Trials@uspto.gov
`571-272-7822
`
` Paper 25
`Date entered: February 25, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
` SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01102
`Patent 8,811,952
`____________
`
`Before JONI Y. CHANG, THOMAS L. GIANNETTI, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`PUBLIC VERSION
`
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`571-272-7822
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` Paper 25
`Date entered: February 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
` SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01102
`Patent 8,811,952
`____________
`
`Before JONI Y. CHANG, THOMAS L. GIANNETTI, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
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`I.
`
`INTRODUCTION
`
`A. Background
`Google LLC (“Petitioner” or “Google”) filed a Petition requesting
`inter partes review of claims 26–28 and 30 (the “challenged claims”) of U.S.
`Patent No. 8,811,952 (Ex. 1001, the “’952 patent”). Paper 1 (“Pet.”). Seven
`Networks LLC (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). With the Board’s authorization, Petitioner filed a Reply
`(Paper 10, “Reply”) and Patent Owner filed a Sur-reply (Paper 14, “Sur-
`reply”).1
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition and the Preliminary Response shows that “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`For the reasons that follow, we deny the Petition and do not institute
`inter partes review of the challenged claims of the ’952 patent.
`
`B. Related Proceedings
`The parties identify the following matters related to the ’952 patent:
`1. The ’952 patent is the subject of the following petitions for inter
`partes review filed by Samsung Electronics Co., Ltd. (“Samsung”):
`IPR2018-01113 and IPR2018-01114. Paper 3, 2.
`
`1 Papers 10 and 14 are non-public. Papers 11 and 15 are redacted public
`versions.
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`2. The ’952 patent is also involved in numerous civil actions for
`infringement. See Pet. 1; Paper 3, 2–3; Paper 4, 1–2.
`
`C. The ’952 Patent
`The ’952 patent is titled “Mobile Device Power Management in Data
`Synchronization over a Mobile Network With or Without a Trigger
`Notification.” Ex. 1001 (54). According to the patent, mobile email
`messaging systems typically use a store and forward architecture. Id. at
`1:23–24. With this architecture two versions of the same mailbox exist:
`“[t]he primary mailbox on the email server or desktop PC, and the replicated
`mailbox on the mobile device.” Id. at 1:39–41. “Consistency between the
`primary and the replicated mailbox may be maintained to some degree using
`synchronization messages passing back and forth between the redirector and
`the mobile device.” Id. at 1:41–45. According to the patent, “[t]his store
`and forward architecture is cumbersome, does not operate in real-time, and
`requires sending a large number of email messages over the Internet.” Id. at
`1:51–53.
`The patent describes “[a] real-time communication architecture [that]
`establishes a continuous connection between an enterprise network and a
`communication management system.” Id. at 1:59–61. “The connection is
`continuously held open allowing mobile devices real-time access to
`enterprise data sources such as email systems.” Id. at 1:61–63. “The
`real-time communication architecture can support an entire enterprise email
`system or individual email users.” Id. at 1:63–65.
`The ’952 patent describes an embodiment where the mobile device
`can automatically send synchronization requests from the mobile device to
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`the network on a periodic basis, and the periodicity of the synchronization
`requests occur at a frequency determined according to remaining battery
`power on the mobile device. Id. at 8:53–58. The patent explains that
`different charge gradient levels can be used for varying how often the
`mobile device synchronizes with the client. Id. at 8:61–9:3.
`D. Illustrative Claim
`The Petition challenges claims 26–28 and 30. Of the challenged
`claims, only claim 26 is independent. Claim 26 follows:
`26. A mobile device located in a mobile network, comprising:
`a processor configured to:
`exchange transactions with a client operating in a
`network through a connection provided through a server
`coupled to the client;
`automatically send synchronization requests from the
`mobile device to the network on a periodic basis;
`wherein, the periodicity of the synchronization requests
`occur at a frequency determined according to remaining battery
`power on the mobile device;
`and exchange synchronization communications with the
`client over the connection after sending each synchronization
`request.
`Ex. 1001, 11:5–18. Claims 27, 28, and 30 depend directly from claim 26.
`
`E. References
`Petitioner relies on the following references:
`1. Beyda et al. U.S. Patent 6,470,358 (Ex. 1005, “Beyda”)
`2. Friend et al. U.S. Patent 7,155,483 (Ex. 1006, “Friend”)
`3. Silvester et al. U.S. Patent 6,631,469 (Ex. 1007, “Silvester”)
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`In addition, Petitioner relies on a Declaration of Dr. Richard T. Mihran,
`dated May 17, 2018 (Ex. 1003, “Mihran Decl.”).
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the challenged claims are unpatentable on the
`following grounds:
`References
` Beyda and Silvester
`Friend, Beyda, and Silvester
`
`Basis Claims Challenged
`§ 103 26–28 and 30
`§ 103 26–28 and 30
`
`Pet. 2.
`
`II. PRELIMINARY MATTERS
`A. Real Party-in-Interest
`Under 35 U.S.C. § 312(a)(2), a petitioner is required to identify all of
`the real parties in interest (“RPI”) in each inter partes review proceeding.
`We generally accept a petitioner’s initial identification of the RPIs unless the
`patent owner presents some evidence to support its argument that an
`unnamed party should be included as an RPI. See Worlds Inc. v. Bungie,
`Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018) (explaining that “an IPR
`petitioner’s initial identification of the real parties in interest should be
`accepted unless and until disputed by a patent owner,” and that “a patent
`owner must produce some evidence to support its argument that a particular
`third party should be named a real party in interest”). Furthermore, the
`petitioner bears the burden of persuasion to demonstrate that it has identified
`all of the RPIs. Cf. id. at 1242−43. This burden does not shift to the patent
`owner. Id. at 1243−44.
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`Here, Petitioner identifies Google LLC (“Google”) as the sole RPI.
`Pet. 1. Patent Owner, however, argues that the Petition should be denied for
`failing to identify Google’s parent companies—namely, Alphabet, Inc.
`(“Alphabet”) and XXVI Holdings, Inc. (“XXVI”)—as well as Samsung
`Electronics Co., Ltd. and/or Samsung Electronics America, Inc.
`(collectively, “Samsung”), as RPIs. Prelim. Resp. 2−27. According to
`Patent Owner, the failure to identify all RPIs “is a fatal and incurable error
`when, as here, the § 315(b)’s one-year ban has elapsed.” Id. at 3.
`At the outset, Patent Owner incorrectly conflates § 312(a)(2) with
`§ 315(b) by applying § 312(a)(2) as part of the timeliness inquiry under
`§ 315(b). These statutory provisions “entail distinct, independent inquiries.”
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1364 (Fed.
`Cir. 2018) (Judge Reyna’s concurring opinion) (“AIT”). As the U.S. Court
`of Appeals for the Federal Circuit has noted, it “is incorrect” to “conflate[]
`‘real party in interest’ as used in § 312(a)(2) and § 315(b), and claim[] that
`‘§ 312(a)(2) is part and parcel of the timeliness inquiry under § 315.’” Wi-Fi
`One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en
`banc) (“Wi-Fi En Banc”). “For example, 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.” Id. “In contrast, if a petition is not
`filed within a year after a real party in interest, or privy of the petitioner is
`served with a complaint, it is time-barred by § 315(b), and the petition
`cannot be rectified and in no event can IPR be instituted.” Id.
`Here, Google is not time-barred from filing its Petition under
`§ 315(b). Google was served on May 18, 2017, with a complaint alleging
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`infringement of the ’952 patent. Ex. 2003, 2. The Petition was timely filed
`by Google within one year from May 18, 2017. Paper 4, 1. Moreover, none
`of the allegedly unnamed parties was served on or before May 18, 2017,
`with a complaint alleging infringement of the ’952 patent. Neither Alphabet
`nor XXVI are defendants in the related district court infringement action.
`Ex. 1040 ¶ 11; Ex. 2003. Samsung was served with a complaint on May 19,
`2017. Thus, even if the allegedly unnamed parties were RPIs, the Petition
`would not be time-barred under § 315(b) if they were included.
`In short, the dispositive issues here are whether at least one of the
`unnamed parties qualifies as an RPI under § 312(a)(2), and if so, whether it
`would be appropriate to permit Google to add that party. In this proceeding,
`however, it is not necessary for us to decide the privity issue under § 315(b),
`which “is more expansive, encompassing parties that do not necessarily need
`to be identified in the petition as a ‘real party-in-interest.’” Office Patent
`Trial Practice Guide (“TPG”), 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012).
`
`1. Principles of Law
` “Whether a party who is not a named participant in a given
`proceeding nonetheless constitutes a ‘real party-in-interest’ . . . to that
`proceeding is a highly fact-dependent question” with no “bright-line test,”
`and is assessed “on a case-by-case basis.” TPG, 77 Fed. Reg. at 48,759
`(citing Taylor v. Sturgell, 553 U.S. 880, 893−95 (2008); 18A Charles Alan
`Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice &
`Procedure (“Wright & Miller”) §§ 4449, 4451). “Courts invoke the terms
`‘real party-in-interest’ . . . to describe relationships and considerations
`sufficient to justify applying conventional principles of estoppel and
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`preclusion.” Id. The use of familiar common law terms indicates that
`“Congress intended to adopt common law principles to govern the scope” of
`the statute. Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1335 (Fed.
`Cir. 2018) (“Wi-Fi Remand”).
`“To decide whether a party other than the petitioner is the real party in
`interest, the Board seeks to determine whether some party other than the
`petitioner is the ‘party or parties at whose behest the petition has been
`filed.’” Id. at 1336 (citing TPG, 77 Fed. Reg. at 48,759) (emphasis added);
`see also AIT, 897 F.3d at 1351 (noting that one of the questions lying at the
`heart of determining whether an unnamed party is an RPI is “whether a
`petition has been filed at a nonparty’s ‘behest’”). “A common consideration
`is whether the non-party exercised or could have exercised control over a
`party’s participation in a proceeding.”2 TPG, 77 Fed. Reg. at 48,759
`(emphasis added) (citing Wright & Miller § 4451). “A party that funds and
`directs and controls an IPR or post-grant review proceeding constitutes a
`real party-in-interest, even if that party is not a privy of the petitioner.”
`Wi-Fi Remand, 887 F.3d at 1336 (emphasis added) (citation and internal
`markings omitted). Also, several relevant factors for determining whether a
`party is an RPI include the party’s relationship with the petitioner, the
`party’s relationship to the petition, and the nature of the entity filing the
`petition. TPG, 77 Fed. Reg. at 48,760; see AIT, 897 F.3d at 1351.
`There is no bright-line test for determining the necessary quantity or
`
`2 We address this common consideration in our Decision because Patent
`Owner argues that Alphabet or XXVI controlled or could have controlled
`Google’s participation in this proceeding. Prelim. Resp. 5−23; Sur-reply
`1−5.
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`degree of participation in the proceeding to qualify as a real party-in-interest.
`TPG, 77 Fed. Reg. at 48,759 (citing Gonzalez v. Banco Cent. Corp., 27 F.3d
`751, 759 (1st Cir. 1994)). An unnamed party’s participation may be overt or
`covert, and the evidence may be circumstantial, but the evidence, as a whole,
`must show that the unnamed party possessed effective control from a
`practical standpoint. Gonzalez, 27 F.3d at 759. This inquiry is not based on
`isolated facts, but rather must consider the totality of the circumstances. Id.
`
`2. Alphabet, Inc. and XXVI Holdings, Inc.
`Petitioner maintains that Google is the sole RPI in this proceeding.
`Reply 1. Petitioner asserts that Google alone funded, controlled, and has the
`ability to control the instant proceeding, and that neither Alphabet nor XXVI
`had control or has the ability to control this proceeding. Reply 1, 3−10.
`Petitioner contends that Alphabet and XXVI “had no involvement or
`influence over this IPR,” as Google’s counsel alone decided to file this
`Petition and directed the preparation of the Petition. Id. at 3.
`Based on the evidence in the present record, we are persuaded by
`Petitioner’s showing. For instance, Petitioner presents testimony from
`Mr. Joseph Shear, a member of
`
`.
`
`Ex. 1040 ¶¶ 2, 16. Mr. Shear testifies that
`
` Id. ¶ 9. Mr. Shear also
`testifies that “[n]o Alphabet or XXVI officer, director, or employee was
`consulted regarding the preparation of this IPR petition or the decision to file
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`this IPR petition,” and that
`
` Id. ¶¶ 17−18 (citing Ex. 1043).
`Patent Owner does not rebut this testimony at this time. Nor is there
`any other evidence in this record that suggests the instant Petition has been
`filed at the behest of Alphabet or XXVI. Alphabet and XXVI are not named
`defendants in the related district court infringement action concerning the
`’952 patent. Ex. 1040 ¶ 11; Ex. 2003.
`
`Ex. 1040 ¶ 14. Moreover, neither Alphabet nor XXVI has intervened in the
`infringement action. Id. ¶ 15. As discussed above, the evidence of record
`shows that Google independently controls and funds the Petition and this
`proceeding. Id. ¶¶ 9, 16−18.
`Upon consideration of the entirety of the present record, we are
`persuaded that Petitioner has demonstrated sufficiently for purposes of this
`Decision that Alphabet and XXVI are not RPIs to the instant proceeding.
`We now address Patent Owner’s contentions in turn.
`First, Patent Owner argues that the “Board has regularly found that
`parent corporations are unnamed RPIs.” Prelim. Resp. 5; Sur-reply 1−5.
`Patent Owner contends that Petitioner’s argument “is contrary to law,”
`because it is based on “the specific relationship between the parent and the
`‘proceeding.’” Sur-reply 4. Patent Owner cites several Board decisions and
`the Federal Circuit’s AIT decision for support. Id. at 4−5; Prelim. Resp.
`6−19.
`
`However, in making this argument, Patent Owner conflates the RPI
`inquiry with the privity inquiry by focusing mainly on the relationship
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`between the unnamed parties and Google. To be clear, the existence of a
`parent-subsidiary relationship, by itself, is insufficient proof that the parent
`company is an RPI to the subsidiary’s proceeding. TPG, 77 Fed. Reg. at
`48,759 (citing Taylor, 553 U.S. at 893−95; Wright & Miller §§ 4449, 4451)
`(noting that whether an unnamed party is an RPI “to that proceeding is a
`highly fact-dependent question” with no “bright line test”). Prior Board
`decisions make clear that the RPI inquiry focuses on “the relationship
`between a party and a proceeding,” and that the relationship between a party
`and the petitioner alone is not determinative. Aruze Gaming Macau, Ltd. v.
`MGT Gaming, Inc., Case IPR2014-01288, slip op. at 10−11 (Paper 13)
`(PTAB Feb. 20, 2015) (reviewing prior Board decisions establishing a
`non-party as an RPI and explaining that in each, “central to the Board’s
`determination was that a party other than the named petitioner was
`controlling, or capable of controlling, the proceeding before the Board”).
`Aruze Gaming is cited approvingly in Judge Reyna’s concurrence in AIT,
`897 F.3d at 1365 n.7 (noting that the Board in Aruze correctly recognized
`that “[t]he parties’ briefs comingle their analyses of the issues of RPI and
`privity” and “[t]he two terms describe distinct concepts”); TPG, 77 Fed.
`Reg. at 48,760 (identifying several “[r]elevant factors”).
`As Petitioner notes (Reply 2 n.1), even in a privity analysis, the
`Supreme Court in Taylor rejected the argument that “[p]reclusion is in order
`. . . whenever ‘the relationship between a party and non-party is ‘close
`enough’ to bring the second litigant within the judgment.” Taylor, 553 U.S.
`at 898. The Court held in Taylor that a broader doctrine of nonparty
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`preclusion, termed “virtual representation,” was inconsistent with common
`law and risked violating due process. Id. at 898−900.
`Patent Owner also overextends the reasoning of AIT. An RPI analysis
`requires more than determining whether an unnamed party benefits
`generally from the filing of a petition and has a relationship with the
`petitioner. Id. at 901 (Taylor makes clear that nonparty preclusion cannot be
`based on mere “identity of interests and some kind of relationship between
`parties and nonparties.”); Wi-Fi Remand, 887 F.3d at 1341 (“Wi-Fi’s
`evidence showed that Broadcom’s interests as to the issue of infringement
`were generally aligned with those of its customers,” but “there is no
`evidentiary support for Wi-Fi’s theory that Broadcom was acting at the
`behest or on behalf of the D-Link defendants.”); Unified Patents, Inc. v.
`Realtime Adaptive Streaming, LLC, Case IPR2018-00883, slip op. 14−15
`(Paper 29) (PTAB Oct. 11, 2018).
`Notably, the RPI analysis in AIT turned on considerations not present
`here. AIT not only involved finding that RPX was a for-profit company that
`files IPR petitions to benefit its clients, but also proceeded deeper to find
`extensive and specific ties between RPX and the unnamed party as they
`relate to the particular proceeding. AIT, 897 F.3d at 1351−53. Unlike here,
`the unnamed party in AIT was accused of patent infringement, and had a
`series of communications with RPX related to the specific infringement
`action and post-grant filings challenging the asserted patent, as well as paid
`RPX “a very significant payment shortly before the IPR petitions . . . were
`filed.” Id. at 1341−42. In short, we do not agree with Patent Owner’s
`analysis that an unnamed party is an RPI if the unnamed party benefits
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`generally from the filing of a petition and has a relationship with the
`petitioner. As in AIT, an RPI analysis must proceed deeper to find specific
`ties between the petitioner and the unnamed party as they relate to the
`particular proceeding.
`For these reasons, the mere existence of a parent-subsidiary
`relationship between Alphabet or XXVI and Petitioner in this case is
`insufficient to establish that Alphabet or XXVI is an RPI to the instant
`proceeding.
`Second, Patent Owner argues that Alphabet is an “involved and
`controlling” parent, and Google cannot operate independently. Prelim.
`Resp. 8−25; Sur-reply 1−5. Patent Owner contends that because Google is a
`wholly-owned subsidiary of Alphabet, Alphabet controls 100% of Google
`and authorizes Google’s budget and plans, as well as holds its management
`responsible for their performance. Id. According to Patent Owner, Alphabet
`and Google are essentially a single entity, blurring the corporate lines. Id.
`The evidence as a whole shows the contrary, however. The present
`record contains no persuasive evidence that any of the unnamed parties
`could have exercised control of this proceeding. As Petitioner notes (Reply
`6−7), Google and other subsidiaries (“Other Bets”) of Alphabet and XXVI
`purposefully operate independently and separately from each other and from
`the parent companies. See, e.g., Ex. 2004, 1−3 (noting that “we are creating
`a new company, called Alphabet”; “[f]undamentally, we believe this allows
`us more management scale, as we can run things independently that aren’t
`very related”; “Alphabet is about businesses prospering through strong
`leaders and independence”; and “Google financials will be provided
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`separately than those for the rest of Alphabet businesses as a whole”
`(emphases added)); Ex. 2008, 1 (noting that “[o]ther businesses . . . will be
`managed separately from the Google business” (emphasis added));
`Ex. 2010, 1 (noting the goal of creating Alphabet “was to create a holding
`company structure, where Google could be managed separately from
`unrelated businesses in other industries” (emphasis added)).
`The fact that an entity is a parent company, by itself, does not
`establish automatically that it could have controlled or funded a specific
`proceeding, especially here where
`
` and Google alone
`controlled and funded this proceeding. Ex. 1040 ¶¶ 2, 9, 14−18. The record
`evidence demonstrates that neither Alphabet nor XXVI influenced,
`controlled, or has the ability to control this proceeding. Id.
`
` Id. ¶ 17; Paper 2, 2.
`
` Ex. 1040 ¶ 18; Ex. 1043.
`
` Ex. 1040 ¶ 17. In short, the
`evidence before us does not show that either Alphabet or XXVI controlled
`or could have controlled the Petition or this proceeding.
`Patent Owner also suggests that, because Google generated a high
`percentage of Alphabet’s revenue, Alphabet and Google are essentially a
`single entity. Prelim. Resp. 13. We are not persuaded by this argument,
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`which ignores the corporate separateness of Google and its parent
`companies, as well as the existence of the “Other Bets” and other portions of
`Alphabet. Alphabet’s Form 10-K for 2017 states that “[t]hroughout
`Alphabet, we are also using technology to try and solve big problems across
`many industries,” and that “Alphabet’s Other Bets are early-stage
`businesses, and our goal is for them to become thriving, successful
`businesses in the medium to long term.” Ex. 2006, 8.3 And, “[f]or instance
`. . . [o]ur self-driving car company, Waymo, continues to progress the
`development and testing of its technology.” Id. Therefore, the evidence in
`the present record does not support Patent Owner’s contention that Alphabet
`and Google are essentially a single entity.
`The record evidence also does not support Patent Owner’s argument
`that there “continues to be a significant overlap between Alphabet’s and
`Google’s leadership.” Prelim. Resp. 17–18 (emphasis added). The fact that
`Google’s leadership team became Alphabet’s leadership team in 2015 is
`insufficient to establish Alphabet controls or could have controlled this
`specific proceeding filed in 2018. Ex. 2008. In addition, the evidence
`shows only Google’s CEO sits as one member of Alphabet’s eleven-member
`Board, but he is not the CEO of Alphabet or XXVI. Ex. 1046, 1. Moreover,
`there is no evidence in this record that anyone acting on the behalf of
`Alphabet or XXVI has influenced or controlled the Petition or this
`proceeding.
`
`3 The citation refers to the page number added by Patent Owner, not the
`original page number of the document.
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`Patent Owner’s reliance on non-precedential Board decisions,
`including Sirius XM Radio, Inc. v. Fraunhofer-Gesellschaft zur Förderung
`der angewandten Forschung e.V., Case IPR2018-00690 (PTAB Sept. 6,
`2018) (Paper 16), Zerto, Inc. v. EMC Corp., Case IPR2014-01254 (PTAB
`Feb. 12, 1015) (Paper 32), Atlanta Gas Light Co. v. Bennett Regulator
`Guards, Inc., Case IPR2013-00453 (PTAB Jan. 6, 2015) (Paper 88), is
`misplaced. Sur-reply 3−5; Prelim. Resp. 5–20. Notably, unlike here, the
`record in Sirius showed that “[b]eyond Holdings’ ownership of Petitioner
`and the complete management overlap between the two entities, the
`undisputed evidence suggests Holdings and Petitioner [were] jointly
`involved in legal matters, including patent-related lawsuits and those that
`name only Petitioner.” Sirius, slip op. at 6. And the record in Zerto, unlike
`here, showed that the members of the Board of Directors for the petitioner
`and unnamed party were identical, and an indemnification agreement
`between these parties required the unnamed party, at its expense, to defend
`any action brought against the petitioner. Zerto, slip op. at 4, 10, 12. Also
`the record in Atlanta Gas, unlike here, showed that “Petitioner has not
`produced receipts or statements that show Petitioner paid the filing fee,”
`finding “unclear who paid the filing fees and legal expenses associated with
`this proceeding.” Atlanta Gas, slip op. at 10−11. More importantly, as
`discussed above, the prior Board decisions make clear that the RPI inquiry
`focuses on “the relationship between a party and a proceeding,” and that
`“the Board’s focus was on the degree of control the nonparty could exert
`over the inter partes review, not the petitioner.” Aruze, slip op. at 10−11.
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`Furthermore, we are not convinced by Patent Owner’s argument that
`Alphabet is an RPI simply because Alphabet, as a parent company,
`authorizes Google’s budget and plans, as well as holds its management
`responsible for their performance. Prelim. Resp. 15–16. There is no
`evidence in the present record that suggests Alphabet or XXVI funded or
`could have controlled this proceeding. In fact, to the contrary, according to
`
` Ex. 1040 ¶ 18; Ex. 1043. As Petitioner also points
`out (Reply 8), Alphabet “allocates resources to . . . Google as a whole” and
`is “not directly responsible for Google decisions.” Ex. 2010, 6. Alphabet
`allocates a single annual budget for Google, and Google’s CEO is
`“responsible for making decisions about resources to be allocated within and
`assessing performance of” Google. Id. at 2−3. Google’s CEO has “the
`authority to and makes key operating decisions for, evaluates performance
`of, and allocates resources to the product areas and functions within
`Google.” Id. at 6. The evidence in this entire record as a whole shows, at
`best, that Alphabet, XXVI, and Google merely have a parent-subsidiary
`relationship. That is insufficient to establish that Alphabet or XXVI and
`Google have blurred the lines of corporate separation such that Alphabet or
`XXVI controlled or could have controlled the Petition or this proceeding.
`Upon consideration of the totality of the circumstances, we determine
`that Petitioner has established sufficiently at this time that neither Alphabet
`nor XXVI is an RPI to the instant proceeding.
`
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`IPR2018-01102
`Patent 8,811,952
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`3. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`As discussed, Google states that it is the only RPI. Pet. 1. Patent
`Owner contends that Samsung also is an RPI because 1) Google and
`Samsung have a preexisting, established relationship that includes
`indemnification obligations; 2) Google and Samsung are cooperating in the
`related district court case, including by submitting joint invalidity
`contentions that rely on some of same prior art used in the Petition;
`3) Samsung will benefit from the Petition; and 4) Google and Samsung each
`filed several petitions for inter partes review of Patent Owner’s patents
`within a few days of one another. Prelim. Resp. 23–27; Sur-reply 5–7.
`Google contends that it is not indemnifying Samsung and that Samsung is
`not involved in this proceeding. Reply. 10–12.
`An RPI is “the party that desires review of the patent” and, thus, “may
`be the petitioner itself, and/or it may be the party or parties at whose behest
`the petition has been filed.” TPG, 77 Fed. Reg. at 48,759; see AIT, 897 F.3d
`at 1351. Several relevant factors for determining whether a party is an RPI
`include the party’s relationship with the petitioner, the party’s relationship to
`the petition, and the nature of the entity filing the petition. TPG, 77 Fed.
`Reg. at 48,760; see AIT, 897 F.3d at 1351.
`On this record, Google shows sufficiently that Samsung is not an RPI.
`First, the customer-supplier relationship between Samsung and Google does
`not indicate that Samsung is an RPI.
`
` Ex. 1040 ¶ 22; Ex. 1047. Thus, the evidence shows that
`Samsung and Google have a standard customer-supplier relationship, which
`
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`IPR2018-01102
`Patent 8,811,952
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`by itself does not make Samsung an RPI. See WesternGeco LLC v. ION
`Geophysical Corp., 889 F.3d 1308, 1321 (Fed. Cir. 2018) (“ION and PGS
`had a contractual and fairly standard customer-manufacturer relationship
`regarding the accused product,” which “does not necessarily suggest that the
`relationship is sufficiently close . . . that the parties were litigating . . . the
`IPRs as proxies for the other.”).
`Second, the relationship between Samsung and the Petition does not
`indicate that Samsung is an RPI. Google prepared and filed the Petition
`without any involvement from Samsung. Ex. 1040 ¶ 20. Indeed, a few days
`later, Samsung filed its own petitions. See, e.g., IPR2018-01124, Paper 2;
`IPR2018-01125, Paper 2. Google presents testimony from Mr. Shear that
`Google and Samsung filed their petitions within a few days of one another
`because their respective deadlines under 35 U.S.C. § 315(b) were a few days
`apart. Ex. 1040 ¶ 21. Thus, even if Google’s and Samsung’s interests in
`litigation with Patent Owner generally are aligned in that they have been
`charged with infringing the same patents (as would normally be true for
`co-defendants), the evidence shows that the parties acted independently and
`Google did not file the Petition at the behest or on behalf of Samsung. See
`Wi-Fi Remand, 887 F.3d at 1340–41 (“Wi-Fi’s evidence showed that
`Broadcom’s interests as to the issue of infringement were generally aligned
`with those of its customers,” but “there is no evidentiary support for Wi-Fi’s
`theory that Broadcom was acting at the behest or on behalf of the D-Link
`defendants.”).
`Third, the nature of the relationship between Google and Samsung as
`parties charged with infringing the same patents does not indicate that
`
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`IPR2018-01102
`Patent 8,811,952
`
`Samsung is an RPI. Google and Samsung are independent companies that
`Patent Owner separately accused of patent infringement. Ex. 1041;
`Ex. 2029. Patent Owner’s cases against Google and Samsung were
`consolidated for pretrial purposes (Ex. 2023), and, thus, as would normally
`be expected in such situations, Google and Samsung cooperated to file joint
`proposed claim constructions and joint invalidity contentions (Ex. 2015; Ex.
`2024, 4). But, as discussed, the evidence establishes that Google is not
`funding or controlling Samsung’s defense, and that Google prepared and
`filed the Petition independently, without any involvement from Samsung.
`Ex. 1040 ¶¶ 20, 22; Ex. 1047. Thus, the evidence does not indicate anything
`about the nature of Google or Samsung’s cooperation in litigation with
`Patent Owner that would make Samsung an RPI. Cf. AIT, 897 F.3d at 1351
`(“The evidence of record reveals that RPX, unlike a traditional trade
`association, is a for-profit company whose clients pay for its portfolio of
`‘patent risk solutions.’”).
`Therefore, based on the totality of the circumstances, we determine
`that Google shows sufficiently that Samsung is not an RPI.
`
`4. Summary
`For the foregoing reasons, we conclude that Petitioner has
`demonstrated sufficiently at this time that it has correctly identified Google
`as the sole RPI. Consequently, we do not need to reach the issue of whether
`it would be appropriate to permit Google to add additional RPIs to this case.
`
`B. Level of Ordinary Skill
`There does not appear to be a dispute on this issue. Petitioner
`contends that a person of ordinary skill would have had “either (1) a
`20
`
`PUB
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