UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`
`____________________
`
`Case IPR2018-00952
`Patent No. 9,253,239
`____________________
`
`
`
`BRADIUM TECHNOLOGIES LLC’S
`SUR-REPLY TO PETITIONER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.108(c)
`
`PUBLIC VERSION
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`
`____________________
`
`Case IPR2018-00952
`Patent No. 9,253,239
`____________________
`
`
`
`BRADIUM TECHNOLOGIES LLC’S
`SUR-REPLY TO PETITIONER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.108(c)
`
`PUBLIC VERSION
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`
`
`TABLE OF CONTENTS
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`Page
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`Unified Has Not Met Its Burden To Show It Is the Sole RPI ........................ 1
`CONCLUSION ............................................................................................... 6
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`
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`I.
`II.
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`PUBLIC VERSION
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`IPR2018-00952
`U.S. Patent No. 9,253,239
`TABLE OF AUTHORITIES
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`Page
`
`Cases
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`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) ................................................................. 2, 3, 4, 5
`
`California Physicians’ Serv. v. Aoki Diabetes Research Inst.,
`163 Cal. App. 4th 1506 (2008) .............................................................................. 2
`Unified Patent v. Plectrum LLC,
`IPR 2017-01430 (Nov. 13, 2018) .......................................................................... 4
`Unified Patents Inc. v. Realtime Adaptive Streaming, LLC,
`IPR2018-00883 (Oct. 11, 2018) .........................................................................4, 5
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`iii
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`PUBLIC VERSION
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`
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`2005
`2006
`2007
`
`
`Exhibit Description
`2001
`USPTO Public PAIR screen capture for Correspondence Address
`and Attorney/Agent Information for Application No. 14/547,148
`(’293 Patent)
`Notice of Acceptance of Power of Attorney, Date Mailed
`03/11/2016, for Application No. 14/547,148 (’293 Patent)
`Declaration of Michael N. Zachary in Support of Patent Owner’s
`Motion for Pro Hac Vice
`PROTECTIVE ORDER MATERIAL: Transcript of Deposition of
`Unified Patents CEO, Kevin Jakel dated September 10, 2018
`Team, Unified Patents, https://www.unifiedpatents.com/team/#
`Join, Unified Patents, https://www.unifiedpatents.com/join/
`Join, Unified Patents (May 17, 2018),
`https://web.archive.org/web/20180517015601/https://www.unifiedp
`atents.com/join/
`PROTECTIVE ORDER MATERIAL: Unified Patents Membership
`Agreement
`PROTECTIVE ORDER MATERIAL: Exhibit A:
`– Internet of Things (IoT) Zone
`Belcher, Marta, et al., “Hacking the Patent System: A guide to
`Alternative Patent Licensing for Innovators,” Juelsgaard Intellectual
`Property & Innovation Clinic Stanford Law School, dated May 2014
`Protected Zones, Excerpt of United Patents (Oct. 27, 2016),
`https://web.archive.org/web/20161027135832/http://www.unifiedpat
`ents.com:80/zones/
`U.S. Patent No. 9,253,239, “Optimized Image Delivery Over
`Limited Bandwidth Communication Channels,” issued Feb. 2, 2016
`(“’239 Patent”) (Not filed)
`PROTECTIVE ORDER MATERIAL: Petitioner’s Voluntary
`Interrogatory Response
`
`2002
`
`2003
`
`2004
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`IPR2018-00952
`U.S. Patent No. 9,253,239
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`EXHIBIT LIST
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`2017
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`2018
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`2019
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`2020
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`2015
`2016
`
`Exhibit Description
`2014
`Bradium Technologies LLC, Unified Patents (August 3, 2015),
`https://web.archive.org/web/20150803044103/http://bradiumtechnol
`ogies.com/
`Docket Navigator of Unified Patents dated Jun. 17, 2015
`Bradium Technologies LLC v. Microsoft Corp., Complaint, filed
`Jan. 9, 2015
`Bradium Technologies and Microsoft Settle Patent Lawsuit,
`Bradium Technologies (Oct. 17, 2017),
`http://www.bradiumtechnologies.com/bradium/bradium-
`technologies-and-microsoft-settle-patent-lawsuit
`Unified Patents, backed by Google, takes fight to patent trolls, Don
`Reisinger, CNET (Apr. 8, 2013)
`Don Clark, New Venture Enters Patent Fray, Wall Street Journal,
`published Apr. 7, 2013
`The Gloves are Off: Unified Patents Inc. Unveils Its ‘NPE
`Deterrent’ Strategy, Unified Patents (September 23, 2013),
`http://justdemo. in/unified/2013/09/23/the-gloves-are-off-unified-
`patents-inc-unveils-its-npe-deterrent-strategy//
`Unified Patents Challenges Clouding IP Patent Seeks to Push Patent
`Trolls Out of Cloud Storage, Unified Patents (September 23, 2013),
`http://unifiedpatents.com/2013/09/23 unified-patents-challenges-
`clouding-ip-patent-seeks-to-push-patent-trolls-out-of-cloud-storage/
`Unified has challenged almost all of 2017’s most prolific NPEs,
`United Patents (Jul. 5, 2017),
`https://www.unifiedpatents.com/news/2017/7/5/according-to-rpx-
`datea-has-challenged-almost-all-of-2017s-most-prolific-npes
`Email from Unified Patents to Michael Zachary re “Unified reaches
`100 challenges,” dated Nov. 15, 2017
`Unified Patents (January 1, 2014),
`https://web.archive.org/web/20140101033720/http://unifiedpatents.c
`om/
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`2021
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`2022
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`2023
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`2024
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`v
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`2026
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`2027
`2028
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`2029
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`2030
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`Exhibit Description
`2025
`Eric Coe, Unified Patents Adds AIA Reviews to Anti-‘Troll’ Arsenal,
`Law360 (Jun. 23, 2015),
`https://www.law360.com/articles/668619/print?section=ip
`Declaration of C. Coulson in support of Bradium Technologies
`LLC’s Preliminary Patent Owner’s Response
`Bradium Technologies LLC’s Disclaimer of Claims 1-19, 21-25
`Orthogonality, Wikipedia,
`https://en.wikipedia.org/wiki/Orthogonality
`IPRs, Balancing Effectiveness vs. Cost, RPX (June 17, 2016)
`https://www.rpxcorp.com/2016/06/17/iprs-balancing-effectiveness-
`vs-cost/
`How Much does IPR Cost?, Patent Trademark Blog,
`http://www.patenttrademarkblog.com/how-much-does-ipr-cost/
`2031 Microsoft Corp. v. Bradium Techs. LLC, IPR2016-01897 (U.S. Pat.
`No. 9,253,239), Paper 2 (Petition) (P.T.A.B. Sept. 30, 2016)
`2032 Microsoft Corp. v. Bradium Techs. LLC, IPR2016-01897 (U.S. Pat.
`No. 9,253,239), Paper 17 (Institution Decision) (P.T.A.B. April 5,
`2017)
`NPE Zones: Deter bad NPE conduct, Unified Patents (Sept. 20,
`2018), https://www.unifiedpatents.com/npe/
`Bradium Technologies LLC v Iancu, No. 17-2579, USPTO
`Director’s Opposition to Appellant’s Motion for Leave to File
`Supplemental Brief, Dkt No. 74 (Filed Sept. 4, 2018)
`Declaration of L. Quan in support of Bradium Technologies LLC’s
`Preliminary Patent Owner’s Response
`“Summary of Findings: Search Results Using Unified Patents
`Portal,” prepared by L. Quan.
`Declaration of M. Shanahan in support of Bradium Technologies
`LLC’s Preliminary Patent Owner’s Response
`Unified’s Real-Party-in-Interest PTAB Panel Decisions, Unified
`Patents (July 5, 2016), https://www.unifiedpatents.com/news/real-
`party-in-interest-panel-decisions
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`2033
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`2034
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`2035
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`2036
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`2037
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`2038
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`Bradium Technologies LLC (“Bradium”) files this Preliminary Patent
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`Owner Sur-Reply (Paper 27) limited to the “real party in interest” (RPI) issue
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`pursuant to the Board’s Order on November 20, 2018 (Paper No. 4).
`
`I.
`
`Unified Has Not Met Its Burden To Show It Is the Sole RPI
`In its reply, Unified invites legal error by claiming that the AIT case
`
`“focused” on “third-party funding, direction and control,” and that these are “[t]he
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`most important factors” and “central.” (Reply at 2, 5.). That is the exact opposite
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`of what AIT said the focus was. Unified ignores AIT’s statements (1) that Congress
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`intended the term “real party in interest” to “apply broadly – sweeping in not only
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`what might be traditionally known as real parties in interest . . . ;” (2) that
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`“Congress intended for it [RPI] to have an expansive formulation;” (3) that “there
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`could be multiple real parties in interest;” (italics in original) (4) that “Congress
`
`intended that the term ‘real party in interest’ have its expansive common-law
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`meaning;” (5) that “the focus of the real-party-in-interest inquiry is on the
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`patentability of the claims challenged in the IPR petition, bearing in mind who
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`will benefit from having those claims canceled or invalidated;” (6) that “the
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`common law seeks to ascertain who, from a ‘practical and equitable’ standpoint,
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`will benefit from the redress” (citing Trial Practice Guide); and (7) that the RPI
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`inquiry is done “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.”
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`1
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`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1346-1351 (Fed.
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`Cir. 2018) (“AIT”). The Federal Circuit could not have been clearer that the
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`definition of RPI is very broad and that the “focus” is on who benefits and whether
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`the non-party has an established relationship with the petitioner.1
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`In an effort to avoid AIT, Unified mischaracterizes Bradium’s argument.
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`Unified states that Bradium contends that any member of a for-profit entity that
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`files IPRs is an RPI. (Reply at 1.) Bradium has made no such contention.
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`Bradium contends only that two specific members of Unified –
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` and Google
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`– are RPIs. Those two members
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`.2
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`1 Unified also ignores the Trial Practice Guide’s citation to California
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`Physicians’ Serv. v. Aoki Diabetes Research Inst., 163 Cal. App. 4th 1506, 1523-
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`1525 (2008), for its holding that “preclusion can apply even in the absence of . . .
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`control”). Trial Practice Guide (“TPG”), 77 Fed. Reg. 48760 (Aug. 14, 2012).
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`2
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`.
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`2
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`. EX2037 at ¶ 5.
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`Microsoft has already been sued on Bing Maps, and settled, as Unified is well
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`aware. Id., ¶¶ 7, 10. Both
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` and Google have held licensing discussions with
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`Bradium concerning the ’239 patent. Id., ¶¶ 8-9. The evidence shows that they
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`clearly would benefit from Unified’s IPR, not just as a general benefit that might
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`be available to all members of Unified, but as a specific benefit to them.
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`Further, the evidence shows that Unified has previously filed 37 IPRs on
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`patents that Google and
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` have been sued on. EX2035, ¶¶ 8-9. It also shows
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`that the only substantial benefit that Google and
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` receive from their
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`membership is that Unified seeks to invalidate patents they might infringe.
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`EX2004, 62:10-63:3; EX2013, 20-21; EX2025, 1. The evidence also shows that
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`Unified from the start has expressly identified Google as a company for whom it
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`would seek to (in its own words) “level the playing field.” EX2020. See AIT, 897
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`F.3d at 1351 (noting key TPG Guide factor: “relationship with the petitioner”).
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`Unified claims that a rule focusing on benefits and relationship would sweep
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`in parties to joint defense agreements and non-profit trade associations, both of
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`which it says are excluded from the definition of RPI in the Trial Practice Guide.
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`Putting aside that the Federal Circuit expressly held in AIT that the focus of the
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`IPR inquiry is on the benefits and relationship, and that the Trial Practice Guide
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`says that membership in a trade association is a relevant consideration, Unified’s
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`argument is in error. Under a typical Joint Defense Agreement, members address
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`defense of a lawsuit, and do not fund IPRs brought by others, unlike here where
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`. And
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`trade associations, unlike Unified’s for profit IPR business, are typically formed as
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`non-profit associations to lobby governmental organizations to achieve
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`overarching policy objectives, not to challenge specific, privately-owned property
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`rights. Unified is not a trade association at all. It simply files IPRs, for profit.
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`Unified also relies heavily on the Board’s decision in Unified Patents Inc. v.
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`Realtime Adaptive Streaming, LLC, IPR2018-00883 (Oct. 11, 2018). That decision
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`is inconsistent with AIT, and is not binding on this panel.3 Respectfully, the Board
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`there paid little heed to AIT’s repeated pronouncements that RPI has an expansive
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`meaning, and that the focus is on who benefits from an invalidity determination
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`and what that non-party’s relationship with the petitioner is. The Board in
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`Realtime, like Unified here, sought to distinguish AIT on its facts, but the practical
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`effect is to limit AIT to its specific facts. Unified v. RealTime at 16-17. Nothing in
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`AIT indicates that the Federal Circuit regarded its pronouncements as so limited.
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`3 Bradium respectfully contends that the PTAB’s recent, similar decision in
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`Unified Patent v. Plectrum LLC, IPR 2017-01430 (Paper 30, Nov. 13, 2018), also
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`does not comport with AIT, for the same reasons.
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`Further, the Board in Realtime minimized facts that were in common
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`between AIT and Realtime. For example, RPX was a for-profit company set up to
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`help paying members by filing IPRs to help them avoid litigation and to reduce
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`their expenses, and AIT found that this alone implied that “RPX can and does file
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`IPRs to serve its clients’ financial interests, and that a key reason clients pay RPX
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`is to benefit from this practice . . . .” AIT, 897 F.3d at 1352. There is no difference
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`between Unified and RPX insofar as this implication is concerned. Indeed, one of
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`the key considerations set forth in the TPG, as AIT noted, is the “nature of the
`
`entity filing the petition.” AIT, 897 F.3d at 1354 (emphasis added).
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`Further, the court in AIT criticized the Board there because it had found
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`sufficient the fact that RPX had articulated an independent interest in pursuing
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`IPRs. Id. at 1353. The court noted that the point was not to prove RPX’s interest,
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`rather “it is to probe the extent to which Salesforce- as RPX’s client- has an
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`interest in and will benefit from RPX’s actions, and inquire whether RPX can be
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`said to be representing that interest . . . . The Board’s focus on RPX’s motivations
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`to the exclusion of Salesforce’s reveals its misunderstanding of controlling legal
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`principles.” Id. The court also found that the absence of communications about
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`the IPR between RPX and Salesforce could indicate RPX’s “willful blindness,”
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`and that the Board had not properly considered this fact. Id. at 1355.
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`Here, too, Unified has established a clever, consciously blind, business
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`model in an effort to circumvent the RPI issue. It
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` while filing IPRs that serve its members’
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`financial interests. But even if Google
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` did not know in advance that
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`Unified specifically intended to attack the ’239 patent, they do know that
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` Unified to file IPRs to protect them. They rely on Unified to select which
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`patents to attack. That does not mean that
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` don’t fund the IPRs,
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`or that the IPRs are not filed at their behest.
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`Finally, Unified makes much of the fact that there is currently no litigation
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`against a Unified member, and that the only suit on the ’239 patent was against a
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`non-member. This does not change the fact that the patent has been asserted in
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`litigation, and that
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`. It would be
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`reasonable to infer that if Microsoft were sued on Bing Maps,
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`. An IPR on the ’239 patent would
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`clearly be of benefit to them. Unified does not deny that this is so.
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`II. CONCLUSION
`Unified has failed to meet its burden to show that it is the only RPI. It has
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`not shown that Google
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` would not benefit from this IPR. It has not
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`shown that
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` simply for
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`the joy of it. Accordingly, the petition should be dismissed.
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`Dated: December 3, 2018
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`IPR2018-00952
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`/s/ Chris J. Coulson
`Chris J. Coulson (Reg. No. 61,771)
`BUNSOW DE MORY LLP
`101 Brambach Rd.
`Scarsdale, NY 10583
`Tel.: (646) 502-6973
`ccoulson@bdiplaw.com
`
`Michael N. Zachary (pro hac vice)
`BUNSOW DE MORY LLP
`701 El Camino Real
`Redwood City, CA 94063
`Tel.: (650) 351-7248
`mzachary@bdiplaw.com
`
`Counsel for Patent Owner
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`7
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`IPR2018-00952
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §42.6(e), the undersigned certifies that on
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`December 3, 2018, the foregoing Bradium Technologies LLC’s Sur-Reply to
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`Petitioner’s Preliminary Response Pursuant to 37 C.F.R. §42.108(c) was served
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`via electronic mail upon the following counsel of record for the Petitioner:
`
`David L. Cavanaugh, Reg. No. 36,476
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`
`Daniel V. Williams, Reg. No. 45,221
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: Daniel.Williams@wilmerhale.com
`
`Jonathan E. Robe, Reg. No. 76,033
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: Jonathan.Robe@wilmerhale.com
`
`Jonathan Stroud (Reg. 72,518)
`Unified Patents Inc.
`1875 Connecticut Avenue, N.W., Floor 10
`Washington, DC 20009
`Tel: (202) 805-8931
`jonathan@unifiedpatents.com
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`IPR2018-00952
`U.S. Patent No. 9,253,239
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`/s/ Chris J. Coulson
`Chris J. Coulson (Reg. No. 61,771)
`BUNSOW DE MORY LLP
`101 Brambach Rd.
`Scarsdale, NY 10583
`Tel.: (646) 502-6973
`ccoulson@bdiplaw.com
`
`Counsel for Patent Owner
`
`Roshan Suresh Mansinghani (Reg. 62,429)
`Unified Patents Inc.
`13355 Noel Road, Suite 1100
`Dallas, TX 75240
`Tel: (214) 945-0200
`roshan@unifiedpatents.com
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