Trials@uspto.gov
`571-272-7822
`
`Paper 73
`Entered: September 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAPTIONCALL, L.L.C.,
`Petitioner,
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner.
`____________
`
`Cases1
`IPR2015-00636 (Patent 8,917,822) IPR2015-00637 (Patent 8,908,838)
`IPR2015-01355 (Patent 5,974,116) IPR2015-01357 (Patent 6,934,366)
` IPR2015-01358 (Patent 7,006,604) IPR2015-01359 (Patent 6,493,426)
` IPR2015-01889 (Patent 9,131,045)
`____________
`
`
`
`
`
`
`
`Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`ORDER
`Denying Patent Owner’s Motion to Dismiss
`37 C.F.R. § 42.72
`
`
`1 This Order addresses issues that are substantially similar in the cases. We
`exercise our discretion to issue one order to be filed in each case.
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`I. INTRODUCTION2,3
`As authorized by the Board, Patent Owner (Ultratec, Inc.) filed a
`Motion to Dismiss the Petition for Failure to Name All Real Parties-in-
`Interest in each of the proceedings at issue here. Paper 45 (“Mot.” or
`“Motion”), Paper 48 (redacted version). In its Motion, Patent Owner
`indicated that it “is in possession of two documents . . . which unequivocally
`establish” the existence of an undisclosed real party-in-interest having
`“direct control over IPR proceedings between the parties.” Id. at 14. These
`two documents, however, were not submitted with Patent Owner’s Motion.
`Patent Owner represents that these two documents could not have been
`submitted with its Motion because protective orders covering the documents
`had been entered in litigation matters in district court. Id. Shortly thereafter,
`Patent Owner requested relief from the protective order, which the District
`Court granted. See Paper 51, 2. As authorized by the Board, Patent Owner
`filed the documents, along with the District Court order. See Paper 51, 4;
`Exs. 2106, 2107 (Sorenson Holdings financial documents); Ex. 2108
`(District Court order). After Patent Owner filed these documents, Petitioner
`(CaptionCall, L.L.C.) filed an opposition to Patent Owner’s Motion
`
`
`2 Unless otherwise indicated, paper numbers refer to IPR2015-00636.
`3 This Order is a public version of Paper 95 (confidential version of “Order
`Denying Patent Owner’s Motion to Dismiss”), issued Aug. 30, 2016.
`Paper 95 requested that the parties file a joint notice identifying what, if any,
`protective order material or confidential information is mentioned in that
`Order. The Joint Notice confirms “that no protective order material or
`confidential information is mentioned in the August 30, 2016 Order denying
`Patent Owner’s Motion to Dismiss.” Paper 96, 2.
`
`2
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`(Paper 57, “Opposition” or “Opp.”), and Patent Owner filed a reply to
`Petitioner’s opposition (Paper 67; Paper 68 (redacted version),
`“Reply”). Both Petitioner’s Opposition and Patent Owner’s Reply
`substantially address in detail the two documents. See Opp. 11–12; Reply 6.
`The proceedings at issue here are on three different trial schedules.
`First, petitions for two of the proceedings—IPR2015-00636 and IPR2015-
`00637—were filed more than a year ago on January 29, 2015, trial was
`instituted for each petition on September 8, 2015, and oral hearings were
`held for those proceedings on April 6, 2016. A transcript of the hearing in
`relation to the Motion to Dismiss has been entered into the record. Paper 88
`(Sealed Transcript).
`Second, petitions in four proceedings at issue here—IPR2015-01355,
`IPR2015-01357, IPR2015-01358, and IPR2015-01359—were filed in June
`2015, trials were instituted in mid-December 2015, and oral hearings are
`scheduled for September 28, 2016. Third, a petition in IPR2015-01889 was
`filed in September 2015, a trial was instituted in March 2016, and an oral
`hearing, if requested, is scheduled for November 22, 2016.
`Other petitions challenging Patent Owner’s patents also have been
`filed by Petitioner. For example, Petitioner filed eight other petitions4
`challenging Patent Owner’s patents in August 2013 for which trials were
`instituted in March 2014 and final written decisions issued in March 2015.
`See, e.g., IPR2013-00540, Papers 2, 78. An appeal to the United States
`
`
`4 IPR2013-00540, IPR2013-00541, IPR2013-00542, IPR2013-00543,
`IPR2013-00544, IPR2013-00545, IPR2013-00549, and IPR2013-00550.
`
`3
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`Court of Appeals for the Federal Circuit is pending for each of those inter
`partes reviews (collectively, “the appealed inter partes reviews”). See, e.g.,
`IPR2013-00540, Paper 81.
`In addition to inter partes reviews, the parties are engaged with one
`another in various proceedings in district court, and Petitioner has been
`involved in bankruptcy proceedings. See, e.g., IPR2015-00636, Paper 1, 2;
`Opp. 2 (referring to bankruptcy documents).
`
`II. DISCUSSION
`The Petitions in each of the proceedings at issue here name
`CaptionCall, L.L.C. (“CaptionCall”) and Sorenson Communications, Inc.
`(“Sorenson Communications”) as real parties-in-interest. See, e.g.,
`IPR2015-00636, Paper 1, 2; IPR2015-01355, Paper 1, 3; IPR2015-01889,
`Paper 1, 2. Patent Owner’s Motions to Dismiss contends that Petitioner’s
`parent company, Sorenson Holdings, LLC (“Sorenson Holdings”) is a real
`party-in-interest to these proceedings, should have been named in the
`Petitions, and, therefore, the Petitions should be dismissed. Mot. 1; see
`35 U.S.C. § 312(a)(2) (requiring a petition to identify all real parties-in-
`interest). Petitioner opposes, contending that Sorenson Holdings is not a real
`party-in-interest and Patent Owner’s Motions are untimely. Opp. 2, 4.
`As movant, Patent Owner bears the burden of showing by a
`preponderance of evidence that Sorenson Holdings is a real party-in-interest
`and, therefore, the proceeding should be terminated because Sorenson
`Holdings is a real party-in-interest not named in the Petition.
`37 C.F.R. §§ 42.1(d) (evidentiary standard), 42.20(c) (“The moving party
`has the burden of proof to establish it is entitled to the requested relief.”).
`
`4
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`The allocation of burden here reflects the posture in which the issue is
`raised—in a motion in which the movant bears the burden of proof. This is
`consistent with determinations by other panels of the Board. See, e.g.,
`Corning Optical Commc’ns RF, LLC v. PPC Broadband, Inc.,
`Case IPR2014-00440 slip op. at 13–14, 25 (PTAB Aug. 18, 2015) (Paper
`68) (granting motion to dismiss after institution because “Patent Owner has
`established by a preponderance of the evidence that Petitioner is not the sole
`[real party-in-interest] as stated in the Petition”); First Quality Baby
`Products, LLC v. Kimberly-Clark Worldwide, Inc., Case IPR2014-01021,
`slip op. at 12 (PTAB July 16, 2015) (Paper 42) (denying motion to vacate
`institution decision because “Patent Owner has not shown sufficiently that
`the Petition failed to name all real parties-in-interest”).
`The Board has allocated the burden for establishing whether an
`unnamed party is a real party-in-interest to the proceeding differently where
`the issue was raised by the patent owner in its preliminary response, which is
`not the case in any of the proceedings here. See, e.g., Galderma S.A. v.
`Allergan Industrie, SAS, Case IPR2014-01422, slip op. at 6–7, 14 (PTAB
`Mar. 5, 2015) (Paper 14) (denying institution); Zerto, Inc. v. EMC Corp.,
`Case IPR2014-01254, slip op. at 6–7 (PTAB Mar. 3, 2015) (Paper 35)
`(denying institution).
`For the reasons discussed below, we determine that Patent Owner has
`not shown that Sorenson Holdings is an unnamed real party-in-interest, and
`we deny Patent Owner’s Motion on that basis. Accordingly, we need not
`reach the issue whether Patent Owner’s Motions are untimely.
`
`5
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`A. Real Party-in-Interest Considerations and Factors
`Whether a non-identified party is a real party-in-interest to a
`proceeding is a highly fact-dependent question. Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”)
`(citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “Courts invoke the terms
`‘real party-in-interest’ and ‘privy’ to describe relationships and
`considerations sufficient to justify applying conventional principles of
`estoppel and preclusion.” Id. The Office recognizes that the common-law
`expression of a real party-in-interest as one who is entitled to enforce a right
`“does not fit directly into the AIA trial context.” Id. “However, the spirit of
`that formulation as to IPR . . . proceedings means that, at a general level, the
`‘real party-in-interest’ is the party that desires review of the patent.” Id.
`The real party-in-interest “may be the petitioner itself, and/or it may be the
`party or parties at whose behest the petition has been filed.” Id.
`There is no “bright line test” for the degree of a party’s participation
`in a proceeding necessary to qualify as a real party-in-interest. Id. The
`Supreme Court in Taylor sets forth a list of factors that might be relevant in
`a particular case. Taylor, 553 U.S. at 893–95. “A common consideration is
`whether the non-party exercised or could have exercised control over a
`party’s participation in a proceeding.” Trial Practice Guide, 77 Fed. Reg. at
`48,759 (citing Taylor, 553 U.S. at 895). The inquiry is focused on the
`relationship of the party to the proceeding at issue; demonstrating a
`relationship between the parties is not sufficient.
` Factors for determining actual control of a proceeding or the
`opportunity to control a proceeding include existence of a financially
`
`6
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`controlling interest in the petitioner. Rules of Practice for Trials Before the
`Patent Trial and Appeal Board and Judicial Review of Patent Trial and
`Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,617 (Aug. 14,
`2012). Additional relevant factors include: the non-party’s relationship with
`the petitioner; the non-party’s relationship to the petition itself, including the
`nature and/or degree of involvement in the filing; and the nature of the entity
`filing the petition. Trial Practice Guide, 77 Fed. Reg. at 48,760. A party,
`however, does not become a real party-in-interest merely through
`association with another party in an endeavor unrelated to the IPR
`proceeding. Id.
`“The Office generally will accept the petitioner’s ‘real party-in-
`interest’ identification at the time of filing the petition.” Final Rule, 77 Fed.
`Reg. at 48,695 (Response to Comment 9). “The patent owner may provide
`objective evidence to challenge the identification in a preliminary response,
`which the Board will consider in determining whether to grant the petition.”
`Id. Further concerning the timing of bringing a challenge to real party-in-
`interest identification, the Final Rule indicates that such a challenge “should
`be brought before or with the filing of the patent owner preliminary
`response,” but does not preclude a later challenge. Final Rule, 77 Fed. Reg.
`at 48,695 (Response to Comment 8).
`
`B. Patent Owner’s Motions
`According to Patent Owner, Sorenson Holdings is a real party-in-
`interest to these proceedings and was not named in the Petitions. Patent
`Owner explains that Sorenson Holdings became the “ultimate parent
`company” of CaptionCall and Sorenson Communications when they
`
`7
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`“emerged from Chapter 11 reorganization with a new corporate structure”
`on April 30, 2014. Mot. 3–4 (citing Ex. 1031, 24, 158; Ex. 2068, 68;
`Ex. 2080, 1; Ex. 2081, 18). Patent Owner contends that the evidence as a
`whole shows Sorenson Holdings “has or could have exercised control over
`these proceedings” and, thus, is a real party-in-interest. Id. at 4–15;
`Reply 4–6. Furthermore, Patent Owner asserts that “[Sorenson] Holdings
`not only controlled but actually exercised its control over [Sorenson]
`Communications and CaptionCall regarding this proceeding.” Mot. 4.
`According to Patent Owner, the lines of corporate distinction between
`Sorenson Holdings and the identified real parties-in-interest (i.e.,
`CaptionCall and Sorenson Communications) are indistinct (id. at 4–11), a
`representative from Sorenson Holdings was put forward to settle a dispute
`between the parties (id. at 11–13), and financial reports of Sorenson
`Holdings “show Sorenson Holdings’ direct control over [inter partes review]
`proceedings between the parties” (id. at 13–15).
`Petitioner counters by contending Patent Owner’s evidence does not
`prove a connection between Sorenson Holdings and these proceedings, and,
`thus, Sorenson Holdings is not an unnamed real party-in-interest to these
`proceedings. See generally Opp. 5–14.
`
`C. Patent Owner’s Evidence
`To support its contentions that Sorenson Holdings has or could have
`controlled these proceedings, Patent Owner relies on (1) documents related
`to Sorenson Communications’s application to the Federal Communications
`Commission concerning its captioning service, (2) bankruptcy documents,
`(3) financial reporting documents of Sorenson Holdings, (4) settlement
`
`8
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`negotiation electronic messages (“email”), (5) a press release describing a
`loan transaction, and (6) evidence of common management.
`
`1. The Federal Communications Commission Application Documents
`To support its contention that Sorenson Holdings has or could have
`controlled these proceedings, Patent Owner relies on evidence related to an
`application, dated March 18, 2014, from Sorenson Communications to the
`Federal Communications Commission (“FCC”) requesting Sorenson
`Communications be permitted to continue to receive payment from the
`Interstate TeleCommunications Relay Service Fund for providing video
`relay services and Internet protocol captioned telephone service. Ex. 2066,
`5, 8.5 In its FCC application, Sorenson Communications sought “special
`temporary authority” to operate “under the new ownership and structure”
`described as a financial restructuring plan in the FCC application and related
`to its bankruptcy proceedings. Id. at 8. The FCC application indicates the
`restructuring plan “will extinguish prior equity interests, result in the
`issuance of new equity interests, principally to entities that formerly were
`holders of the senior secured notes, and adopt a new debt structure” with
`certain favorable attributes. Id.
`Based on evidence related to the FCC application, Patent Owner
`contends that Sorenson Holdings has a unique Board of Directors and “is, in
`turn, controlled by” two majority equity holders. Mot. 5. According to
`Patent Owner, these “outside interests control the activities of [Sorenson]
`
`
`5 Page numbers cited for Ex. 2066 refer to the exhibit page numbers, not to
`the page numbers of the application itself.
`
`9
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`Communications and CaptionCall.” Id. For support in its Motion, Patent
`Owner quotes from a supplemental submission to the FCC:
`More specifically, in a supplemental submission to the FCC to
`allow Communications to continue to receive reimbursement
`from
`the FCC's TRS fund, Communications explained
`“[p]ursuant to the Plan, the Board of Managers for the new
`holdco [Holdings6] and the details of the new holdco’s
`[Holdings] governance structure will be determined by GSO and
`Franklin7 in their sole discretion.”
`Id. at 5 (quoting Ex. 2082, 12; incorrectly citing Ex. 2081, 12) (alterations in
`original). Patent Owner relies on the FCC’s response granting interim
`approval that, according to Patent Owner, confirmed the reorganized entity
`“will be under the indirect control of two owners”—identifying the two
`majority equity holders by name—“or certain investment funds managed or
`sub-advised by these entities.” Mot. 5 (quoting Ex. 2083, 2–3).
`We agree with Petitioner (Opp. 7) that Patent Owner’s evidence about
`determining the composition of the Board of Managers and governance
`structure of Sorenson Holdings does not indicate control over these
`proceedings. We also agree with Petitioner (id.) that other general
`statements about the reorganized corporate structure on which Patent Owner
`relies describe a parent-subsidiary relationship. Sorenson Holdings’s parent-
`subsidiary relationship with CaptionCall and Sorenson Communications is
`not sufficient to establish Sorenson Holdings is a real party-in-interest to
`
`
`6 In its Motions, Patent Owner refers to Sorenson Holdings as “Holdings.”
`See, e.g., Mot. 1 (indicating “Sorenson Holdings, LLC (‘Holdings’)”).
`7 In its Motions, Patent Owner refers to the two majority equity holders as
`“GSO and Franklin.” See, e.g., Mot. 5.
`
`10
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`these proceedings. The mere existence of a corporate relationship between a
`petitioner and a parent company—without connection to the proceeding at
`issue—is insufficient to demonstrate a real party-in-interest issue. See Trial
`Practice Guide, 77 Fed. Reg. at 48,760 (indicating relevant factors to
`consider include, but are not limited to, the unnamed party’s relationship to
`petitioner).
`Patent Owner further contends that the FCC application presents “the
`entire Sorenson family of companies (i.e., [Sorenson] Holdings and its
`subsidiaries) to the FCC as a single operational entity” to gain approval for
`both Sorenson Communications and CaptionCall to continue being
`reimbursed for captioning services. Mot. 7–10. We disagree with Patent
`Owner’s characterization of this evidence. As noted by Patent Owner, the
`FCC application indicates CaptionCall will continue to provide captioning
`services “as a subcontractor” through Sorenson Communications until
`CaptionCall receives a separate certification. Id. at 8 (citing Ex. 2084, 5).
`We disagree that this shows Sorenson Holdings operating as a “single
`operational entity.” Rather, this supports Petitioner’s contention (Opp. 8)
`that the FCC application documents show Sorenson Communications and
`CaptionCall are operational entities separate from their parent Sorenson
`Holdings. As noted by Petitioner (id.), the FCC application documents
`further indicate that “Sorenson [Communications] will remain the certified
`[captioning service] provider, with support from CaptionCall, until the
`[FCC] acts on CaptionCall’s separate application.” Ex. 2081, 22. This
`further undermines Patent Owner’s position that the FCC application
`presents the companies as a single operational entity.
`
`11
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`Thus, we determine that the FCC application documents as a whole
`pertain to FCC certification for Sorenson Communications and CaptionCall
`in view of the bankruptcy reorganization. The generalized control alluded to
`in the FCC documents reflects the parent-subsidiary corporate structure,
`without blurring corporate lines. The FCC application documents do not
`otherwise blur corporate lines or show Sorenson Holdings controlled or had
`the ability to control these proceedings.
`Moreover, we weigh Patent Owner’s FCC application evidence in
`view of its context—Sorenson Communications gaining “special temporary
`authority” to operate “under the new ownership and structure” described as a
`financial restructuring plan in the FCC application and related to its
`bankruptcy proceedings (Ex. 2066, 4)—an endeavor unrelated to the inter
`partes reviews at issue here. The timing of the FCC application further
`undermines Patent Owner’s position that these documents show that
`Sorenson Holdings controlled these proceedings. Sorenson
`Communications gained approval nine months before the earliest petition for
`inter partes review at issue here was filed. See Ex. 2083, 1 (approval notice
`dated April 24, 2014); Paper 5 (according the petition in IPR2015-00636 a
`filing date of January 29, 2015).
`
`2. The Bankruptcy Documents
`To support its contentions that Sorenson Holdings has or could have
`controlled these proceedings, Patent Owner also relies on documents related
`to bankruptcy restructuring. Patent Owner contends that Sorenson
`Communications’s bankruptcy documents “confirm that [Sorenson]
`Holdings maintains the exclusive right to pursue litigation against other
`
`12
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`entities, including Patent Owner.” Mot. 6; see Reply 5. The bankruptcy
`documents indicate, in the Schedule of Retained Causes of Action, that
`“[t]he Reorganized Debtors will have the exclusive right, authority, and
`discretion to determine and to initiate, file, prosecute, enforce, abandon,
`settle, compromise, release, withdraw, or litigate to judgment any such
`Causes of Action.” Mot. 6 (citing Ex. 2090, 1) (emphasis omitted). Also, as
`noted by Patent Owner (Mot. 6), an exhibit to the Schedule of Retained
`Causes of Actions identifies “Claims, Defenses, Cross-Claims, and Counter-
`Claims Related to Litigation and Possible Litigation[]” and identifies the
`eight appealed inter partes reviews, which are not at issue here. Ex. 2090,
`10 (Exhibit A(iv)). Based on this evidence, and because the term “Debtor”
`in the bankruptcy documents “includes Sorenson Holdings, Inc., which, . . .
`was converted to [Sorenson] Holdings,” Patent Owner asserts that Sorenson
`Holdings “possesses actual control over the IPR proceedings.” Mot. 6
`(citing Ex. 2089, 1, n.1; Ex. 2090, 1, 10).
`We do not agree with Patent Owner; rather, we agree with Petitioner
`that the evidence shows that each of the reorganized debtors, including
`Sorenson Communications and CaptionCall, had its own, exclusive right to
`litigation. The omitted portion of the sentence following Patent Owner’s
`citation is instructive for providing context: “[t]he Reorganized Debtors will
`have the exclusive right, authority, and discretion to determine and to
`initiate, file, prosecute, enforce, abandon, settle, compromise, release,
`withdraw, or litigate to judgment any such Causes of Action, or to decline to
`do any of the foregoing, without the consent or approval of any third party
`
`13
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`or any further notice to or action, order, or approval of the Bankruptcy
`Court.” Ex. 2090, 1 (omitted portion italicized).
`Moreover, as noted by Petitioner (Opp. 10), “Reorganized Debtors,”
`as used in Exhibit 2090, is not limited to Sorenson Holdings (as Patent
`Owner’s argument would seem to suggest) but includes Sorenson
`Communications and CaptionCall, among other entities. Ex. 2089, 1, n.1
`(identifies “Debtors” as “Sorenson Communications, Inc. (0555); Allied
`Communications, Inc. (3611); CaptionCall, LLC (9444); SCI Holdings, Inc.
`(9815); Sorenson Communications Holdings, LLC (9866); Sorenson
`Communications of Canada, ULC (9719); and Sorenson Holdings, Inc.
`(0427)”); Ex. 1031, 98 (defining “Reorganized Debtor” as a “Debtor, or any
`successor or assign thereto, by merger, consolidation, or otherwise, on or
`after the Effective Date”); Ex. 1031, 94 (defining “Debtors” consistently
`with Ex. 2089). This supports Petitioner’s position that each of the
`reorganized debtors, including Sorenson Communications and CaptionCall,
`had its own, exclusive right to litigation. This undermines Patent Owner’s
`position that Sorenson Holdings (and not CaptionCall or Sorenson
`Communications) has or could have controlled these proceedings. Further,
`we note that the bankruptcy documents pre-date the proceedings at issue
`here, which further diminishes the evidentiary value of the documents in
`supporting Patent Owner’s position.
`Thus, we are not persuaded by Patent Owner’s arguments that the
`bankruptcy documents show that Sorenson Holdings has the right to control
`these proceedings. See Reply 5.
`
`14
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`3. The Financial Reporting Documents
`To support its contentions that Sorenson Holdings has or could have
`controlled these proceedings, Patent Owner also relies on financial reporting
`documents of Sorenson Holdings. Mot. 13–15; Reply 6 (citing Ex. 2106,
`2107). Patent Owner contends that these documents “unequivocally
`establish that [Sorenson] Holdings, which has never been disclosed as a [real
`party-in-interest] in any IPR, has direct control over IPR proceedings
`between the parties.” Mot. 14 (referring to Exs. 2106, 21078). Patent Owner
`stops short of contending that these documents “unequivocally establish”
`Sorenson Holdings has direct control over these inter partes proceedings.
`The financial reports, referring to the appealed inter partes reviews
`not at issue here, indicate that “the Company has sought to invalidate” the
`eight patents involved in those proceedings. Ex. 2106, 33; Ex. 2107, 41.
`This evidence, however, does not establish direct control of the proceedings
`at issue here.
`First, the financial reporting documents are consolidated financial
`statements of Sorenson Holdings and its subsidiaries, “including its principal
`operating subsidiary, Sorenson Communications.” Ex. 2107, 3; see
`Ex. 2107, 4 (“This Financial Report contains unaudited consolidated
`financial statements of the Company and its subsidiaries . . . .”); Ex. 2107, 3
`
`
`8 Patent Owner’s Motion refers to these documents as “Bates numbered
`CC21821–CC21856 and CC21857–CC21898,” which were filed as
`Exhibits 2106 and 2107, respectively, subsequent to Patent Owner’s Motion.
`Petitioner’s Opposition and Patent Owner’s Reply refer to the documents as
`Exhibits 2106 and 2107.
`
`15
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`(confirming “Sorenson,” “we,” “our company,” and “our business” “refer to
`the Company [Sorenson Holdings] and its consolidated subsidiaries,
`including its principal operating subsidiary, Sorenson Communications”);
`Ex. 2106, 3 (“[T]he consolidated financial statements . . . present fairly . . .
`the financial position of Sorenson Holdings, LLC and its subsidiaries.”).
`Second, although the financial reports indicate “the Company” filed
`the eight appealed inter partes reviews, the “Company” does not refer only
`to Sorenson Holdings. Rather, the financial reports indicate that:
`‘Company’ . . . refers for accounting purposes to Sorenson
`Holdings, LLC, and its consolidated subsidiaries.
`Ex. 2107, 3. The term “Company” includes the consolidated subsidiaries
`(Sorenson Communications and CaptionCall). The term “Company” also
`indicates that the term is used for accounting purposes. This weighs against
`finding that Sorenson Holdings exercised control of these proceedings.
`Moreover, other evidence of record indicates Sorenson
`Communications and CaptionCall filed inter partes reviews challenging
`Patent Owner patents not at issue in these proceedings. A letter dated
`September 19, 2014, from Mr. Pat Nola, President and CEO of CaptionCall
`and Sorenson Communications, indicates that after an event involving
`“Sorenson and CaptionCall, we filed IPR Petitions with the Patent Trial and
`Appeal Board.” Ex. 2077. The letter is written on CaptionCall letterhead.
`Id.
`
`This evidence further supports a finding that the reference in the
`financial reporting documents that “the Company has sought to invalidate”
`eight patents in inter partes reviews refers to actions by its subsidiaries
`
`16
`
`

`
`IPR2015-00636 (Patent 8,917,822)
`IPR2015-01355 (Patent 5,974,116)
`IPR2015-01358 (Patent 7,006,604)
`IPR2015-01889 (Patent 9,131,045)
`
`IPR2015-00637 (Patent 8,908,838)
`IPR2015-01357 (Patent 6,934,366)
`IPR2015-01359 (Patent 6,493,426)
`
`Sorenson Communications and CaptionCall, rather than to action directly
`taken or controlled by Sorenson Holdings.
`Thus, we are not persuaded that the financial reporting documents
`show that Sorenson Holdings has the right to control, or has exercised its
`purported control over, these proceedings.
`
`4. Settlement Negotiation Emails
`Patent Owner also provides evidence purportedly showing that a
`Sorenson Holdings representative was put forward to settle a dispute
`between the parties. Mot. 11–13. According to Patent Owner, an email in
`November 2014 (before any of inter partes reviews at issue here were filed)
`evinces that the Chairman of the Board of Sorenson Holdings has settlement
`authority on behalf of Sorenson Communications and CaptionCall. Id.
`(citing Ex. 2071 (Nov. 7, 2014 email indicating settlement negotiations
`would be occurring and identifying settlement counsel); Ex. 2073 (Nov. 11,
`2014 email indicating three people, including Mr. Jim Continenza,
`“Chairman of the Board,” would be attending)). Patent Owner postulates
`that, because the settlement negotiations allegedly related to licensing “all of
`Patent Owner’s present and future patents related to” captioning services,
`Sorenson Holdings’s representative had settlement authority to settle a
`dispute involving Patent Owner’s patents at issue in these proceedings. Id.
`at 12–13; Reply 5–6. Patent Owner’s position seems to be that, because
`Sorenson Holdings’s Chairman had settlement authority for negotiations
`involving the patents at issue in these proceedings, Sorenson Holdings had
`settl