Unified Patents, LLC v. Engle Grange, LLC

• Docket Number: IPR2020-01334,Patent 8,548,645 B2
• Decision Date: 19 January 2022
• Parties: UNIFIED PATENTS, LLC, Petitioner, v. ENGLE GRANGE, LLC, Patent Owner.
• Court: Patent Trial and Appeal Board

1

UNIFIED PATENTS, LLC, Petitioner, v. ENGLE GRANGE, LLC, Patent Owner.

IPR2020-01334

Patent 8, 548, 645 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 19, 2022

For PETITIONER: David C. Seastrunk Roshan Mansinghani Unified Patents, LLC

For PATENT OWNER: C.D. Thomas Adrienne Yeung Technology &amp Innovation Law Group, PC

Before BARRY L. GROSSMAN, BART A. GERSTENBLITH, and JAMES J MAYBERRY, Administrative Patent Judges.

JUDGMENT FINAL WRITTEN DECISION DETERMINING ALL CHALLENGED CLAIMS UNPATENTABLE GRANTING PETITIONER'S MOTION TO SEAL GRANTING PETITIONER'S MOTION FOR ENTRY OF PROTECTIVE ORDER 35 U.S.C. § 318(A)

GERSTENBLITH, ADMINISTRATIVE PATENT JUDGE.

I. INTRODUCTION

A. Background

Unified Patents, LLC ("Petitioner") filed a Petition (Paper 1, "Pet.") requesting institution of inter partes review of claim 1 of U.S. Patent No. 8, 548, 645 B2 (Ex. 1001, "the '645 patent"). Engle Grange, LLC ("Patent Owner") filed a Preliminary Response (Paper 6, "Prelim. Resp."). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review as to claim 1 on all grounds set forth in the Petition. Paper 7 ("Inst. Dec.").

After institution, Patent Owner filed a Patent Owner Response (Paper 17, "PO Resp."), Petitioner filed a Reply to Patent Owner's Response (Paper 23, "Pet. Reply"), and Patent Owner filed a Sur-reply (Paper 26, "PO Sur-reply"). Additionally, Petitioner filed a combined Motion to Seal Exhibits 1032 (deposition transcript of Kevin Jakel, dated Apr. 7, 2021) and 1034 (Petitioner's Membership Agreement) and Motion for Entry of the Default Protective Order (Paper 21, "Motion"), and Patent Owner filed an Opposition to Petitioner's Motions (Paper 24, "Opp.").^[1] An oral hearing was held on October 20, 2021, and a copy of the transcript was entered in the record. Paper 34 ("Tr.").^[2]

We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a Final Written Decision under 35 U.S.C. § 318(a) (2018) and 37 C.F.R. § 42.73 (2020) as to the patentability of the claims on which we instituted trial. Petitioner bears the burden of proving unpatentability of the challenged claim. Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Having reviewed the arguments and the supporting evidence, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 1 of the '645 patent is unpatentable.

B. Related Proceedings

Petitioner and Patent Owner identify the following related matter: Engle Grange, LLC v. Ford Motor Co. et al., No. 1:20-cv-00569-CFC (D. Del.).^[3] Pet. 1; Paper 3 (Patent Owner's Mandatory Notice), 2.

C. Real Parties in Interest

Petitioner identifies Unified Patents, LLC as the real party in interest. Pet. 1. Patent Owner identifies Engle Grange, LLC as the real party in interest. Paper 3, 2.

Patent Owner contends that Petitioner is not the only real party in interest, arguing that members of Petitioner's "Transportation Zone" ("Unnamed RPIs"), including Ford Motor Company ("Ford"), are real parties in interest and "[s]ince these members were not identified, the Board should therefore dismiss the Petition." PO Resp. 37. Patent Owner asserts that Petitioner "divides its business into 'zones,' each of which relates to a specific technology sector." Id. at 38. Patent Owner argues: (1) "[t]he Unnamed RPIs each had a preexisting, established relationship with [Petitioner] when this IPR was filed, or entered into one during this IPR" and (2) "[t]he Unnamed RPIs are also clear beneficiaries of this IPR" because Petitioner "structures its business so that its customers are able to maximize the value of the benefits (including IPRs) that [Petitioner] provides." Id. Patent Owner contends that "[w]hen a customer joins a zone, it does so with the knowledge and expectation that [Petitioner] will use subscription fees to file IPRs for its customers' benefit." Id. at 39. Thus, Patent Owner asserts that because the "Unnamed RPIs" (1) "all have preexisting, established relationships with [Petitioner] by way of their membership contracts," and (2) "each joined with the knowledge and expectation that [Petitioner] would be filing IPRs against automotive patents, including the . . . '645 patent," "the Board should dismiss the Petition because it fails to list all RPIs." Id.

Petitioner replies that "no time bar or estoppel provisions under 35 U.S.C. § 315 are implicated." Pet. Reply 19 (citing SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential)). Specifically, "[t]o Petitioner's knowledge, the '645 patent was asserted for the first time on April 27, 2020, and this [P]etition was filed on August 25, 2020." Id. Petitioner contends that members of its Transportation zone are not RPIs at least because (1) Petitioner "is a membership organization whose deterrence work includes prior art searching and contests, amicus briefing, drafting legal reviews, data analytics, monitoring of patent transactions and assertions, and a myriad of domestic and foreign validity challenges" while "bolster[ing] patent quality by deterring assertions of invalid patents by non-practicing entities ('NPEs'), without coordinating with members," (2) Petitioner's "members have no control or influence over [Petitioner's] activities, and [Petitioner] has sole control over how to allocate spending across a variety of activities to fulfill its mission of NPE deterrence," (3) Petitioner "does not and has never had an attorney-client relationship with its members," and (4) Petitioner "does not coordinate with members regarding . . . filings or . . . litigation, and members are unable to exercise any direction or control over [Petitioner's] filings." Id. at 21-22 (citations omitted). Additionally, Petitioner notes that "this challenge, even if successful, could not have extricated Ford from litigation, because [Patent Owner] was asserting two additional patents (other than the '645 patent) in litigation." Id. at 24 (citing Engle Grange, No. 1:20-cv-00569-CFC).

In its Sur-reply, Patent Owner contends that "Ford pays annually for this legal service provided by [Petitioner], and thus [Petitioner] is acting for Ford just as any attorney would." PO Sur-reply 15. Patent Owner asserts that "[j]ust because Ford provided [Petitioner] with general marching orders up front to attack small patent owners, asserting patents in the transportation zone, it does not free them from being an RPI or in privity with [Petitioner]." Id. Thus, Patent Owner argues that "Ford, as well as the other 'members' of [Petitioner's] Transportation Zone, are actual, real clients and should be disclosed. To not require such perpetuates [Petitioner's] sham patent attacks." Id.

For the following reasons, and without deciding whether Ford or any other members of Petitioner's Transportation Zone are un-named RPI, we do not agree that this proceeding should be terminated for failure to identify all RPIs. First, Patent Owner's argument is based on an incorrect premise that 35 U.S.C. § 312(a) is a jurisdictional statute that must be satisfied to give the Board jurisdiction. This premise is contrary to the Board's precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 5 (PTAB Mar. 4, 2016) (precedential) ("§ 312(a) is not jurisdictional"). Lumentum makes clear that § 312(a) is not jurisdictional because a party may rectify non-compliance with the statute. Id. The United States Court of Appeals for the Federal Circuit has upheld the Board's finding that § 312(a) is not jurisdictional. See Mayne Pharma Int'l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) ("[I]f 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.").

Second, Patent Owner does not allege and the evidence does not support that Ford or any other members of Petitioner's Transportation Zone were time barred from filing a petition challenging the '645 patent when Petitioner filed the Petition. Consequently, even if we were to determine that Ford or any other members of Petitioner's Transportation Zone are RPIs of Petitioner, there is no basis to deny or terminate the Petition pursuant to § 315(b).

Moreover, estoppel under § 315(e) only arises after "a final written decision under section 318(a)" has issued with respect to a challenged claim. See 35 U.S.C. §§ 315(e)(1), (2). This Decision will be the first such final written decision as to any claim of the '645 patent. Thus, even if we were to determine that Ford or any other members of Petitioner's Transportation Zone are unnamed RPIs, § 315(e)(1) would prevent them from requesting a future proceeding challenging claim 1 on a basis that has been raised or reasonably could have been raised in this proceeding, but does not require termination of this proceeding.

Accordingly, because we determine that neither the time bar nor estoppel provisions of 35 U.S.C. § 315 are implicated in this case, we need not address whether Ford or any other members of Petitioner's Transportation Zone are unnamed RPIs. See SharkNinja, Paper 11 at 18; see also Unified Patents LLC v. Velos Media, LLC, IPR2020-00352, Paper 39 at 46-47 (PTAB June 28, 2021) (applying SharkNinja in the context of a final written decision).

D. The Instituted Grounds of Unpatentability and Declaration Evidence

Petitioner asserts the following grounds of unpatentability:

Claim(s) Challenged

35 U.S.C. § ^[4]

Reference(s)/Basis

102

Cha^[5]

103(a)

...