Applications In Internet Time LLC

Patent Trials and Appeals Board

Dec 4, 2020

IPR2015-01752 (P.T.A.B. Dec. 4, 2020)

Trials@uspto.gov Paper 140
571.272.7822 Entered: December 4, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

RPX CORPORATION,
Petitioner,
v.
APPLICATIONS IN INTERNET TIME, LLC,
Patent Owner.
____________
IPR2015-01750 (Patent 8,484,111 B2)
IPR2015-01751 (Patent 7,356,482 B2)
IPR2015-01752 (Patent 7,356,482 B2)
____________

Before SCOTT R. BOALICK, Chief Administrative Patent Judge, JACQUELINE
WRIGHT BONILLA, Deputy Chief Administrative Patent Judge, and SCOTT C.
WEIDENFELLER, Vice Chief Administrative Patent Judge.

BOALICK, Chief Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(d)1

1 This decision pertains to Cases IPR2015-01750, IPR2015-01751, and IPR2015-
01752, as Petitioner’s Requests for Rehearing are substantively the same in each
case. Citations are to the paper numbers in Case IPR2015-01750.
IPR2015-01750 (Patent 8,484,111 B2)
IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)

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I. INTRODUCTION
On October 2, 2020, we issued a Final Decision on Remand after the Board
received a decision by the U.S. Court of Appeals for the Federal Circuit in
Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018)
(“AIT”) (Paper 110), remanding the case back to the Board. Paper 125, public
Paper 128 (“Dec.” or “Decision”). In its decision, the Federal Circuit concluded
that the Board previously “applied an unduly restrictive test for determining
whether a person or entity is a ‘real party in interest’ within the meaning of
§ 315(b) and failed to consider the entirety of the evidentiary record in assessing
whether § 315(b) barred institution of these IPRs.” AIT, 897 F.3d. at 1339. Prior
to issuing the Final Decision on Remand, a Panel Change Order was issued. Paper
124 (“Order”). As noted in the Order, these IPRs raised important issues for the
Board with applicability to future cases, and presented unique scheduling and
timing issues in view of Thryv, Inc. v. Click-To-Call Techs., LP, 140 S. Ct. 1367,
1370 (2020) and related case law, warranting a panel change to include the most
senior administrative patent judges available. Order 2–3.
In the Final Decision on Remand, we determined that Salesforce was a real
party in interest (an “RPI”) in these proceedings, and the Petitions, therefore, were
time-barred under 35 U.S.C. § 315(b). Dec. 35, 40. Based on that determination,
we terminated the previously instituted inter partes reviews. Id. at 40. On October
9, 2020, RPX Corporation (“Petitioner”) filed a Request for Rehearing of the
Board’s Final Decision on Remand. Paper 134 (“Req. Reh’g.”). Pursuant to our
authorization, Patent Owner filed a Response (Paper 135, “PO Resp.”), and
Petitioner filed a Reply (Paper 136, “Pet. Reply”). For the reasons discussed
below, we deny Petitioner’s Request for Rehearing.
IPR2015-01750 (Patent 8,484,111 B2)
IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)

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II. STANDARD OF REVIEW
As it relates to a request for rehearing of a Board decision, in pertinent part,
37 C.F.R. § 42.71(d) states:
The burden of showing a decision should be modified lies with the party
challenging the decision. The request must specifically identify all
matters the party believes the Board misapprehended or overlooked,
and the place where each matter was previously addressed in a motion,
an opposition, or a reply.
Thus, a request for rehearing is not an opportunity to present new arguments or
evidence or merely to disagree with the panel’s assessment of the arguments or
weighing of the evidence.
III. ANALYSIS
In the Final Decision on Remand, we determined that Petitioner had not
shown, by a preponderance of the evidence, that Salesforce was not an RPI in these
proceedings. Dec. 1–2, 6–7, 30–35, 40. As noted above, in light of this
determination, we terminated the previously instituted inter partes reviews, and
denied inter partes reviews under 35 U.S.C. § 315(b). Id. at 35, 40.
In its Request for Rehearing, Petitioner sets forth two principal arguments.
First, Petitioner asserts that the panel change following the remand from the
Federal Circuit deprived Petitioner of its due process rights and violated the
Administrative Procedure Act (APA). Req. Reh’g. 1–3; see also Pet. Reply 1–9.
Second, Petitioner asserts that the Board “overlooked and misapprehended key
evidence, resulting in factual findings that are simply wrong on critical issues.” Id.
at 3–10. We have reviewed Petitioner’s Request for Rehearing, Patent Owner’s
Response, and Petitioner’s Reply, and carefully considered all arguments presented
in view of the legal standards and the evidence of record. For the following
reasons, we are not persuaded by Petitioner’s arguments.
IPR2015-01750 (Patent 8,484,111 B2)
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1. Due Process and the APA
a. Due Process
Petitioner argues that it was deprived of due process because “[d]ue process
required that these cases be decided by the panel that conducted a pre-hearing
conference to explain what issues and evidence those judges believed were most
critical to address (Ex. 1099), and participated at oral hearing.” Req. Reh’g. 1.
Petitioner asserts that the unfairness of the panel change is highlighted by an
alleged different view of the same evidence taken by the original and current panel.
Id. at 2–3. Moreover, Petitioner asserts that the panel change is “unprecedented
and improper,” and was done without any authority authorizing such a change.
Pet. Reply 3. In light of these alleged violations, Petitioner requests that either the
Decision be vacated and remanded to the original panel, or that the Decision be
vacated so the current panel can hold an oral hearing. Req. Reh’g. 3.
Patent Owner disagrees and contends that RPX has failed to establish a
protected liberty or property interest at stake in these cases sufficient to afford
them due process protections. To the extent RPX can claim due process rights,
Patent Owner argues, the Board’s procedures have complied with the requirements
of procedural due process. PO Resp. 2–7.
As an initial matter, we note there is no question that IPR petitioners are
entitled to due process and the protections afforded by the Administrative
Procedure Act. Pet. Reply 1 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825
F.3d 1341, 1351 (Fed. Cir. 2016)). We agree with Patent Owner, however, that all
requirements of procedural due process have been met here. “The indispensable
ingredients of due process are notice and an opportunity to be heard by a
disinterested decision-maker.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080
IPR2015-01750 (Patent 8,484,111 B2)
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(Fed. Cir. 2015) (quoting Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed.
Cir. 2013)).
In this case, Petitioner had ample opportunity to brief the issue of RPI. See
Paper 28, Paper 29 (redacted version); Paper 38, Paper 37 (redacted version);
Paper 98, Paper 95 (redacted version); Paper 100, Paper 104 (redacted version);
Paper 101, Paper 102 (redacted version). Petitioner also had an opportunity to
argue the issue of RPI in two oral hearings. See Paper 77, Paper 112, Paper 123
(redacted version). Moreover, in its Request for Rehearing, Petitioner had a
chance to identify any matters it believes this panel misapprehended or overlooked
in its Final Decision on Remand. Petitioner further had an opportunity to file a
Reply to Patent Owner’s Response to its Request. Thus, both before and after this
panel issued its Final Decision on Remand, Petitioner had notice and an
opportunity to be heard on issues relevant to these cases on remand from the
Federal Circuit.
Finally, although a change in panel after remand from the Federal Circuit is
not common, this panel, like the original panel, decided the merits of each case
based on the entirety of the record. Stated another way, either panel would have
decided the case after careful consideration of the same evidence. Nor can
Petitioner complain that it lacked notice and an opportunity to be heard regarding
the panel change – Petitioner received notice of the panel change both before and
in the panel decision, and Petitioner’s Request for Rehearing and Board-authorized
Reply gave it ample opportunity to be heard.
Accordingly, we are not persuaded that the change in panel has prejudiced
Petitioner in any way or violated Petitioner’s due process rights.
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IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)

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b. APA
Along the same lines, Petitioner further asserts that the Board’s decision to
exercise discretion and deny institution under § 314(a) violated the APA because
Petitioner was given no notice or opportunity to brief the issue of discretionary
denial. Req. Reh’g. 15. Petitioner also argues that the changing of the panel in
these inter partes reviews violates the APA’s requirement that the panel that
presides at the reception of evidence also decides the case. Pet. Reply. at 5 (citing
5 U.S.C. § 554 (d) (“The employee who presides at the reception of evidence
pursuant to section 556 of this title shall make the . . . initial decision required by
section 557 of this title, unless he becomes unavailable to the agency.”). Neither of
these arguments is persuasive.
To begin with, as to the exercise of discretion under § 314(a), the Final
Decision on Remand clearly states that such consideration is not necessary to the
analysis because the decision terminated inter partes reviews based upon the
finding that Salesforce is a RPI and the Petitions are time barred under § 315(b).
Dec. 38. Nevertheless, we are not persuaded by Petitioner’s argument for the
additional reason that, as noted by Patent Owner, the factual findings underpinning
the analysis under § 314(a) are substantially the same as those relevant to the
decision to terminate the IPRs under § 315(b). PO Resp. 7; see also Dec. 38–40
(citing Valve Corporation v. Electronic Scripting Products, Inc., IPR2019-00062,
Paper 11 (PTAB April 2, 2019) (precedential); General Plastic Industries Co. v.
Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6,
2017) (precedential)).
Specifically, in considering the evidence of record, we found that RPX had
not shown, by a preponderance of the evidence, that Salesforce is not an RPI in
these proceedings. The factual findings underpinning that RPI analysis are highly
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relevant to a determination of whether the relationship between RPX and
Salesforce is the type of “significant relationship” contemplated by Valve and,
thus, would favor denying institution under § 314(a). See Valve Corp., Paper 11, at
9–10. The overlap in the § 314(a) and § 315(b) analyses is made particularly clear
by Petitioner’s failure to explain how its argument may have changed or what
additional factors would require further briefing or consideration. See generally
Req. Reh’g. 15; Pet. Reply 9–10.
In addition, inter partes review proceedings typically proceed on a written
record, where a panel may “preside at the reception of evidence” at any time, by
evaluating the written record, including by reviewing transcripts of oral hearings
(where parties generally may not present new evidence and arguments). Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No
new evidence or arguments may be presented at the oral argument.”); Consolidated
Trial Practice Guide at 85–86.2 The Board panel deciding the case on remand had
access to, and reviewed, all briefing and evidence (including deposition transcripts)
in the cases, as well as existing transcripts of oral hearings. Thus, the panel here
presided “at the reception of evidence,” as required under 5 U.S.C. § 554(d). Cf.
New England Coalition v. Nuclear Regulatory Comm’n, 582 F.2d 87, 100 (1st Cir.
1978) (indicating that a de novo hearing before the substituted fact finder would
not be required if “it fairly could be said that a credibility evaluation from hearing
and seeing the witnesses testify was unnecessary”) (citing Gamble-Skogmo, Inc. v.
Federal Trade Commission, 211 F.2d 106, 115 (8th Cir. 1954).
Moreover, inter partes review proceedings frequently involve a decision by
administrative patent judges who did not preside at the time some or all evidence

2 Accessible at https://www.uspto.gov/TrialPracticeGuideConsolidated; see also 84
Fed. Reg. 64,280 (Nov. 21, 2019).
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was entered into the record, e.g., as submitted with a petition for inter partes
review well before institution. As explained in the USPTO’s standard operating
procedures relating to judge panel assignments, panel changes may, and often do,
occur after an original panel has appeared in a case, including after an oral hearing,
for a number of different reasons, such as a later arising conflict or judge
unavailability. See Patent Trial and Appeal Board Standard Operating Procedure 1
(SOP 1), at 1-3, 13-14 (Rev. 15 Sept. 20, 2018) (SOP 1). The ability to change
panels is a necessary part of Board operations as a general matter, and does not
violate the APA.
Accordingly, we are not persuaded that any violation of the APA occurred
here.
2. Real Party in Interest
a. RPX’s Business and its Relationship with Salesforce
Petitioner contends we “misapprehended the evidence and fundamentally
misunderstood RPX’s business and its relationship with Salesforce.” Req. Reh’g.
4–6. Specifically, Petitioner asserts that no evidence supports the Board’s findings
that “filing IPRs to protect its clients” is an “important component of RPX’s core
subscription business.” Dec. 15, 32. Rather, Petitioner asserts that the testimony
of Mr. Chuang shows unequivocally that “RPX only files IPRs for and with clients
who separately contract for that service.” Id. at 4. Petitioner contends that Mr.
Chuang’s testimony is corroborated by RPX’s typical membership agreements, of
which Saleforce’s is included, which do not include the filing of IPRs. Id. at 5
(citing Exs. 1020, 1074-1075); see also id. at 6 (citing Exs. 1020–1022, 1073–
1079). Further, Petitioner contends that we erroneously found that Mr. Chuang’s
testimony “conflicts with statements made by RPX in its marketing materials.”
Req. Reh’g. at 5 (citing Dec. 13-14). Specifically, Petitioner asserts that marketing
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materials describing how RPX can “acquire a license to the litigated patent and
selectively clear our clients from the suit,” corroborate, rather than conflict with,
the testimony because they describe the acquiring of licenses to clear clients, not
the filing of IPRs. Id.
We do not agree that we misapprehended or overlooked the evidence
identified by Petitioner in its Opening Brief on remand (Paper 98; public Paper 95)
and its Request for Rehearing. The Decision extensively discusses and analyzes
the evidence identified by Petitioner. Dec. 11–15. For example, the Decision
acknowledges the testimony of Mr. Chuang, the types of membership agreements
offered by RPX including the specific type of membership acquired by Salesforce,
as well as RPX’s marketing materials describing RPX’s provided services. Id.
(citing Ex. 2008, 3, 6, 27; Ex. 1074 § 2; Ex. 1073 ¶¶ 5, 8, 10, 31–32; Ex. 1090
¶ 32; Ex. 1095, 116:6–117:1; Ex. 2006; Ex. 2015). Moreover, the Decision
specifically acknowledges Mr. Chuang’s declaration that RPX provides validity
challenges on behalf of a client only if that client specifically, explicitly, and
separately contracts for such services as well as statements that “the prospect of an
RPX-filed IPR in the event a client is sued by an NPE would not reasonably be a
‘key reason’ for the client to pay membership fees to RPX.” Id. (citing Ex. 1073
¶¶ 10, 32).
The Decision also considered other evidence, however, including RPX
marketing materials, that describes RPX’s stated mission to help “each RPX client
avoid[] more in legal costs and settlements each year than they pay RPX in
subscription fees,” and “help [clients] after a litigation has begun.” Dec. 14 (citing
Ex. 2007); see also id. at 11–15 (discussing Ex. 2008 (RPX’s 2013 Annual
Report), Ex. 1074 (RPX Form Membership Agreement); Ex. 2006 (RPX’s “Client
Relations” webpage), Ex. 2007 (RPX’s “Why Join” webpage). The Decision
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similarly considered RPX’s SEC filings describing the close alignment of RPX’s
interests with those of their clients and that “one of [RPX’s] ‘strategies’ for
transforming the patent market is ‘the facilitation of challenges to patent validity,’
one intent of which is to ‘reduce expenses for [its] clients.’” Id. at 13–15 (citing
Ex. 2008; AIT, 897 F.3d at 1351).
The Decision did not, as Petitioner asserts, overlook the fact that RPX’s
marketing materials and SEC filings do not specifically mention IPRs. Rather, we
weighed this evidence describing the alignment of interests between RPX and its
clients, as well as RPX’s business model, and determined that RPX filed these
IPRs to benefit its member Salesforce, regardless of whether the IPRs were filed at
Salesforce’s explicit request. Id. at 14–15. In sum, Petitioner’s argument merely
reflects a difference of opinion as to how to interpret the evidence or the weight to
accord certain evidence, none of which demonstrates that we misapprehended an
argument or overlooked evidence.
b. RPX’s Filing of IPRs To Benefit Unnamed Clients
Petitioner further contends that we erred in finding that RPX, in addition to
serving its own interests, “also files IPRs to protect its clients” because “the
evidence suggests that RPX selects patents to challenge, at least in part, to reduce
risk to existing clients.” Req. Reh’g. 7 (citing Dec. 19). Petitioner disputes the
finding that “the vast majority of RPX petitions, forty-seven of fifty-seven, have
involved patents asserted against its clients.” Id. (citing Dec. 16). Petitioner
asserts that we overlooked that 10 of RPX’s IPRs did not involve a client and that
in 21 of 47 IPRs involving patents asserted against RPX clients, RPX named its
clients as co-petitioners. Petitioner contends that this evidence corroborates Mr.
Chuang’s testimony that “while RPX sometimes files IPRs to reduce risks for
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client(s), in those circumstances post-VirnetX RPX names those clients as
petitioners and RPIs.” Id. (citing Ex. 1073 ¶¶ 27–30).
As above, we are not persuaded by Petitioner’s argument. The Decision
explicitly acknowledged, and accepted, that RPX has its own interests in filing
IPRs against patents it believes are weak, as means to improve RPX’s negotiating
position. Dec. 16 (citing Ex. 1019 ¶ 9). The Decision also recognized that RPX
had filed at least ten IPRs challenging patents that were not actively asserted
against any RPX client. Id. (citing Ex. 1073 ¶ 28). However, just as above, we
weighed this evidence against the additional evidence discussed above indicating
that RPX has filed IPRs to benefit its existing clients, as well as further evidence of
RPX’s history of filing IPRs, to support our finding. Id. at 15–17. For example,
the Decision observes that RPX has filed forty-seven IPRs challenging patents
actively asserted against its clients, and all but one of RPX’s fifty-seven IPRs
challenged a patent involved in district court litigation. Id. at 16. According to
Petitioner, in twenty-one of the forty-seven filed IPRs, RPX listed its clients as co-
petitioners. Req. Reh’g. 7. However, this necessarily means that in twenty-six
cases, RPX filed IPRs without naming its client as co-petitioner. In weighing all of
the evidence, we determined RPX filed these IPRs to benefit Salesforce. Dec. 16–
17. Again, as above, Petitioner’s argument merely reflects a difference of opinion
as to how to interpret the evidence or the weight to accord certain evidence.
c. Whether RPX Takes Clients’ Interests into Account When Filing IPRs
Petitioner further contends that we misapprehended the evidence in finding
that RPX “‘takes its clients’ interests into account’ when deciding to file IPRs
where the client is not named.” Req. Reh’g. 8–10. Petitioner contends that the
Decision improperly relied on the AIT decision as evidence although there is no
evidence that “a client in suit was a positive factor that favored RPX filing any
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post-VirnetX IPR on its own.” Id. Petitioner asserts that the evidence supports the
opposite conclusion because “Mr. Chiang was unequivocal that in these IPRs the
time-barred party being an RPX client factored against filing.” Id. at 9 (citing Ex.
1090, ¶ 28).
Petitioner’s argument is unpersuasive because it merely restates the
arguments that the Decision considered and rejected. Contrary to Petitioner’s
argument, the Decision makes explicit factual findings, based on the evidentiary
record, that a client subject to a lawsuit was a positive factor in determining
whether to file an IPR. Notably, RPX’s Best Practice Guide explicitly states that
in choosing potential patents to challenge on invalidity grounds, the selection team
takes into account, among other characteristics, the number of current and
potential RPX clients in suit.” Dec. 18 (citing Ex. 2018) (emphasis added).
Petitioner further argues that the Decision’s finding that “RPX’s Best
Practice Guide intentionally operates . . . to circumvent the Board’s RPI case law,”
is not supported by evidence. Req. Reh’g. 8–9 (citing Dec. 18 (citing Ex. 2018)).
Petitioner asserts that Mr. Chiang’s testimony establishes that the Best Practice
Guide was intended to ensure that RPX would “comply with the law on RPI and
accurately name all RPIs in all future petitions.” Id. at 9.
We are not persuaded. Here, the Decision weighs Mr. Chiang’s testimony
against further evidence suggesting that RPX created the Best Practice Guide to
avoid clients being found to be RPIs by circumventing the Board’s case law. See
Dec. 18–19 (citing Ex. 1018; Ex. 1019 ¶¶ 14, 16, 18; Ex. 2018). For example, the
Decision considered that the Best Practice Guide was created shortly “after
receiving and studying decisions denying institution in RPX’s IPRs against
VirnetX,” where RPX had been found to be an RPI. Id. at 18 (citing Ex. 1090
¶ 16). The Decision further considered that the Best Practice Guide was intended
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to ensure that clients were not found to be RPIs while simultaneously
implementing a “systematic process for identifying potential IPR candidates and
preparing IPRs,” that takes into account “the number of current and potential RPX
clients in suit.” Id. at 18–19 (citing Ex. 1019 ¶ 14; Ex. 2018). Again, we are not
persuaded that the Decision’s finding is unsupported by evidence. Rather,
Petitioner’s argument merely reflects a difference of opinion as to how to interpret
the evidence or the weight to accord certain evidence.
Petitioner further argues that “[t]he Decision relies on the Federal Circuit
raising—not answering—a question about whether RPX’s SEC filing’s reference
to facilitating validity challenges could ‘imply’ that RPX files IPRs for its clients.”
Req. Reh’g. 10 (citing Dec. 19-20). Petitioner asserts that the testimony of Mr.
Chuang explains that the SEC filing’s reference to “the facilitation of challenges to
patent validity” refers to aiding a client making the client’s own validity challenge,
not filing an IPR on the client’s behalf. Id. (citing Ex. 2008, 4).
We are not persuaded. The Decision does not merely rely on the Federal
Circuit raising a question, but rather makes a finding of fact by weighing the
entirety of the evidence of record. The Decision considers not only Mr. Chuang’s
testimonial evidence, but the evidence described above relating to the relationship
between RPX and Salesforce and RPX business practices. In doing so, the
Decision finds that the SEC statement indicates that filing IPR challenges are part
of a broad suite of “solutions” and “services” that “reduce expenses for our
clients.” Dec. 20. Again, Petitioner’s argument merely reflects a difference of
opinion as to how to interpret the evidence or the weight to accord certain
evidence.
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d. Whether RPX Was Representing Salesforces’s Interests
Petitioner further contends that we erred in finding that RPX was
representing Salesforce’s interests. Req. Reh’g. 11–14 (citing Dec. 21, 31). First,
Petitioner asserts that we misapprehended the services that Salesforce paid RPX to
provide and overlooked the evidence demonstrating why Salesforce joined and
renewed their membership with RPX, including conditioning its renewal not on
RPX doing anything relating to AIT, but instead on a specific licensing transaction
detailed in the confidential record. Id. at 11–12.
We are not persuaded that we misapprehended or overlooked this evidence.
To the contrary, as noted above, the Decision recognizes the types of membership
agreements offered by RPX, including the specific type of membership acquired
by Salesforce. Dec. 11–15. (citing Ex. 2008, 3, 6, 27; Ex. 1074 § 2; Ex. 1073 ¶¶ 5,
8, 10, 31–32; Ex. 1090 ¶ 32; Ex. 1095, 116:6–117:1). The Decision observed that
record evidence describes “575 dismissals for RPX clients in 74 litigations” by
RPX “acquir[ing] a license to the litigated patent.” Id. at 14 (citing Ex. 2007; Ex.
1073 ¶ 31). The Decision also acknowledged that “there is no persuasive evidence
that Salesforce paid RPX for filing these specific petitions for inter partes review.”
Id. at 25 (citing Ex. 1019 ¶ 20). However, as described above, the Decision
weighed this evidence against the evidence demonstrating the significant
relationship between Salesforce and RPX, and the strong economic incentives on
RPX to represent Salesforce’s interests. Id. at 25–26.
Petitioner further argues that “[t]he finding that RPX creates the
‘appearance’ of pursuing its own interests despite Salesforce’s interests being ‘of
paramount importance to RPX’ given ‘significant economic incentives’ (Dec. 35)
diminishes RPX’s acknowledged interests (Dec. 16) and misapprehends RPX’s
incentives.” Req. Reh’g. 11. Petitioner asserts that the panel “‘agree[d]’ with the
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Federal Circuit that RPX’s website might ‘imply’ RPX files IPRs to serve its
client’s interests,” but did not determine whether the implication of the Court was
supported by evidence, and cited no evidence to support that there were “‘strong
economic incentives on RPX to represent Salesforces’ interests’ in these IPRs.”
Id. at 11–12 (citing Dec. 25).
We are not persuaded by Petitioner’s argument. Contrary to Petitioner’s
assertions, the Decision does not discount RPX’s interests, but rather,
acknowledges the interest that RPX may have in filing IPRs. Dec. 16 (“We can
accept RPX’s representation that filing IPRs against patents it believes are weak
improves its negotiating position”). As stated by the Federal Circuit, however,
there is not necessarily “only one interested party in each case.” AIT, 897 F.3d at
1347. Here, the Decision considered further evidence, described above, which
supports the finding that there were “strong economic incentives on RPX to
represent Salesforces’ interests.” Dec. 25, 34. The evidence, such as that
described above, supports the Federal Circuit’s implication that “RPX can and
does file IPRs to serve its clients’ financial interests.” Id. at 26 (quoting AIT, 897
F.3d at 1351–52) (citing Ex. 2007). In light of these incentives, the Decision found
that RPX “help[s] paying members ‘extricate themselves from NPE lawsuits.’”
Dec. 26. As the Decision noted, extricating a member from a lawsuit could be
performed through licensing, or, as in this case, through challenging the validity of
the asserted patent. Id.
Petitioner further argues that “[t]he Board’s finding that communications
between RPX and Salesforce about the [Salesforce litigation involving AIT] were
‘naturally tied to possible defenses, of which an IPR challenge is one’ is facially
wrong and unsupported.” Req. Reh’g. 13–14 (citing Dec. 30). Petitioner asserts
that the evidence establishes that possible defenses were not discussed and thus, no
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evidence indicates that RPX’s relationship with Salesforce was based on efforts to
address the same patents. Id. (citing Exs. 1019, 1073, 1090, 1094, 1095).
Petitioner’s argument is not persuasive because, as stated in the Decision,
“[e]ven if RPX did not directly discuss filing an IPR, the discussions of litigation
are naturally tied to possible defenses.” Dec. 30. Indeed, the evidence reflects
that, prior to the filing of IPR Petitions here, RPX and Salesforce discussed the
Salesforce litigation on numerous occasions. Dec. 29–30 (citing Ex. 1019 ¶¶ 22–
28; see, e.g., id. at ¶ 22 (“in the normal course of RPX’s business, . . . RPX
communicates with clients about NPE litigations. . . . As a matter of course, RPX
shares intelligence and insight regarding new litigations with its clients.”)). As
noted in the Decision, those discussions of pending litigation by AIT against
Salesforce, followed by RPX filing IPR petitions on the same patents involved in
that litigation, weighed in favor of finding that Salesforce was an interested party.
Id. at 30.
e. Finding of Salesforce to be a Beneficiary
Petitioner argues that we erred as a matter of law by overlooking what is
legally required for Salesforce to be a “beneficiary.” Req. Reh’g. 14. Further,
Petitioner further asserts that we overlooked the authority cited by Petitioner that
“‘behest’ means command, and that RPX cannot have acted as Salesforce’s
representative unless RPX were appointed by Salesforce to so act.” Id. at 14–15.
Petitioner asserts that the evidence, at most, demonstrates that RPX filed as a
“mere volunteer to benefit Salesforce.” Id. at 15. We are not persuaded because
Petitioner’s argument proposes that we apply a more narrow and rigid analysis of
RPI than the one instructed by the Federal Circuit in these cases. As stated by the
Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’
demands a flexible approach that takes into account both equitable and practical
IPR2015-01750 (Patent 8,484,111 B2)
IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)

17

considerations, with an eye toward determining whether the non-party is a clear
beneficiary that has a preexisting, established relationship with the petitioner.”
AIT, 897 F.3d at 1351; see also Dec. 4–5. Applying this flexible approach to
the evidence of record, we determined that Salesforce is an RPI in these
proceedings.
IV. CONCLUSION
We deny Petitioner’s Request for Rehearing because we determine that
Petitioner has not met its burden to show that, in the Final Decision on Remand,
the panel misapprehended or overlooked any matter.
V. ORDER
It is, therefore,
ORDERED that Petitioner’s Request for Rehearing is denied.

IPR2015-01750 (Patent 8,484,111 B2)
IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)

18

PETITIONER:
Richard F. Giunta
Elisabeth H. Hunt
Randy J. Pritzker
Michael N. Rader
WOLF, GREENFIELD & SACKS, P.C.
RGiunta-PTAB@wolfgreenfield.com
EHunt-PTAB@wolfgreenfield.com
RPritzker-PTAB@wolfgreenfield.com
MRader-PTAB@wolfgreenfield.com

PATENT OWNER:
Steven C. Sereboff
Jonathan Pearce
SOCAL IP LAW GROUP LLP
ssereboff@socalip.com
jpearce@socalip.com
uspto@socalip.com

Andrea Pacelli
Robert Whitman
KING & WOOD MALLESONS
Andrea.Pacelli@us.kwm.com
robert.whitman@us.kwm.com