI should receive a new
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`filing date. But because that amended petition would be time barred under 35 U.S.C.
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`§ 315(b), any such amendment would be futile. The Board should thus decline to
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`institute this inter partes review for this independent reason.
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`A. The Real Party-In-Interest Inquiry
`A petition for inter partes review may be considered only if, inter alia, “the
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`petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). “That statutory
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`requirement . . . defines a ‘threshold issue’ for substantive review of the merits of
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`the challenges presented in the Petition.” Galderma S.A. v. Allergan Industrie, SAS,
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`IPR2014-01422, 2015 WL 1022410, at *3 (PTAB Mar. 5, 2015). The ultimate
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`burden of proof that all RPIs have been named is always with the petitioner.
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`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00488, 2015 WL
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`4264942, at *4 (PTAB May 22, 2015). While the Board may accept the petitioner’s
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`initial identification of the RPIs, the patent owner may present rebuttal evidence
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`questioning the accuracy of the RPI identification. Id.
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`The Office Patent Trial Practice Guide provides guidance on factors to
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`consider in determining whether a party is an RPI. Considerations may include
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`whether a non-party exercises control over a petitioner’s participation in a
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`proceeding. 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). Other factors may
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`include whether a non-party is funding the proceeding or directing the proceeding.
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`Id. at 48, 759-60.
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`The Patent Office has recognized that whether a non-party must be identified
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`in a proceeding as an RPI is a “highly fact-dependent question,” and that “[s]uch
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`questions will be handled by the Office on a case-by-case basis taking into
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`consideration how courts have viewed [those] terms.” Id. at 48759. As articulated
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`by the Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’
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`demands a flexible approach that takes into account both equitable and practical
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`considerations, 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.”
`
`Applications in Internet Time, LLC v. RPX Corporation, 897 F.3d 1336, 1351 (Fed.
`
`Cir. 2018).
`
`B.
`
`The 2018+ E.D. Texas Litigation – The Predicate Lawsuit For
`This IPR
`On July 18, 2018, SAS sued WPL in the Eastern District of Texas for, inter
`
`alia, infringement of the ’519 patent and the ’686 patent. SAS Institute Inc. v. World
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`Programming Limited et al., No. 2-18-cv-00295 (E.D. Tex. 2018); Ex. 2002 at 1. In
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`its complaint, SAS accused WPL’s software product, called “WPS”, of infringing
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`the asserted patents. Id. at 2 ¶ 3. SAS served the complaint on WPL on August 10,
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`
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`-22-
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`
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`2018. Ex. 2003. On August 5, 2019, just days before the statutory one-year bar date,
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`WPL filed the petition in this proceeding.
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`C. The 2010+ E.D. North Carolina Litigation – The Earlier Case
`Between The Parties Resulting In A $79 Million Judgment
`Against WPL
`In 2010, SAS sued WPL for, inter alia, copyright infringement, breach of
`
`contract, and fraud (added in 2013). SAS Institute Inc. v. World Programming
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`Limited et al., Case No. 5:10-cv-25-FL (E.D.N.C. 2010). Ex. 2004. After extensive
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`litigation, on October 9, 2015, a jury awarded SAS approximately $26 million in
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`damages.4 Ex. 2005. That award was later trebled under state law because of WPL’s
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`fraud, thus totaling approximately $79 million.
`
`Shortly after the E.D.N.C. jury verdict,
`
`
`
`, on December 11, 2015, WPL formed “December 2015 Software
`
`Limited” or D2SL, a U.K. holding company. Ex. 2006 at 3; see Ex. 2007 at 3,
`
`§§ 1.2-1.4 (
`
`
`
`
`4 WPL’s accused software product, WPS, is a clone of SAS. See, e.g., Ex.
`
`2004 at 6, ¶¶ 19-20; see also, e.g., Ex. 2002 at 2, ¶¶ 2-3. The jury found WPL guilty
`
`of breach of contract and fraud (see Ex. 2005) because WPL fraudulently obtained
`
`many copies of SAS and then reverse engineered that software, contrary to the
`
`express software license terms.
`
`
`
`-23-
`
`
`
`
`
`
`
`); Ex. 2008 at 1, ¶ 1 (same). At that time, the directors/owners of both WPL
`
`and D2SL
`
` (Ex. 2008 at 2), and they remain largely the
`
`same individuals today. Ex. 2006 at 2, 4. About a month later,
`
`
`
`. Ex. 2007 at 10, § 4.
`
`
`
`. Id. The WPS
`
`software is the same product that SAS has accused of infringing the ’519 Patent in
`
`the E.D. Texas litigation, which is the subject of WPL’s IPR petition here. See supra
`
`Part III.B; Ex. 2002 at 2, ¶ 3.
`
`The Directors/Owners Of WPL And D2SL Largely Overlap
`1.
`Public records reveal that the Directors/Owners of WPL and D2SL are largely
`
`the same individuals: Oliver Robinson, Samuel Manning, Martin Jupp, Thomas
`
`Quarendon, and Peter Quarendon. Ex. 2006 at 2, 4. Mr. Robinson, a director/owner
`
`of both entities,
`
`in the E.D.N.C. litigation:
`
` in his post-trial deposition
`
`
`
`
`
`-24-
`
`
`
`Ex. 2009 at 27:28 – 28:12.
`
`Mr. Robinson further acknowledged that
`
`:
`
`
`
`
`
`
`
`
`Id. at 29:6-8, 38:23-24; 39:7-9.
`
`
`
`-25-
`
`
`
`Accordingly, there can be no tenable dispute that the directors/owners of the
`
`two companies
`
` remain today – largely the same individuals.
`
`Thus, the decisions to file this IPR and manage its progress are made by the same
`
`group of decision-makers for both companies.
`
` This IPR
`D2SL Controls
`2.
`While in some cases the pivotal question of “Who controls the IPR
`
`proceeding?” remains elusive, that question is answered here literally in black and
`
`white: D2SL. In particular, relevant portions of the parties’
`
`
`
` agreement are reproduced below:
`
`* * *
`
`
`
`-26-
`
`
`
`
`
`
`
`
`***
`
`* * *
`
`Ex. 2007 at 1, 10, 22.
`EX. 2007 at 1, 10, 22.
`
`
`
`-27-
`
`-27-
`
`
`
`Thus, as set forth in the parties’ Agreement,
`
`:
`
`* * *
`
`
`
`
`Id. at 10, 22 (emphases added).
`
`Therefore, the parties’
`
`
`
`-28-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`.
`
`
`
`These facts, which cannot tenably be contested, establish that D2SL is an RPI in this
`
`proceeding, and should have been named as such by WPL in its petition.
`
`3. WPL’s Conduct Demonstrates Gamesmanship And Bad
`Faith
`The parties’ E.D.N.C. litigation remains ongoing due to WPL’s nonpayment
`
`of the $79 million judgement, although all appeals have been exhausted and the
`
`judgment is now final. Unable to appeal further in the U.S., WPL (as a U.K. citizen)
`
`sought – and obtained – the protection of the U.K. courts in an attempt to nullify the
`
`final U.S. judgment, hoping to evade SAS’s ongoing collection efforts. In this
`
`regard, WPL has expended considerable efforts to contravene the U.S. District
`
`Court’s judgment, and – in the words of Judge Flanagan of the Eastern District of
`
`North Carolina – WPL’s actions have “frustrate[d]” that judgment and are in “direct
`
`contravention of this court’s judgment and contrary to United States law governing
`
`enforcement.” Ex. 2011 at 17-25.
`
` For example, WPL sought and obtained an Injunction and Order issued by a
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`U.K. judge on an ex parte basis at a hearing about which neither SAS nor its counsel
`
`was informed. The first page of the U.K. Injunction contains this “Penal Notice”:
`
`
`
`-29-
`
`
`
`
`
`Ex. 2010 at 1.
`
`
`The U.K. Injunction prohibits SAS from certain litigation activities in U.S.
`
`courts and mandates that SAS take other actions. Id. at 3-6. For example, the UK
`
`Injunction blocked SAS from filing a brief that same day in connection with SAS’s
`
`efforts to enforce the judgment in the U.S. (id. at 4, ¶ 3(d)), and forced SAS to seek
`
`a stay of those efforts instead. Id. at 5, ¶ 4. The U.K. Injunction further restricts
`
`SAS’s access to “any other court of the USA (state or federal).” Id. at 3, ¶ 3(b).
`
`Paragraph 3 prohibits SAS from seeking “in personam relief” or any relief of
`
`“similar nature and/or effect,” including relief that would require WPL to “assign or
`
`transfer to SAS” any of its assets. Id. at 3-4, ¶¶ 3(a), (c)(i), (c)(ii).
`
`WPL’s argument to the U.K. court in pursuit of this injunction stressed the
`
`company’s English citizenship (Ex. 2012 at 15), and contended that “[t]he core of
`
`WPL’s case” is “about WPL, a quintessentially English company, protecting its core
`
`business from interference by virtue of exorbitant US court orders.” Id.
`
`Judge Flanagan’s reaction to WPL’s conduct in seeking to evade the U.S.
`
`judgment, as excerpted below, reveals WPL’s bad faith conduct with respect to the
`
`U.S. legal system:
`
`[WPL’s action to claw back money that SAS recovers pursuant
`to U.S. collection procedures] in the United Kingdom also frustrates
`the court’s orders and judgment in a broader sense. SAS, as creditor
`of a judgment entered in the United States District Court for the Eastern
`
`
`
`-30-
`
`
`
`District of North Carolina, affirmed by the United States Court of
`Appeals for the Fourth Circuit, wh
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