`Patent 7,174,362
`
`
`DOCKET NO.: 2211726-00143
`Filed on behalf of Unified Patents Inc.
`By: David L. Cavanaugh, Reg. No. 36,476
`Daniel V. Williams 45,221
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`Ashraf Fawzy, Reg. No. 67,914
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, DC, 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`UNIFIED PATENTS INC.
`Petitioner
`v.
`BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES
`Patent Owner
`IPR2017-01525
`Patent 7,174,362
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`AS AUTHORIZED ON OCTOBER 11, 2017
`
`
`
`
`
`IPR2017-01525
`Patent 7,174,362
`Petitioner files this Reply to address Patent Owner’s statements in the Patent
`
`Owner Preliminary Response (“POPR”) regarding Petitioner’s withdrawal of
`
`Exhibit 1011 (“voluntary responses”).
`
`I.
`
`BACKGROUND
`Petitioner submitted voluntary responses akin to those submitted in numerous
`
`prior proceedings. They addressed, especially early in the implementation of the IPR
`
`proceedings, Petitioner’s relationship with its members. Petitioner began providing
`
`such voluntary responses in the spirit of transparency and after it was raised with the
`
`Board in Clouding IP and Dragon IP. (IPR2013-00586, Paper 15; IPR2014-01252,
`
`Paper 23). Here, Patent Owner sought a deposition of Mr. Jakel, Petitioner’s CEO,
`
`prior to the POPR, based on his signature on the voluntary responses.
`
`Patent Owner offered no other reason for the deposition and did not raise any
`
`evidence or information challenging the relationship between Petitioner and its
`
`members. Petitioner sought to avoid an expensive, burdensome, premature
`
`deposition of Mr. Jakel; instead, Petitioner offered other reasonable forms of
`
`discovery, such as responding to RFPs, additional interrogatories, and/or providing
`
`a deposition transcript of Mr. Jakel on the same issue from IPR2014-01252, and
`
`asked Petitioner to suggest alternative, narrowly tailored, less burdensome
`
`discovery. Patent Owner refused.
`
`1
`
`
`
`IPR2017-01525
`Patent 7,174,362
`Because Patent Owner would not accept any other discovery short of a
`
`deposition on short notice, as the Board permitted in Digital Stream (IPR2016-
`
`01749, Paper 16), Petitioner requested that the voluntary responses be withdrawn.
`
`(Paper 7). On September 7, 2017, the Board granted Petitioner’s request. (Paper 8).
`
`Notwithstanding the withdrawal, all facts in Petitioner’s voluntary responses remain
`
`true. Expunging the voluntary responses leaves Patent Owner with the proper burden
`
`and the Parties in the position to negotiate appropriate discovery, if necessary.
`
`II.
`
`PETITIONER'S RESPONSE TO PATENT OWNER'S STATEMENTS
`Patent Owner’s argument that a negative inference should be drawn by
`
`Petitioner’s withdrawal of its voluntary responses is unwarranted and misleading.
`
`See, e.g., POPR at p. 55, l. 8-10; p. 56, l. 5-7, 11-15; p. 58, l. 3-6. First, as Petitioner
`
`expressed numerous times during meet and confers, the request to expunge the
`
`voluntary responses was a result of Patent Owner choosing not to pursue other less
`
`burdensome discovery. Petitioner also noted that the burden (regarding discovery
`
`and real-party-in-interest (“RPI”)) was on Patent Owner, that a certification and not
`
`the voluntary responses was all that was required under the rules, and that Patent
`
`Owner had provided nothing to contradict Petitioner’s RPI certification. Third, there
`
`is no reason to question the veracity of the voluntary responses, as Petitioner
`
`maintains that all facts therein are true and remains willing to consider narrowly
`
`tailored requests concerning them.
`
`2
`
`
`
`IPR2017-01525
`Patent 7,174,362
`Patent Owner further states that “[a]ny presumption afforded to Petitioner
`
`Patents on its real party-in-interest certification is now lost” due to the withdrawal
`
`of the voluntary responses. Id. at p. 58, l. 3-6. It is far from clear how Patent Owner
`
`can assert that anything “is now lost” by the withdrawal of a voluntary paper not
`
`required by the rules.
`
`Patent Owner’s statements that Petitioner was not willing to provide
`
`meaningful discovery regarding RPI are incorrect. Id., at p. 51, l. 11-17; p. 55, l. 8-
`
`10; p. 56, l. 5-7, 11-15; and p. 58, l. 3-6. To the contrary, Petitioner offered
`
`discovery that they chose not to pursue. For example, Blackbird bases its RPI
`
`arguments in part on a letter it received from defendants to a district court litigation.
`
`But Blackbird failed to mention this letter in any meet and confer and never
`
`requested discovery on the issue. Indeed, the POPR was the first time Petitioner
`
`learned of the letter.
`
`Patent Owner insinuates that Petitioner only offered self-serving discovery.
`
`Id. at p. 56, n. 8. Again, this misrepresentation ignores Petitioner’s offer for Patent
`
`Owner to suggest reasonable discovery tailored to a relevant issue. The reality is
`
`that Patent Owner chose not to pursue discovery and now, despite the lack of
`
`evidence, suggests a negative inference on Petitioner. Petitioner remains open to
`
`providing discovery on RPI consistent with the Rules.
`
`Respectfully Submitted,
`/David L. Cavanaugh/
`
`3
`
`
`
`IPR2017-01525
`Patent 7,174,362
`
`David L. Cavanaugh
`Registration No. 36,476
`
`Jonathan Stroud
`Registration No. 72,518
`
`Ashraf Fawzy
`Registration No. 67,914
`
`Daniel V. Williams
`Registration No. 45,221
`
`4
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on October 18, 2017 I caused a true and correct copy of
`
`the foregoing materials:
`
` Reply to Patent Owner’s Preliminary Response
`
`to be served via email as previously agreed by the parties
`
`Walter D. Davis, Jr.: wdavis@dbjg.com
`Wayne M. Helge: whelge@dbjg.com
`Aldo Noto: anoto@dbjg.com
`
`
`
`
`/Daniel V. Williams/
`Daniel V. Williams
`
`1
`
`