IPR2018-00952
`Patent No. 9,253,239
`
`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
`PATENT OWNER SUR-REPLY
`
`PUBLIC REDACTED VERSION
`
`
`Patent No. 9,253,239
`
`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
`PATENT OWNER SUR-REPLY
`
`PUBLIC REDACTED VERSION
`
`
`
`TABLE OF CONTENTS
`
`IPR2018-00952
`Patent No. 9,253,239
`
`Page
`
`I.
`II.
`
`Introduction ..................................................................................................... 1
`Unified Failed to Identify All RPIs ................................................................ 2
`A. Unified Relies on an Erroneous Legal Standard .................................. 2
`B.
`Unified Has Not Shown That it is the Only RPI .................................. 4
`1.
`Unified and Apple/Google Had a Pre-Existing
`Relationship ............................................................................... 4
`Apple/Google Receive Specific Benefits From the
`Filing of This IPR ...................................................................... 6
`III. The Board Should Exercise Its Discretion to Terminate This
`IPR. ................................................................................................................. 9
`IV. This IPR Is Unconstitutional Under the Appointments Clause .................... 12
`V.
`Petitioner has Not Shown that Reddy Teaches or Suggests
`Claim 20 ........................................................................................................ 12
`A.
`Petitioner’s New Theory is Unsupported and Contradicts
`the Explicit Disclosure of Reddy ....................................................... 13
`Petitioner Mischaracterizes the Patent Owner Response ................... 16
`Reddy Does Not Teach or Suggest Determining Priority
`of a First and a Second Request Based on Different User-
`Controlled Image Viewpoints as Required by Claim 20 ................... 16
`1.
`Claim 20 Requires Determining Priority of a First
`and a Second Request .............................................................. 16
`a)
`Plain Language of the Claim ......................................... 17
`b)
`The Preferred Architecture Supports Patent
`Owner’s Plain-Meaning Claim
`Interpretation .................................................................. 18
`
`2.
`
`B.
`C.
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`PUBLIC REDACTED VERSION
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`2.
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`Patent Owner Sur-Reply, IPR2018-00952
`U.S. Patent No. 9,253,239
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`Reddy Retrieves Tiles Based on a Single User-
`Controlled Viewpoint ............................................................... 21
`a)
`The Claimed “User-Controlled Image
`Viewpoint” Must be a Viewpoint that is
`Controlled by the User ................................................... 22
`“Prefetching” is Based on a Single User-
`Controlled Viewpoint .................................................... 22
`“Flyover” is Also Based on a Single User-
`Controlled Viewpoint .................................................... 22
`VI. A POSITA Would Not Combine the Asserted Prior Art to
`Achieve the Invention ................................................................................... 23
`A.
`Petitioner’s Combination is Based on Hindsight ............................... 23
`B.
`Petitioner Has Not Shown a Benefit to Combining the
`Asserted Art ........................................................................................ 24
`The State of the Art Would Not Lead a POSITA to
`Combine the Asserted Art to Achieve the Claimed
`Invention ............................................................................................. 25
`VII. Conclusion .................................................................................................... 28
`
`
`b)
`
`c)
`
`C.
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`Patent Owner Sur-Reply, IPR2018-00952
`U.S. Patent No. 9,253,239
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`TABLE OF AUTHORITIES
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`Page
`
`
`
`Cases
`
`Apple Inc. v. Uniloc,
`IPR2018-00282 (P.T.A.B June 4, 2019) ................................................................ 8
`Bausch Health Cos. Inc. v. Actavis Labs. Fl. Inc.,
`No. CV 16-9038 (SRC), 2019 WL 3214550 (D.N.J. July 17, 2019) .................. 27
`In re NuVasive, Inc,
`842 F.3d 1376 (Fed. Cir. 2016) ............................................................................ 11
`Polaris Indus. v. Arctic Cat,
`882 F.3d 1056 (Fed. Cir. 2018) ............................................................................ 25
`Unified Patents Inc. v. Realtime Adaptive Streaming, LLC,
`IPR2018-00883 (P.T.A.B. Oct. 11, 2018) ............................................................. 7
`Valve Corp. v. Electronic Scripting,
`IPR2019-0062 (P.T.A.B. Apr. 2, 2019) ................................................................. 9
`
`Ventex Co. v. Columbia Sportswear N. Am., Inc.,
`IPR2017-00651 (P.T.A.B. Jan. 24, 2019) ..........................................................3, 4
`Statutes
`
`35 U.S.C. § 314(a) ........................................................................................ 9, 10, 11
`35 U.S.C. § 325(d) .............................................................................................. 9, 11
`
`
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`iv
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`Patent Owner Sur-Reply, IPR2018-00952
`US. Patent No. 9,253,239
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`EXHIBIT LIST
`
`Exhibit
`
`2001 USPTO Public PAIR screen capture for Correspondence Address
`
`and Attorney/Agent Information for Application No. 14/547, 148
`
`(’239 Patent)
`
`2002 Notice of Acceptance of Power of Attorney, Date Mailed
`03/11/2016, for A lication No. 14/547,148 ’293 Patent
`
`2003
`
`Declaration of Michael N. Zachary in Support of Patent Owner’s
`
`Motion for Pro Hac Vice
`
`2004
`
`PROTECTIVE ORDER MATERIAL: Transcript of Deposition of
`
`Unified Patents CEO, Kevin Jakel dated September 10, 2018
`
`2005
`
`Team, Unified Patents, https://www.unifiedpatents.com/team/#
`
`2006
`
`Join, Unified Patents, https://www.unifiedpatents.com/join/
`
`2007
`
`Join, Unified Patents (May 17, 2018),
`
`https://web.archive.org/web/201805l7015601/https://www.unifiedp
`
`atents.com/join/
`
`2008
`
`PROTECTIVE ORDER MATERIAL: Unified Patents Membership
`
`2009
`
`Agreement
`
`PROTECTIVE ORDER MATERIAL: Exhibit A: Subscription Form
`
`Internet of Things (IoT) Zone
`
`2010 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/
`
`US. Patent No. 9,253,239, “Optimized Image Delivery Over
`
`Limited Bandwidth Communication Channels,” issued Feb. 2, 2016
`
`(“’239 Patent”) (Not filed)
`
`2013
`
`PROTECTIVE ORDER MATERIAL: Petitioner’s Voluntary
`
`Interrogatory Response
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`PUBLIC REDACTED VERSION
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`
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`PUBLIC REDACTED VERSION
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`Patent Owner Sur-Reply, IPR2018-00952
`US. Patent No. 9,253,239
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`Exhibit
`
`2014 Bradium Technologies LLC, Unified Patents (August 3, 2015),
`
`https://web.archive.org/web/20150803044103/http://bradiumtechnol
`
`ogies.com/
`
`2015 Docket Navigator of Unified Patents dated Jun. 17, 2015
`
`2016 Bradium Technologies LLC v. Microsoft Corp., Complaint, filed
`
`Jan. 9, 2015
`
`2017 Bradium Technologies and Microsoft Settle Patent Lawsuit,
`
`Bradium Technologies (Oct. 17, 2017),
`
`http://Www.bradiumtechnologies.com/bradium/bradium—
`
`technologies-and—microsoft—settle-patent—lawsuit
`
`2018 Unified Patents, backed by Google, takesfight to patent trolls, Don
`
`Reisinger, CNET (Apr. 8, 2013)
`
`2019 Don Clark, New Venture Enters Patent Fray, Wall Street Journal,
`
`published Apr- 7, 2013
`
`2020
`
`The Gloves are Ofi”: 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 of201 7 ’s most prolific NPEs,
`
`United Patents (Jul. 5, 2017),
`
`
`
`https ://www.unifiedpatents.com/news/20 1 7/7/5/according-to-rpx-
`
`datea-has-challenged-almost-all—of-ZO 1 7s-most-prolific-npes
`
`2023
`
`Email fiom Unified Patents to Michael Zachary re “Unified reaches
`
`100 challenges,” dated Nov. 15, 2017
`
`2024 Unified Patents (January 1, 2014),
`
`https://web.archive.org/web/20140101033720/http://unifiedpatents.c
`
`om/
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`Vi
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`PUBLIC REDACTED VERSION
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`PUBLIC REDACTED VERSION
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`Patent Owner Sur-Reply, IPR2018-00952
`US. Patent No. 9,253,239
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`Exhibit
`
`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
`
`2026 Declaration of C. Coulson in support of Bradium Technologies
`
`LLC’s Preliminary Patent Owner’s Response
`
`2027 Bradium Technologies LLC’s Disclaimer of Claims 1-19, 21-25
`
`2028 Orthogonality, Wikipedia,
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`https://en.wikipedia.org/wiki/Orthogonality
`
`2029
`
`IPRs, Balancing Eflectiveness vs. Cost, RPX (June 17, 2016)
`
`https://www.rpxcorp.com/20 1 6/06/ 1 7/iprs-balancing-effectiveness-
`
`vs—cost/
`
`2030 How Much does IPR Cost?, Patent Trademark Blog,
`
`2037
`
`2031 Microsoft Corp. v. Bradium Techs. LLC, IPR2016-01897 (US. 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,
`
`20 1 7)
`
`2033 NPE Zones: Deter bad NPE conduct, Unified Patents (Sept. 20,
`
`201 8), https://www.unifiedpatents.com/npe/
`
`2034 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)
`
`2035
`
`Declaration of L. Quan in support of Bradium Technologies LLC’s
`
`Preliminary Patent Owner’s Response
`
`2036
`
`“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
`
`2038 Unified ’s Real-Party-in-Interest PTAB Panel Decisions, Unified
`
`Patents (July 5, 2016), https://www.unifiedpatents.com/news/real-
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`party-in-interest-panel-decisions
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`Vii
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`Patent Owner Sur-Reply, IPR2018-00952
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`Exhibit
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`2039 Belcher, Marta, et al., “Hacking the Patent System: A guide to
`
`Alternative Patent Licensing for Innovators,” Juelsgaard Intellectual
`
`Property & Innovation Clinic Stanford Law School, updated January
`
`201 6
`
`2040
`
`PDF Copy of https://www-unifiedpatents-com/join/ (downloaded
`
`October 9, 2018)
`
`2041
`
`PDF Copy of https://www.unifiedpatents.com/join-1/ (downloaded
`
`October 9, 2018) (not filed)
`
`2042 Declaration of C. Coulson (not filed)
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`2043 Declaration of L. Quan (not filed)
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`
`
`2044
`
`Transcript of Deposition of Christopher K. Wilson (March 8, 2019)
`
`2045 Wilson Deposition Ex. 2038: Unified Patents Inc. v. Location Based
`
`Services, LLC, IPR2017-01965, Declaration of Christopher K-
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`Wilson (Excerpted)
`
`2046 Wilson Deposition Ex. 2039: US. Patent Publication No.
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`2012/0095682
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`Wilson Deposition EX. 2040: US. Patent Publication No.
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`2002/0014979
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`2048 Notarized Affidavit of Christopher Butler, Internet Archive
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`2049
`
`Exhibits to Notarized Affidavit of Christopher Butler, Exhibit A
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`(Unified Patents “Join” Webpage) and Exhibit B (Belcher, Marta, et
`
`al., “Hacking the Patent System: A guide to Alternative Patent
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`Licensing for Innovators,” Juelsgaard Intellectual Property &
`
`Innovation Clinic Stanford Law School, updated January 2016)
`
`2050 Dec. 8, 2016 J. Lasker Letter to M. Shanahan
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`2051
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`June 17, 1996 FlashPix Format and Architecture White Paper
`
`2052 Application No. 15/457,816, Oct. 4, 2017 Non-Final Rejection, IDS,
`
`List of References
`
`2053 Application No. 15/457,816, Oct. 4, 2018 Final Rejection
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`2054 Declaration of Dr. Agourls 1n Support of Patent Owner Response
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`viii
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`Exhibit Description
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`2055 Declaration of Dr. Agouris in Support of Contingent Motion to
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`Amend
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`2056 Declaration of Jessika Sprague in Support of Patent Owner
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`Response
`
`2057
`
`“Summary of Findings: Search Results Using Unified Patents
`
`Portal,” prepared by J. Sprague
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`2058
`
`PDF copy of
`
`
`
`https://portal.unifiedpatents.com/ptab/caselist?patent_owners=bradiu
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`m (downloaded April 1, 2019)
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`2059
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`Second Declaration of Dr. Agouris in Support of Contingent Motion
`to Amend
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`ix
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`
`Introduction
`Petitioner has not shown that Claim 20 is obvious. Petitioner has not shown
`
`I.
`
`that Reddy teaches prioritization of requests for image tiles. Further, Claim 20
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`requires prioritization of image parcel requests based on both a first and a second
`
`user-controlled viewpoint, but Petitioner has not shown that Reddy, alone or in
`
`combination with other asserted art, suggests this.
`
`Regardless of how the Board interprets Claim 20, Petitioner also has not
`
`shown that a POSITA would have selected and combined Reddy, Hornbacker and
`
`Rosasco to achieve the claimed invention. Petitioner has offered no convincing
`
`reason for the combination, and asserts for the first time in reply that the sorting of
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`Rosasco was “well known.” But Petitioner ignores other well-known alternatives
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`to the invention such as progressive transmission algorithms that were praised in
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`the art of record. Petitioner’s expert Wilson’s opening declaration and appendices
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`are replete with examples of praise for such alternative algorithms, including praise
`
`for their efficiency in gradually improving the resolution of the transmitted image
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`without repeating image information—the opposite of the tile-based approach of
`
`Claim 20, in which numerous overlapping copies of an image at varying
`
`resolutions may be transmitted. Petitioner does not convincingly explain why a
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`POSITA would, in the face of such alternatives, have attempted to combine
`
`references in the manner alleged to achieve Claim 20.
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`Unified also has failed to meet its burden to show that it is the sole Real
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`Patent Owner Sur-Reply, IPR2018-00952
`U.S. Patent No. 9,253,239
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`Party in Interest (RPI). Further, the Board should exercise its discretion to
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`terminate this proceeding because it is essentially the same as the prior Microsoft
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`IPR.
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`II. Unified Failed to Identify All RPIs
`A. Unified Relies on an Erroneous Legal Standard
`In its Reply, Unified persists in arguing for adoption of an erroneous legal
`
`standard, under which “funding, direction, and control are central to the question of
`
`whether a third party is an RPI.” (Reply, 2.) The citations that follow this
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`quotation from Unified’s brief, however, do not support any such legal standard.
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`(Id.) At most, the existence of control might serve as additional evidence that
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`under AIT, the third party stands to benefit from an IPR and has a pre-existing
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`relationship with petitioner. But the absence of direct control, etc., does not
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`somehow negate other evidence showing both benefit and relationship. And
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`certainly “funding” and “direction” for IPRs may be direct or indirect, explicit or
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`implicit. Here, Apple and Google indisputably,
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`
`
` Unified’s efforts to file IPRs. Their only motivation can be that they
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`perceive a benefit (patents invalidated or held up in PTAB proceedings, and
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`weakening patent owners’ finances and ability to negotiate licenses) from doing so.
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`Even if they do not direct the strategy for a specific IPR, the fact that they provide
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`, whose principal business is filing IPRs, logically
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`indicates direction to Unified to continue filing IPRs that benefit Apple and
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`Google. Unified, which has the burden, has not shown otherwise.
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`Unified’s criticism that Patent Owner’s interpretation of AIT “contradicts
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`binding authority” (Reply, 3) is certainly wrong. The precedential PTAB decision
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`cited by Unified in fact confirms the opposite. In Ventex v. Columbia Sportswear,
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`IPR2017-00651 (P.T.A.B. Jan. 24, 2019), Paper 152, 10, the Board stated that “the
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`Court in AIT invites a ‘flexible approach’ in the real party in interest query that
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`focuses on whether a ‘non-party is a clear beneficiary that has a preexisting,
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`established relationship with the petitioner.’” This is precisely the standard that
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`Patent Owner has advanced here. Although Ventex noted some caution about
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`extending AIT to a circumstance where an unnamed party receives only “general”
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`benefits, that caution must also be weighed in the context of AIT’s repeated
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`pronouncement that the term RPI should be interpreted “expansively,” 897 F.3d at
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`1350, 1351, 1363, and in the context of Unified’s burden of proof to show that it is
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`the only RPI.1
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`1 To the extent Unified relies on past findings in other IPRs regarding
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`whether Unified had named all RPIs (Reply, fn.1), that reliance is misplaced.
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`Finally, Unified’s efforts to limit AIT to its facts are largely irrelevant. The
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`facts in this case are highly similar to those in AIT as set forth in the POR (Paper
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`No. 19, pp. 4-14), but even to the extent they are different, AIT announced the
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`governing principles that apply. The Court in AIT gave no indication that its
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`holding was limited to the facts there.
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`B. Unified Has Not Shown That it is the Only RPI
`Most of Unified’s Reply is devoted to showing that Apple and Google did
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`not directly fund or control this IPR, and did not specifically ask Unified to initiate
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`this IPR. Since these are not the correct focus of inquiries under the AIT test, as
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`confirmed in Ventex, most of Unified’s arguments are beside the point. Further, to
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`the extent Unified does address its pre-existing relationship with Apple/Google,
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`and the benefits received and to be received by them as a result of Unified’s filing
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`of the IPR, Unified has failed to meet its burden to prove that it is the only RPI.
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`1.
`Unified and Apple/Google Had a Pre-Existing Relationship
`Unified does not deny that it is a “for-profit” entity, that it has had a pre-
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`existing, contractual relationship with Google/Apple pursuant to which they have
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`None of those other IPRs involved Bradium or the patent at issue here. This IPR
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`also raises specific questions about Unified’s relationship with, and the benefits
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`received by, the two RPIs who most stand to benefit from this IPR.
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`together
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`, that Unified is one of
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`the most prolific IPR filers, and that Unified markets its filing of IPRs, its
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`“alignment” with Google, and its “avoidance” of RPI issues in order to attract
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`members. Google/Apple’s
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`
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`184:12-14.
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`. EX2004, 127:14-19, 183:12-14,
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`
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`. Paper No. 19, p. 6 and n.1.
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`By contrast, Unified, which has the burden, provides no evidence that its
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`non-IPR activities,
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`. Unified’s citation (Reply, 11)
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`to a Board statement in another case that Unified performs certain non-IPR
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`services has no bearing on whether those services are material in any way to
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`Google/Apple.
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`The evidence shows, and Unified has not proven anything to the contrary,
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`that Apple and Google pay Unified to file IPRs. The nature of the relationship thus
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`satisfies the AIT standard.
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`2.
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`Apple/Google Receive Specific Benefits From the Filing of
`This IPR
`In its Reply, Unified admits the very fact that demonstrates one of the key
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`benefits to Google/Apple: Unified believed that “Bradium could assert this patent
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`again.” (Reply, 6.) Keeping in mind that Unified (by its admission) files IPRs to
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`protect the members of the relevant zone, who amongst its members in the
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`“Content Zone” might the patent be asserted against? The ’239 patent is directed
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`to mapping technology. Unified already knew prior to filing the IPR that
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`Microsoft had previously been sued with respect to Bing Maps. EX2037, ¶¶ 7, 10;
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`ID, p. 45. The
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` members who stood to benefit were and are obvious: the two
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`leading mapping technology companies of the United States, Apple and Google,
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`, and who have been
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`the beneficiary of dozens of IPRs that Unified has filed in which they were
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`litigation parties. POR, pp. 17-19; EX2035, ¶¶ 8-9.
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`Unified contends that it “was not driven by the desires of a specific member”
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`(Reply, 6), but identifies no support for that statement. Unified also contends that
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`Bradium “presents no evidence contradicting these factors” (id.), but this misplaces
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`the burden on Bradium. Unified also states that it was unaware of Bradium’s
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`licensing activities with Google/Apple, but even if true that does not undermine the
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`common-sense conclusion that following the Microsoft suit, Unified members
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`Google/Apple were the entities most at risk from an assertion of the patent.2
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`Unified also argues that the absence of a time bar applicable to
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`Google/Apple shows they would not receive a benefit from this IPR. Regardless
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`of time bar, however, Google/Apple would stand to benefit from invalidation of a
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`patent that had already been asserted (as Unified knew) against Microsoft’s
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`mapping platform. Unified misleadingly suggests that in AIT, the Federal Circuit
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`held that the existence of a “time bar” was a “crucial” fact. (Reply, p. 8.) The
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`Federal Circuit said no such thing in AIT, and indeed stated that RPI was to be
`
`interpreted “expansively.” In Unified Patents Inc. v. Realtime Adaptive Streaming,
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`LLC, IPR2018-00883 (P.T.A.B. Oct. 11, 2018), also cited by Unified (id.), the
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`Board stated at p.163 that AIT found the existence of a time-bar to be “crucial,” but
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`the cited portion of AIT made no such statement, expressly or impliedly.
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`2 Unified states (Reply, fn.6) that non-members HERE and Michelin might
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`also have been at risk, but as non-members, with infinitesimal market share
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`compared to Google or Apple, whether they were or were not at risk would have
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`been of no concern to Unified. Unified admits that it protects its zones (id., 10),
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`and apparently HERE and Michelin were not zone members.
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`3 Unified mistakenly cited p. 15.
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`7
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`PUBLIC REDACTED VERSION
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`Finally, Unified argues that the benefits to
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` are only
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`Patent Owner Sur-Reply, IPR2018-00952
`U.S. Patent No. 9,253,239
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`“general” benefits available to all zone members. But Unified does not identify
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`any other zone members who would receive any benefit at all from an IPR on a
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`patent concerning mapping technology. Any benefit from attacking Bradium,
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`whose only patents concern mapping technology, would accrue mainly if not
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`exclusively to two
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`members—Apple and Google—
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`.
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`In sum, Unified has not identified any particular benefits that other Content
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`Zone members would receive. By contrast, Apple/Google benefit from potential
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`invalidation of a patent of which they are the natural targets (and which not
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`incidentally or surprisingly was the subject of ongoing license discussions). Even
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`without invalidation, Apple/Google benefit from the delay of having the patent tied
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`up in an IPR, making litigation against them unlikely as long as the IPR is pending.
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`Apple/Google also benefit from a weakened position of Bradium in any licensing
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`discussions while the IPR is pending. Lastly, if Apple/Google are not determined
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`to be IPRs, they will have significantly greater freedom to file their own IPRs on
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`the ’239 patent if they are sued on that patent, and to use Unified’s IPR, and the
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`Board’s decisions, as a roadmap, giving them multiple bites at the patent. Apple
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`Inc. v. Uniloc, IPR2018-00282 (P.T.A.B June 4, 2019) Paper 30, 27 (concurrence).
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`8
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`PUBLIC REDACTED VERSION
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`
`
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`Unified contends (Reply, p. 10) that the “benefits+relationship” test would
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`Patent Owner Sur-Reply, IPR2018-00952
`U.S. Patent No. 9,253,239
`
`sweep in parties to joint defense agreements. This is a strawman argument.
`
`Parties to joint defense agreements do not typically pay anyone to file IPRs, as
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`Google and Apple do with Unified.
`
`III. The Board Should Exercise Its Discretion to Terminate This IPR.
`Unified argues that the Board previously considered whether institution
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`should be declined under § 325(d). However, as pointed out in the POR (Paper 38,
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`15-17), in the Institution Decision the Board merely stated that § 325(d) did not
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`apply because “the ground and the Petitioner are different than in the Microsoft
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`IPR.” Paper 31, p. 16. Respectfully, the Board did not cite any authority for this
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`statement, and § 325(d) does not by its terms require that the ground and the
`
`Petitioner be the same. In its Reply, Unified does not state any disagreement with
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`Patent Owner’s argument that nothing in § 325(d) requires the petitioner and the
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`grounds to be the same. Nor does Unified provide any argument rebutting the
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`merits of Patent Owner’s § 325(d) argument, in effect conceding the validity of
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`Patent Owner’s argument. For the reasons stated in the POR, the Board should
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`terminate this IPR on the basis of § 325(d), as well as for the separate reasons
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`stated in the POR regarding § 314(a).
`
`The Board’s recent decision in Valve Corp. v. Electronic Scripting,
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`IPR2019-0062 (P.T.A.B. Apr. 2, 2019), Paper 13, decided after Bradium’s POR
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`9
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`PUBLIC REDACTED VERSION
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`
`
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`was filed and designated as precedential a month later, is further instructive
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`Patent Owner Sur-Reply, IPR2018-00952
`U.S. Patent No. 9,253,239
`
`regarding § 314(a).4 There, the petitioner waited until the PTAB denied institution
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`of another party’s IPR petition, then filed its own petition. The Board held that
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`“application of the General Plastic factors is not limited solely to instances where
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`multiple petitions are filed by the same petitioner.” Id. at 9. Further, weighing the
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`factors, the Board found that petitioner’s access to the patent owner’s POPR and
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`the Board’s non-institution decision favored denial of institution. Id. 12-13.
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`Similarly, here Unified had access to these documents and admittedly largely
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`copied Microsoft’s IPR, while using the Microsoft ID as a roadmap to supplement
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`one aspect of its argument regarding claim 20, the only claim at issue in this IPR.
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`The Board in Valve also found that the petitioner’s 5-month delay in filing its IPR
`
`following denial of the earlier IPR weighed against institution. Id. 13-14. Here, as
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`Judge Chung pointed out in the ID, Unified waited over one year after the ID in the
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`Microsoft IPR, and even longer after Patent Owner’s POPR was filed, to file its
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`own IPR. Id., p. 47. Further weighing of the factors in light of Valve favors
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`termination of this IPR.
`
`
`4 Unified could have addressed this decision in its Reply dated July 1, 2019,
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`but did not.
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`10
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`PUBLIC REDACTED VERSION
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`
`
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`Unified also makes a procedural argument that Patent Owner should have
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`Patent Owner Sur-Reply, IPR2018-00952
`U.S. Patent No. 9,253,239
`
`requested a rehearing of the institution decision, or that Patent Owner should have
`
`filed a motion to terminate. But nothing in the rules requires a Patent Owner to file
`
`a rehearing request if it disagrees with a Board’s institution decision. If that were
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`the case, the Board would be besieged with rehearing requests in virtually every
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`case—from Patent Owners anywhere review is instituted and Petitioners anywhere
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`it is not—and does not comport with the requirements for rehearing. By the same
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`token, nothing in the rules precludes a Patent Owner from raising—or adding to, or
`
`addressing the Board’s ID—an argument in its POR that was previously raised in
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`some form in its POPR. Also, filing a rehearing request might not preserve
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`Bradium’s position for purposes of an appeal if the rehearing request were
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`denied—the argument arguably should be made in the POR. In re NuVasive, Inc,
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`842 F.3d 1376 (Fed. Cir. 2016).
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`Unified’s second procedural argument also fails. The TPG does not require
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`Bradium to file a motion to terminate. In responding to comments on the original,
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`draft TPG, the USPTO stated that a standing issue “may” be raised post-institution
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`by motion upon the Board’s authorization. 77 Fed. Reg. at 48695 (Response to
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`Comment 8). Furthermore, this comment does not state that raising the standing
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`issue post-institution requires new evidence. Finally, though a motion is not
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`required, the Board may treat Patent Owner’s argument under § 325(d) or § 314(a)
`11
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`PUBLIC REDACTED VERSION
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`
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`as though it were a motion, as both parties have had notice and a fair opportunity to
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`Patent Owner Sur-Reply, IPR2018-00952
`U.S. Patent No. 9,253,239
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`brief the issue.
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`IV. This IPR Is Unconstitutional Under the Appointments Clause
`Bradium does not disagree with Unified that the Board has no authority to
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`determine whether the appointment of the Board members is constitutional.
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`(Reply, 13-14.) Neither the PTAB nor the Board can remedy the issue absent
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`legislation or presidential appointment. However, the Solicitor General’s office
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`has taken the position that the Appointments Clause issue is waived if not raised
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`before the PTAB. While Bradium disagrees with the SG’s position, Bradium
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`raises the issue out of caution.
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`V.
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`Petitioner has Not Shown that Reddy Teaches or Suggests Claim 20
`In Reply, Petitioner continues to argue that Reddy discloses prioritization of
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`requests for image tiles, but, as the Board correctly concluded in IPR2016-01897,
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`it does not. POPR, 40; POR, 1. Petitioner’s new “twelve tile” theory was
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`advanced for the first time in Reply (and also contradicts the explicit disclosure of
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`Reddy and Wilson’s prior testimony) and should be disregarded. See TRIAL
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`PRACTICE GUIDE UPDATE (July 2019) Section I (p.40) (examples of improper reply
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`argument include evidence that could have been presented in a prior filing; and
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`new rationale for combining the prior art).
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`12
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`PUBLIC REDACTED VERSION
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`
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`Petitioner further attempts to show that the asserted Reddy reference
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`Patent Owner Sur-Reply, IPR2018-00952
`U.S. Patent No. 9,253,239
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`discloses determining priority based on two user-controlled image viewpoints, but
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`the “Prefetching” and “Flyover” features of Reddy retrieve image tiles based on a
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`single viewpoint—the user’s current viewpoint—and therefore Reddy does not
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`teach or suggest Claim 20, even in combination with the other asserted art.
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`A.
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`Petitioner’s New Theory is Unsupported and Contradicts the
`Explicit Disclosure of Reddy
`It is beyond dispute that Reddy touts as an advantage that the distance-based
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`LOD feature requires downloading and rendering only ten tiles. EX1004, ¶16.
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`For the example of 128x128 tiles, Reddy explains: “[a]ssuming a tile size of
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`128x128 pixels, this example requires downloading and rendering only 491 Kbytes
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`(10 tiles) instead of the entire 3.1 Mbyte high-resolution image.” Id.
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`In his opening declaration, Wilson confirmed that distance-based LOD
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`downloads only ten tiles for a scene, going so far as to calculate exactly how ten
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`tiles at 24 bits per pixel equate to the 491 Kbyte download recited in Reddy.
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`EX1005, 113 n.4. Wilson’s declaration included a graphical representation
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`showing these ten non-overlapping image tiles for the scene–three yellow (lower
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`resolution), three green (medium resolution), and four blue (higher resolution)
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`image tiles, as shown in the following diagram:
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`13
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`PUBLIC REDACTED VERSION
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`Patent Owner Sur-Reply, IPR2018-00952
`U.S. Patent No. 9,253,239
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`
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`EX1005, ¶¶114-115; EX2044, 11:1-12:6; EX2054, ¶¶71-72.
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`At deposition, Wilson confirmed this un
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