Trials@uspto.gov
`571-272-7822
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` Paper No. 60
` Date: December 19, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2018-00952
`Patent 9,253,239 B2
`_____________
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`Before BRYAN F. MOORE, BRIAN J. McNAMARA, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining the Challenged Claim Unpatentable
`35 U.S.C. § 318(a)
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`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Unified Patents Inc. (“Petitioner” or “Unified Patents”) challenges the
`patentability of claim 20 (the “challenged claim”) of U.S. Patent
`No. 9,253,239 B2 (Ex. 1001, “the ’239 patent”), owned by Bradium
`Technologies LLC (“Patent Owner” or “Bradium”). This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, we determine Petitioner has shown by a
`preponderance of the evidence that claim 20 of the ’239 patent is
`unpatentable.
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`II. BACKGROUND
`A. Procedural History
`On April 23, 2018, Petitioner filed a Petition (Paper 2, “Pet.”)
`requesting inter partes review of claims 1–25 of the ’239 patent. Patent
`Owner filed a Preliminary Response (Paper 19 (filed under seal), Paper 20
`(redacted public version)) (“Prelim. Resp.”). With our authorization,
`Petitioner filed a paper to address the real party-in-interest issue raised in the
`Preliminary Response (Paper 25 (filed under seal), Paper 26 (redacted public
`version)) and Patent Owner filed a response (Paper 30 (filed under seal),
`Paper 29 (redacted public version)).
`After the filing of the Petition, Patent Owner filed a statutory
`disclaimer of claims 1–19 and 21–25, leaving only claim 20 for our
`consideration. Ex. 2027; see Prelim. Resp. 1. On December 20, 2018, we
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`instituted an inter partes review of claim 20 based on the only remaining
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`ground as follows (Paper 31, “Dec- on Inst,” 41).
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`usuuuussss ssm 103(a)l
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`Reddy,2 Hombacker,3 and Rosasco4
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`After institution of trial, Patent Owner filed a Patent Owner Response
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`G’aper 38 (filed under seal), Paper 37 (redacted public version)) (“PO
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`Resp”), Petitioner filed a Reply to Patent Owner Response @aper 41,
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`“Reply”), and Patent Owner filed a SUI-Reply G’aper 45 (filed under seal),
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`Paper 46 (redacted public version» (“SUI-Reply”). Patent Owner also filed
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`a contingent Motion to Amend G’aper 39), which was withdrawn upon our
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`authorization @aper 56). In addition, Petitioner filed motions to seal various
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`papers and exhibits containing purportedly confidential information relating
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`to the real party-in—interest issue. Papers 18, 24, 33, 53. An oral hearing
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`was held on September 17, 2019, and a copy ofthe hearing transcript has
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`been entered into the record. Paper 59 (“TL”).
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`1 The Leahy-Smith America Invents Act, Pub- L- No. 112-29, 125 Stat- 284
`(2011) (“”,AIA) amended 35 U-S-C- § 103. Because the ’239 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendment, we refer to the pre-AIA version of § 103.
`
`2 Ex- 1004, M Reddy, Y. Leclerc, L- Iverson, N. Bletter, Terra Vision II:
`Visualizing Massive Terrain Databases in VRML, IEEE Computer Graphics
`and Applications, V01 19, No- 2, 30—38, IEEE Computer Society,
`March/April 1999 (“Reddy”)-
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`3 Ex. 1003, WO 99/41675 (Aug. 19, 1999) (“Hombacker”).
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`4 EX. 1018, US. Patent No. 6,317,137 B1 (Nov. 13, 2001) (“Rosasco”).
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`B. Related Proceedings
`According to Petitioner, the ’239 patent was the subject of the
`following closed proceedings: Bradium Techs. LLC v. Microsoft Corp.,
`1-15-cv-00031, (D. Del.) (dismissed Oct. 18, 2017); Microsoft Corp. v.
`Bradium Techs. LLC, IPR2016-01897 (terminated Dec. 21, 2017).
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`C. Real Party-in-Interest
`Petitioner identifies only itself, Unified Patents Inc., as the real party-
`in-interest. Pet. 2. Patent Owner contends that Petitioner has failed to
`identify all real parties-in-interest. See infra.
`Patent Owner identifies itself, General Patent Corporation, and MAN
`Holdings LLC, as the real parties-in-interest. Paper 15, 1.
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`D. The ’239 Patent
`The ’239 patent describes a network-based image distribution system
`for retrieving large-scale images over network communication channels for
`display on client devices. Ex. 1001, 1:27–28, code (57). The retrieval of
`large-scale images is achieved by selecting an update image parcel of a
`predetermined image relative to an operator controlled image viewpoint to
`display on the client device. Id. at 3:47–51, code (57). A request for an
`update image parcel is associated with a request queue for subsequent
`issuance over a communication channel. Id. at 3:51–54. The update image
`parcel is received in one or more data packets on the communications
`channel and is displayed as a discrete portion of the predetermined image.
`Id. at 3:54–60. The update image parcel optimally has a fixed pixel array
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`size and may be constrained to a resolution equal to or less than the display
`device resolution. Id.
`The system described in the ’239 patent has a network image server
`and a client system where a user can input navigational commands to adjust
`a 3D viewing frustum for the image displayed on the client system.
`Ex. 1001, 5:26–55. When the viewing frustum is changed by user
`navigation commands, a control block in the client device determines the
`priority of the image parcels to be requested from the server “to support the
`progressive rendering of the displayed image,” and the image parcel requests
`are placed in a request queue to be issued in priority order. Id. at 7:45–62.
`On the server side, high-resolution source image data is pre-processed
`by the image server to create a series of derivative images of progressively
`lower resolution. Ex. 1001, 6:3–8. Figure 2 of the ’239 patent is reproduced
`below.
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`Figure 2 of the ’239 patent depicts preparation of pre-processed image
`parcels at the network image server. See id. at 4:57–60, 6:10. As illustrated
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`in Figure 2, source image data 32 is pre-processed to obtain a series K1-N of
`derivative images of progressively lower image resolution. Id. at 6:6–8.
`Initially, the source image data—i.e., the series image K0—is subdivided
`into a regular array of image parcels of a fixed byte size, e.g., 8K bytes. Id.
`at 6:8–13.
`In an embodiment, the resolution of a particular image in the series is
`related to the predecessor image by a factor of four while, at the same time,
`the array subdivision is also related by a factor of four, such that each image
`parcel of the series images has the same fixed byte size, e.g., 8K bytes.
`Ex. 1001, 6:14–18. In another embodiment, the image parcels are
`compressed by a fixed ratio—for example, the 8K byte parcels are
`compressed by a 4-to-1 compression ratio such that each image parcel has a
`fixed 2K byte size. Id. at 6:19–24. The image parcels are stored in a file of
`defined configuration, such that any parcel can be located by specification of
`a KD,X,Y value, representing the image set resolution index D and the
`corresponding image array coordinate. Id. at 6:24–28. The TCP/IP protocol
`is used to deliver image parcels, e.g., 2K-byte compressed image parcels, to
`the clients. Id. at 8:10–11, 8:17–19. For preferred embodiments, where
`network bandwidth is limited, entire image parcels preferably are delivered
`in corresponding data packets. Id. at 8:11–14. This allows each image
`parcel to fit into a single network data packet, which improves data delivery
`and avoids the transmission latency and processing overhead of managing
`image parcel data broken up over multiple network data packets. Id. at
`8:14–17.
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`E. Challenged Claim
`As discussed above, only claim 20 remains challenged in this case.
`Claim 20 depends from claim 1, and both claims are reproduced below.
`1. A method of retrieving images over a network communication
`channel for display on a user computing device, the method
`comprising steps of:
`issuing a first request from the user computing device to one or
`more servers, over one or more network communication
`channels, the first request being for a first update data parcel
`corresponding to a first derivative image of a predetermined
`image, the predetermined image corresponding to source
`image data, the first update data parcel uniquely forming a
`first discrete portion of the predetermined image, wherein the
`first update data parcel is selected based on a first user-
`controlled image viewpoint on the user computing device
`relative to the predetermined image;
`receiving the first update data parcel at the user computing device
`from the one or more servers over the one or more network
`communication channels, the step of receiving the first update
`data parcel being performed after the step of issuing the first
`request;
`displaying the first discrete portion on the user computing device
`using the first update data parcel, the step of displaying the
`first discrete portion being performed after the step of
`receiving the first update data parcel;
`issuing a second request from the user computing device to the
`one or more servers, over the one or more network
`communication channels, the second request being for a
`second update data parcel corresponding to a second
`derivative image of the predetermined image, the second
`update data parcel uniquely forming a second discrete portion
`of the predetermined image, wherein the second update data
`parcel is selected based on a second user-controlled image
`viewpoint on the user computing device relative to the
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`predetermined image, the second user-controlled image
`viewpoint being different from the first user-controlled image
`viewpoint;
`receiving the second update data parcel at the user computing
`device from the one or more servers over the one or more
`network communication channels, the step of receiving the
`second update data parcel being performed after the step of
`issuing the second request;
`displaying the second discrete portion on the user computing
`device using the second update data parcel, the step of
`displaying the second discrete portion being performed after
`the step of receiving the second update data parcel;
`wherein:
`a series of K1-N derivative images of progressively lower image
`resolution comprises the first derivative image and the second
`derivative image, the series of K1-N of derivative images
`resulting from processing the source image data, series image
`K0 being subdivided into a regular array wherein each
`resulting image parcel of the array has a predetermined pixel
`resolution and a predetermined color or bit per pixel depth,
`resolution of the series K1-N of derivative images being
`related to resolution of the source image data or predecessor
`image in the series by a factor of two, and the array
`subdivision being related by a factor of two.
`Ex. 1001, 12:26–13:16.
`20. A method as in claim 1, further comprising a step for
`determining priority of the first request and the second request.
`Id. at 14:41–43.
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`III. ANALYSIS
`A. Real Party-in-Interest
`Among other requirements, a petition for inter partes review may be
`considered only if “the petition identifies all real parties in interest.”
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`35 U.S.C. § 312(a)(2); accord 37 C.F.R. § 42.8(b)(1) (requiring petitioners
`to “[i]dentify each real party-in-interest for the party” as part of a
`petitioner’s mandatory notices). That requirement is not jurisdictional; “if a
`petition fails to identify all real parties in interest under § 312(a)(2), the
`Director can, and does, allow the petitioner to add a real party in interest.”
`Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir.
`2018) (en banc); accord Proppant Express Investments, LLC v. Oren Techs.,
`LLC, IPR2017-01917, Paper 86 at 7–8 (PTAB Feb. 13, 2019) (precedential).
`Petitioner bears the burden of persuasion to show that it accurately names all
`RPIs. Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336,
`1343 (Fed. Cir. 2018) (“AIT”).
`In accordance with 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1)
`(2017), Petitioner identified itself, Unified Patents Inc., as the only real
`party-in-interest (“RPI”). Pet. 2. Patent Owner asserts that two members of
`Petitioner, namely, Google and Apple, should be named as RPIs. PO Resp.
`3.5 Patent Owner contends that, due to Petitioner’s alleged failure to name
`all RPIs, this proceeding should be terminated or Petitioner should be
`required to correct its Mandatory Notices to list Google and Apple as RPIs.
`Id. at 3–4, 11–12 (“The Board should . . . terminate this proceeding, or at the
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`5 The parties have redacted the name “Apple” in the public versions of
`various papers and exhibits in this proceeding, including the Patent Owner
`Response. See, e.g., Paper 37, 3; Paper 26, 8. Petitioner, however, has
`identified Apple as its member in Petitioner’s Reply, which was filed as a
`public document available to the public since July 1, 2019. See Reply 11.
`Consequently, we treat Apple’s membership of Petitioner as public
`information.
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`very least require that Unified correct its Mandatory Disclosures to list
`Google and Apple as real parties in interest.” (emphases added)).
`Turning first to the termination question for failure to name all RPIs in
`the Petition, there is no dispute that Patent Owner has not filed an
`infringement action against any of Petitioner’s members. PO Resp. 12;
`Reply 4; Sur-Reply 7; Paper 29, 6. Thus, none of Petitioner’s members are
`time-barred under 35 U.S.C. § 315(b). Reply 4. Indeed, Patent Owner does
`not allege that inclusion of Google or Apple as an RPI would have barred
`the instant Petition under § 315(b). See PO Resp. 14–15; Sur-Reply 7; Paper
`29, 6. Therefore, even if Google and Apple should be named RPIs, failure
`to identify them as such at the time the Petition was filed does not
`necessarily require us to terminate this proceeding. See Proppant Express
`Investments, Paper 86 at 7 (explaining that under 35 U.S.C. § 312(a), the
`Board may accept updated mandatory notices after institution “as long as the
`petition would not have been time-barred under 35 U.S.C. § 315(b) if it had
`included the [unnamed] real party in interest.”).
`It is also not necessary to require Petitioner to update its Mandatory
`Notices because, for the reasons explained below, Petitioner demonstrates
`sufficiently that Google and Apple are not RPIs in this proceeding.6
`
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`6 In “permitting a petitioner to amend its identification of [RPIs] while
`maintaining the original filing date,” the factors to consider are whether
`there have been (1) attempts to circumvent the § 315(b) bar or estoppel
`rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused
`by the delay, or (4) gamesmanship by the petitioner. Proppant Express
`Investments, Paper 86 at 6–7. We need not take up this analysis because we
`determine that Google and Apple are not RPIs in this proceeding.
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`1. Relevant Principles of Law
`“[A]t a general level, the ‘real party-in-interest’ is the party that
`desires review of the patent.” Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”). There is no
`bright-line test for determining whether a party is a real party in interest. Id.
`Whether an entity that is not named as a participant in a given proceeding
`constitutes a “real party in interest” is a highly fact-dependent question that
`is assessed “on a case-by-case basis.” Id. (citing Taylor v. Sturgell, 553 U.S.
`880, 893–95 (2008)). A common consideration is whether the non-party
`exercised or could have exercised control over the proceeding. Id. (citing
`Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal
`Practice & Procedure (“Wright & Miller”) § 4451). The concept of control
`generally means that “the nonparty has the actual measure of control or
`opportunity to control that might reasonably be expected between two
`formal coparties.” Id.
`Actual control is not the only measure—“[d]etermining whether a
`non-party is a ‘real party in interest’ demands a flexible approach that takes
`into account both equitable and practical considerations, with an eye toward
`determining whether the non-party is a clear beneficiary that has a
`preexisting, established relationship with the petitioner.” AIT, 897 F.3d at
`1351. “[T]he two questions lying at [the] heart” of this inquiry are “whether
`a non-party ‘desires review of the patent’ and whether a petition has been
`filed at a nonparty’s ‘behest.’” Id. (quoting Trial Practice Guide, 77 Fed.
`Reg. at 48,759). Relevant factors to consider include “Party A’s relationship
`with the petitioner; Party A’s relationship to the petition itself, including the
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`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.
`When a patent owner provides sufficient evidence that reasonably
`brings into question the accuracy of a petitioner’s identification of RPIs, the
`burden remains with the petitioner to establish that it has complied with the
`statutory requirement to identify all RPIs. Worlds Inc. v. Bungie, Inc., 903
`F.3d 1237, 1242 (Fed. Cir. 2018).
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`2. Discussion
`Petitioner states “[u]nder 37 C.F.R. § 42.8(b)(1), Petitioner certifies
`that Petitioner is the real party-in-interest, and certifies that no other party
`exercised control or could exercise control over Petitioner’s participation in
`this proceeding, the filing of this Petition, or the conduct of any ensuing
`trial.” Pet. 2. In its Reply and Voluntary Interrogatory Responses,
`Petitioner presents evidence and argument supporting Petitioner’s
`identification of itself as the sole RPI and rebutting Patent Owner’s
`argument that Google and Apple should have been named as RPIs. See
`generally Reply; Ex. 2013; Papers 25, 26. In its Reply, Petitioner also relies
`on the transcript of the deposition of Mr. Kevin Jakel, Petitioner’s Chief
`Executive Officer (Ex. 2004). See generally Reply; Papers 25, 26. In
`addition, Petitioner has provided copies of its Membership Agreements.
`Exs. 2008, 2009.
`Petitioner asserts that “[n]o third party directed, funded, or controlled”
`Petitioner’s filing of this Petition. Reply 4 (citing Ex. 2013, 3; Ex. 2004,
`149). Petitioner also asserts that no member of Petitioner communicated
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`with Petitioner regarding the filing of this Petition. Id. (citing Ex. 2013, 3).7
`As noted above, Petitioner asserts that no member of Petitioner has been
`sued in the district court for infringement of the ’239 patent (id. (citing
`Ex. 2004, 138:14–151:6)) and, therefore, none of Petitioner’s members are
`time-barred under 35 U.S.C. § 315(b) (id. (citing Ex. 2013, 3)).
`Patent Owner argues Apple and Google are RPIs because (1) the facts
`in this case are similar to the facts in AIT (PO Resp. 4–9) and (2) Apple and
`Google are each “a clear beneficiary that has a preexisting established
`relationship with the petitioner” under AIT (id. at 11–15; Sur-Reply 4–9).
`We address each of these arguments in turn.
`First, regarding the alleged similarities to AIT, Patent Owner asserts
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`that
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`In AIT, the court took special note of the following facts, among
`others: (1) “RPX, unlike a traditional trade association, is a for-
`profit company whose clients pay for its portfolio of ‘patent risk
`solutions’”; (2) one of RPX’s strategies is “the facilitation of
`challenges to patent validity” to “reduce expenses for [RPX’s]
`clients”; (3) the fact that RPX may not discuss specific IPRs with
`clients may be for the purpose of circumventing the RPI
`requirement. Collectively, these facts “imply that RPX can and
`does file IPRs to serve its clients’ financial interests, and that a
`key reason clients pay RPX is to benefit from this practice in the
`event they are sued by an NPE.”
`PO Resp. 4–5 (internal citations omitted). In other words, Patent Owner
`asserts that the business model of RPX, as described in AIT, implied that
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`7 Petitioner asserts that it searched its records for communications with any
`of its members regarding the ’239 patent before filing of the Petition, but
`found no such communications. Paper 26, 7 (citing Ex. 2103, 2).
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`RPX filed IPRs to serve its clients’ financial interest. Based on its reading
`of AIT, Patent Owner lists several similarities between RPX and Petitioner.
`Id. at 5–9. For example, Patent Owner asserts
`RPX was a for-profit company set up to help paying members by
`filing IPRs to help them avoid litigation and to reduce their
`expenses, and AIT found that this alone implied that “RPX can
`and does file IPRs to serve its clients’ financial interests, and that
`a key reason clients pay RPX is to benefit from this practice
`. . . .” AIT, 897 F.3d at 1352. There is no difference between
`Unified and RPX insofar as this implication is concerned.
`Paper 29, 5. Specifically, Patent Owner asserts that, among other things: A
`“unique and important part of Unified Patents’ overall strategy is filing inter
`partes review petitions to undermine current assertions based on invalid
`patents by large nonpracticing entities against companies in the technology
`industry . . . and to deter future claims in the same space” (PO Resp. 5
`(quoting Ex. 2025)); Unified Patents has Zones focused on a particular
`industry (id. at 5); members of Unified Patents benefit by avoiding statutory
`bars and estoppel (id. at 6); Unified Patents requested a license from
`Bradium (id. at 7); “Unified Patents tightly aligns its deterrent solution with
`its participating companies” including Google (one of its two founding
`members) (id. (quoting Ex. 2020)); approximately half of Unified Patents’
`filed IPRs were on patents asserted against its members (id. at 7–8); and
`Google and Apple are potential licensees and had licensing discussions with
`Bradium (id. at 9). See also Prelim. Resp. 5–9 (presenting similar
`arguments).
`In response, Petitioner argues that Patent Owner interprets AIT too
`broadly and ignores the many facts that distinguish the circumstances
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`present here from those in AIT. Reply 6–9; Paper 26, 1–11. We agree with
`Petitioner that Patent Owner has not shown that the facts involved here are
`sufficiently similar to the facts in AIT. AIT does not state that filing IPRs to
`serve clients’ or members’ financial interest alone is a relationship that
`makes a client an RPI; rather, the court remanded without determining that
`an unnamed party (Salesforce) should have been identified as an RPI after
`evaluating many other facts,8 including the cited evidence of close
`cooperation between RPX and Salesforce. AIT, 897 F.3d at 1341–42.
`Here, unlike AIT, there is no evidence of record of any
`communications between Petitioner and Google or Apple regarding the
`filing of this Petition, or that Google and Apple even knew beforehand of
`Petitioner’s intent to file this Petition. Additionally, there is no evidence
`here, as there was in AIT, of communications between Petitioner and any of
`its members regarding the underlying litigations involving the patent at
`issue. See AIT, 897 F.3d at 1340–42. There is no evidence here, as there
`was in AIT, that Google or Apple shares officers or board members with
`Petitioner, or has any corporate relationships with Petitioner aside from their
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`8 We recognize that the court in AIT did not find that the unnamed party was
`an RPI; rather, the court remanded to the Board to reconsider the evidence of
`record in light of the proper legal analysis. AIT, 897 F.3d at 1358 (vacating
`the Board’s decision and remanding to “consider[] the full range of
`relationships under § 315(b) and the common law that could make [the
`unnamed party] a real party in interest with respect to this IPR”). The issue
`of whether the unnamed party in AIT is an RPI has not been resolved. Thus,
`any contrast we draw here with AIT is merely to show similarities or
`dissimilarities to the facts analyzed in that decision; we do not use the
`unnamed party in AIT as a yardstick to measure what is an RPI.
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`membership. See id. There also is no evidence of a “very significant
`payment shortly before” this Petition was filed. See AIT, 897 F.3d at 1342.
`Perhaps most significantly, there is no evidence that any member, such as
`Google or Apple, desires review of the ʼ239 patent but is time-barred from
`filing a petition—unlike Salesforce in AIT, which was time-barred from
`filing its own petition. Id. at 1353 (“Given that . . . any IPR petitions
`Salesforce might have wanted to file would have been time-barred, this
`evidence at least suggests that RPX may have filed the three IPR petitions,
`in part, to benefit Salesforce.”), 1355 (“[T]he evidence submitted indicates
`the company’s understanding that the very challenges to validity included in
`the IPR petitions were challenges Salesforce would like to have made if not
`time-barred from doing so.”), 1356 (no evidence contradicts “AIT’s theory
`that RPX filed IPR petitions challenging the two patents asserted in the
`Salesforce action to benefit Salesforce, where Salesforce itself was time-
`barred from filing petitions”). As discussed above, no member of Petitioner
`is time-barred from filing its own petition to review the ’239 patent.
`In AIT, in addition to a deep and extensive tie between RPX and
`Salesforce, the facts and circumstances in the case raised the issue of
`whether RPX was acting as an attorney-in-fact on behalf of Salesforce. AIT,
`897 F.3d at 1357. Here, there is no assertion of an attorney-client
`relationship between Petitioner and Google or Apple. Unlike AIT, the
`circumstances here do not raise attorney-in-fact concerns.
`Patent Owner also argues that, similar to RPX, Petitioner’s business
`model shows that it uses willful blindness to represent its members, thus
`making those members RPIs (Paper 29, 5–6 (citing AIT, 897 F.3d at 1355)),
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`although Patent Owner does not assert that all of Petitioner’s members are
`RPIs in this proceeding (id. at 2). The court in AIT stated “[t]he evidence
`might actually indicate that RPX worked to ascertain, with a strong degree
`of confidence, its client’s desires, while taking last-minute efforts to avoid
`obtaining an express statement of such desires. The law has a label for this:
`willful blindness.” AIT, 897 F.3d at 1355. AIT quotes Global-Tech
`Appliances for the notion that willful blindness has “two basic requirements:
`(1) the defendant must subjectively believe that there is a high probability
`that a fact exists and (2) the defendant must take deliberate actions to avoid
`learning of that fact.” Id. (quoting Global-Tech Appliances, Inc. v. SEB S.A.,
`563 U.S. 754 (2011)). Here, we do not find willful blindness applies
`because there is no evidence that Petitioner believed with a “high
`probability” that Google or Apple wished to file a petition to review the ’239
`patent. Indeed, as discussed below, there is no evidence that Google or
`Apple wished for Petitioner to file this Petition. The fact of licensing
`discussions between Patent Owner and a member, without evidence that
`Petitioner was aware of those discussions, does not suggest with a high
`probability that the member wanted for Petitioner to file a petition for an IPR
`but rather only suggests the member was interested in or offered a license.
`Prelim Resp. 9; Ex. 2037 ¶¶ 8–9. In fact, Patent Owner does not allege
`Petitioner was aware of licensing discussions between Patent Owner and
`Google or Apple. See PO Resp. 9, 12–14; Reply 9; Ex. 2013, 12–13. AIT
`highlighted the fact that Salesforce was barred from filing a petition. 897
`F.3d at 1353, 1355, 1356. Here, as discussed above, Google and Apple are
`not time barred.
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`In sum, the evidence of record shows the relationships between
`Petitioner and Google and Apple to be distinguishable from the relationships
`between RPX and Salesforce in AIT. Thus, we disagree with Patent
`Owner’s argument that “Google and Apple are both RPIs” because the facts
`involved here are similar to the facts in AIT. See PO Resp. 9.
`Next, Patent Owner asserts that Google and Apple should be named as
`RPIs because they are each “a clear beneficiary that has a preexisting
`established relationship with the petitioner” under AIT. PO Resp. 11 (citing
`AIT, 897 F.3d at 1351); see also Sur-Reply 3–9 (presenting similar
`arguments). But the RPI analysis in AIT did not stop there. As discussed
`above, “two questions lying at [the] heart” of the RPI analysis under AIT are
`“whether a non-party ‘desires review of the patent’ and whether a petition
`has been filed at a nonparty’s ‘behest.’” AIT, 897 F.3d at 1351 (quoting
`Trial Practice Guide, 77 Fed. Reg. at 48,759). Relevant factors in this
`analysis include “Party A’s relationship with the petitioner; Party A’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.
`Addressing Petitioner’s relationship with Google and Apple and the
`“nature of entity” of Petitioner, Patent Owner asserts that Petitioner’s
`primary purpose is to file IPRs for profit (PO Resp. 13–14) and that it has a
`pre-existing, contractual relationship with Google and Apple under which
`Google and Apple
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`Petitioner may file IPR petitions that benefit Google and Apple (PO Resp.
`12–14). Patent Owner argues that Google and Apple,
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`, indirectly induce or encourage Petitioner to file IPR petitions,
`including the present Petition. Id. at 13.
`In response, Petitioner contends that Google and Apple’s membership
`dues are irrelevant (Reply 11) because, among other reasons, Petitioner
`“alone determines whether and how it spends its money” (id. at 5 (citing
`Ex. 2013, 5)). Petitioner also asserts that Petitioner’s members pay their fees
`once a year (id. at 11 (citing Ex. 2013, 5)) and that, unlike AIT, there is no
`evidence in this case of a non-party paying fees suspiciously near the filing
`of the Petition (id. (citing AIT, 897 F.3d at 1342)).
`As discussed above, Petitioner argues, citing supporting evidence, that
`“[n]o third party directed, funded, or controlled this IPR” (Reply 4 (citing
`Ex. 2013, 3; Ex. 2004, 149)). Citing Petitioner’s Voluntary Interrogatory
`Responses, Petitioner also asserts that “[n]o member communicated with
`Unified regarding the filing of this IPR, much less directed and controlled
`Unified’s filing of the IPR.” Id. (citing Ex. 2013, 3). Citing its Membership
`Agreements and the testimony of its Chief Executive Officer, Mr. Jakel,
`Petitioner asserts that its members are “contractually prevented from
`attempting to assert control” over Petitioner’s filing activities. Id. (citin