IPR2022-01094, No. 19 Institution Decision Grant (2023)

`

`IPR2022-01094
`Patent 8,620,039 B2
`
`INTRODUCTION
`I.
`ASSA ABLOY AB, ASSA ABLOY Inc., ASSA ABLOY Residential
`Group, Inc., August Home, Inc., HID Global Corporation, and ASSA
`ABLOY Global Solutions, Inc., (“ASSA” or “Petitioner”) filed a Petition
`requesting inter partes review (“IPR”) of claims 3–12 and 15–18 of U.S.
`Patent No. 8,620,039 B2 (Ex. 1001, “the ’039 patent”). Paper 2 (“Pet”).
`CPC Patent Technologies PTY, Ltd, (“CPC” or “Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 11 (“Prelim. Resp.”). With our
`email authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
`Response. Paper 15 (“Prelim. Reply”). Also, with our authorization Patent
`Owner filed a Sur-Reply to Petitioner’s Reply. Paper 18 (“Prelim. Sur-
`Reply”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the arguments and evidence presented by Petitioner and
`Patent Owner, we are persuaded that Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing the unpatentability of
`at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly,
`we institute an inter partes review of the challenged claims.
`Real Parties in Interest
`A.
`Petitioner states that ASSA ABLOY AB, ASSA ABLOY Inc., ASSA
`ABLOY Residential Group, Inc., August Home, Inc., HID Global
`Corporation, and ASSA ABLOY Global Solutions, Inc., are the real parties
`in interest. Pet. 1. Patent Owner states that CPC Patent Technologies PTY,
`LTD is the real party in interest. Paper 4, 2.
`
`2
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`Related Matters
`B.
`Petitioner indicates that it filed a declaratory judgement against Patent
`Owner with respect to the ’039 patent in ABLOY AB, et al. v. CPC Patent
`Technologies Pty Ltd., et al., No. 3-22-cv-00694, in the United States
`District Court for the District of Connecticut. Pet. 1–2. And, Petitioner
`points out that the ’039 Patent is asserted against Apple, Inc., in CPC Patent
`Technologies Pty Ltd v. Apple Inc., No. 5:22-cv-02553 in the United States
`District Court for the Northern District of California, San Jose Division. Id.
`Petitioner also indicates that the ’039 patent has been challenged in
`IPR2022-00600, currently pending at the Board. Id. at 2.
`In addition to the proceedings noted by Petitioner, Patent Owner states
`that “the following judicial and/or administrative matters [] may affect, or be
`affected by, a decision in this proceeding:” CPC Patent Technologies PTY
`Ltd. v. HMD Global Oy, Case No. 6:21-cv-00166 in the United States
`District Court for the Western District of Texas; IPR2022-00601; IPR2022-
`00602; IPR2022-01006; IPR2022-01045; IPR2022-01089; IPR2022-01093;
`and IPR2022-01094. Paper 4, 2–3.
`The ’039 Patent (Ex. 1001)
`C.
`The ’039 patent, titled “Card Device Security Using Biometrics,”
`relates to a biometric card pointer (BCP) system intended to more efficiently
`and securely permit a user to store biometric information during a user
`enrollment process, and in future verification processes permits the user
`access their account using an identification (ID) card and biometric
`information such as a fingerprint. Ex. 1001, 2:51–3:11.
`The ’039 patent explains that in the enrollment phase “[t]he card
`user’s biometric signature is automatically stored the first time the card user
`uses the verification station in question (this being referred to as the
`
`3
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`enrolment phase).” Id. at 2:62–64. The ’039 patent explains further that
`“[t]he biometric signature is stored at a memory address defined by the
`(‘unique’) card information on the user’s card as read by the card reader of
`the verification station.” Id. at 2:64–67. Following the enrollment phase,
`the ’039 patent describes that
`[a]ll future uses (referred to as uses in the verification phase) of
`the particular verification station by someone submitting the
`aforementioned card requires the card user to submit both the
`card to the card reader and a biometric signature to the biometric
`reader, which is verified against the signature stored at the
`memory address defined by the card information thereby
`determining if the person submitting the card is authorised to do
`so.
`Id. at 3:4–11. 1 For both enrollment and future uses, the use of the ID card at
`a verification station “is identical from the card user’s perspective, requiring
`merely input of the card to the card reader, and provision of the biometric
`signature ([e.g.] thumb print or retinal scan etc.) to the biometric reader.” Id.
`at 3:12–15.
`Figure 4 of the ’039 patent is reproduced below.
`
`
`1 The words “enrolment,” “authorise,” and “authorisation” are the British
`spellings of “enrollment,” “authorize,” and “authorization.” See, e.g.,
`https://www.merriam-webster.com/dictionary/authorisation, last visited Jan.
`5, 2023. We will use the American spelling of these words except where
`quoted from the ’039 patent.
`
`
`4
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`
`
`
`
`Figure 4, of the ’039 patent, above, illustrates swipe or smart card 601
`including card information 605 encompassing fields for card type 602, card
`range 603, and card data 604. The ’039 patent describes that “the card data
`604 acts as the memory reference which points, as depicted by an arrow 608,
`to a particular memory location at an address 607 in the local database 124.”
`Id. at 7:31–35. Information 605 can be encoded on a magnetic strip on the
`card, for example. Id. at 7:28–29. The ’039 patent explains that for a
`specific user “[i]n an initial enrolment phase, . . . [t]he card data 604 defines
`the location 607 in the memory 124 where their unique biometric signature
`is stored.” Id. at 7:43–49. And, the ’039 patent explains further that “in
`later verification phases, . . . [t]his signature is compared to the signature
`
`5
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`stored at the memory location 607 in the memory 124, the memory location
`607 being defined by the card data 604 read from their card 601 by the card
`reader 112.” Id. at 7:50–56.
`Figures 6 and 7, reproduced below, depict the differences between
`enrollment process 207 shown in Figure 7 and verification process 205
`shown in Figure 6.
`
`
`Figure 6, above, illustrates verification process 205, which occurs after the
`enrollment process, illustrated below in Figure 7.
`
`
`
`6
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`Figure 7 of the ’039 patent illustrates enrollment process 207 where the
`system at “step 401 stores the biometric signature received by the step 203 in
`the memory 124 at a memory address defined by the card data 604.” Id. at
`9:64–66 (referring to elements 203 and 124 described in Figure 5). Figure 6
`illustrates that verification process 205
`is entered from the step 204 in FIG. 5, after which a step 301
`authorises the transaction. This authorisation step 301 indicates
`that the biometric signal received by the biometric reader 102 in
`the step 203 matches the biometric signature previously stored in
`the local database 124 by a previous enrolment process 207.
`Id. at 9:43–48. And, “the step 204 reads the contents stored at a single
`memory address defined by the card data 604 and checks these contents
`against the biometric signature received in the step 203.” Id. at 8:34–37.
`A difference between verification process 205 and enrollment process
`207 is that the enrollment process includes step 401, which stores the
`biometric signature “at a memory address defined by the card data 604,”
`whereas in verification process 205 “step 204 reads the contents stored at a
`single memory address defined by the card data 604” and compares the
`stored biometric signature with the input biometric signature. Id. at 9:65–66,
`8:24–26.
`Illustrative Claim
`D.
`Claims 3, 15, and 18 are independent. Each of claims 4–12 and 16–17
`depend from independent claims 3 and 15 respectively. Claim 3, a method
`claim, illustrates the claimed subject matter and is reproduced below:
`3. A method of securing a process at a verification station,
`the method comprising the steps of:
`(a) providing card information from a card device to a card
`reader in the verification station;
`
`7
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`(b) inputting a biometric signature of a user of the card
`device to a biometric reader in the verification station;
`(c) determining if the provided card information has been
`previously provided to the verification station;
`(d) if the provided card information has not been
`previously provided to the verification station;
`(da) storing the inputted biometric signature in a
`memory at a memory location defined by the provided card
`information; and
`(db) performing the process dependent upon the
`received card information;
`(e) if the provided card information has been previously
`provided to the verification station;
`(ea) comparing the inputted biometric signature to the
`biometric signature stored in the memory at the memory
`location defined by the provided card information;
`(eb) if the inputted biometric signature matches the
`stored biometric signature, performing the process dependent
`upon the received card information; and
`(ec) if the inputted biometric signature does not match
`the stored biometric signature, not performing the process
`dependent upon the received card information.
`Ex. 1001, 12:51–13:11.
`Prior Art and Asserted Ground
`E.
`Petitioner asserts that claims 3–12 and 15–18 would have been
`unpatentable based on the following grounds:
`
`8
`
`

`

`Ground
`
`IPR2022-01094
`Patent 8,620,039 B2
`Claim(s)
`Challenged
`3, 4, 6–11, 15,
`16, 18
`3, 4, 6–11, 15,
`16, 18
`5
`5
`
`1
`
`2
`3
`4
`
`35 U.S.C. §2
`
`Reference(s)/Basis
`
`103(a)
`
`103(a)
`103(a)
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Sanford, 3 Hsu, 4
`Sanford, Hsu,
`Tsukamura5
`Sanford, Hsu, and Leu6
`Sanford, Hsu,
`Tsukamura, and Leu
`Sanford, Hsu, and
`Houvener7
`Sanford, Hsu,
`Tsukamura, and
`Houvener
`Sanford, Hsu, and
`McCalley8
`Sanford, Hsu,
`Tsukamura, and
`McCalley
`
`5
`
`6
`
`7
`
`8
`
`12
`
`12
`
`17
`
`17
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes
`to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent
`application filed before March 16, 2013. Because the application for the
`patent at issue in this proceeding has an effective filing date before March
`16, 2013, we refer to the pre-AIA version of the statute.
`3 Ex. 1004, PCT Appl’n No. PCT/US03/07238 (pub. Sept. 18, 2003).
`4 Ex. 1003, European Patent Appl’n No. EP 0924655 A2 (pub. June 23,
`1999).
`5 Ex. 1005, US Patent No. 6,963,660 B1 (Nov. 8, 2005).
`6 Ex 1008, European Patent Appl’n No. EP O 881 608 A1 (pub. Dec. 2,
`1986)
`7 Ex. 1010, US Patent No. 5,790,674 (Aug. 4, 1998).
`8 Ex. 1011, US Patent No. 5,956,415 (Sep. 21, 1999).
`
`
`9
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`Petitioner also relies on the testimony of Stuart Lipoff. Ex. 1006 ¶¶ 1–
`138. 9
`
`II. REAL PARTY-IN-INTEREST
`SECTION 315(B) TIME BAR
`Patent Owner asserts the Petition should be denied as time-barred
`under 35 U.S.C. § 315(b) because Apple, an argued real party-in-interest or
`privy, was served with a complaint for infringement of the ’039 patent on
`March 1, 2021, more than a year before the Petition in this proceeding was
`filed. Prelim. Resp. 1 (citing Ex. 2003; Ex. 2004). Patent Owner explains
`that the original case, CPC Patent Technologies Pty Ltd. v. Apple, Inc., No.
`6:21-cv-00165 (W.D. Tex., Waco Division), has been transferred, and is
`now pending in the United States District Court for the Northern District of
`California, CPC Patent Technologies Pty Ltd. v. Apple, Inc., No. 5:22-cv-
`02553-NC (N.D. Cal., San Jose Division). Id. at 5.
`Under 35 U.S.C. § 315(b), an inter partes review may not be
`instituted “if the petition requesting the proceeding is filed more than 1 year
`after the date on which the petitioner, real party-in-interest, or privy of the
`petitioner is served with a complaint alleging infringement of the patent.”
`“The IPR petitioner bears the burden of persuasion to demonstrate that its
`petitions are not time-barred under § 315(b).” Game & Tech. Co. v.
`
`
`9 Exhibit 1006 is a 203-page declaration from Mr. Lipoff, including a
`mapping of the disclosures of the applied references to the challenged
`claims. Ex. 1006 ¶¶ 267–455. Mr. Lipoff has a B.S. in Engineering Physics
`as well as a B.S. in Electrical Engineering from Lehigh University and
`earned a M.S. degree in Electrical Engineering from Northeastern University
`as well as an MBA from Suffolk University. Id. ¶ 7. Mr. Lipoff currently is
`the President of IP Action Partners Inc., a consulting practice serving the
`telecommunications, information technology, media, electronics, and e-
`business industries. Id. ¶ 8.
`
`10
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`Wargaming Grp. Ltd., 942 F.3d 1343, 1349 (Fed. Cir. 2019) (citing Worlds
`Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)). Thus, Petitioner
`bears the burden of establishing that no RPI or privy was served with a
`complaint alleging infringement more than one year prior to the May 31,
`2022, filing date (see Paper 3) of the Petition in this proceeding.
`There is no dispute that Apple was served with a complaint alleging
`infringement of the ’039 patent on March 1, 2021. See Ex. 2003, 6
`(Complaint alleging as its “Third Cause of Action” “Infringement of the
`’039 Patent”); Ex. 2004 (Affidavit of Service on Apple on March 1, 2021).
`In Power Integrations, Inc. v. Semiconductor Components Industries,
`LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019), the Federal Circuit stated,
`[t]he Board’s decision under § 315(b) is whether to institute or
`not. The condition precedent for this decision is whether a time-
`barred party (a party that has been served with a complaint
`alleging infringement of the patent more than one year before the
`IPR was filed) is the petitioner, real party in interest, or privy of
`the petitioner.
`There is no dispute that Apple was served with a complaint for infringing the
`’039 patent on March 1, 2021. The dispositive issue before us is whether
`Apple is an RPI or privy with Petitioner.
`RPI Status
`A.
`Section 315(b) “is unambiguous: Congress intended that the term ‘real
`party in interest’ have its expansive common-law meaning.” Applications in
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018)
`(hereinafter “AIT”). “Determining whether a non-party is a ‘real party in
`interest’ demands a flexible approach that takes into account both equitable
`and practical considerations, with an eye toward determining whether the
`
`11
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`non-party is a clear beneficiary that has a preexisting, established
`relationship with the petitioner.” Id. at 1351.
`“The statutory terms ‘real party in interest’ and ‘privy’ are not defined
`in Title 35. However, they are well-established common law terms.” Power
`Integrations, 926 F.3d at 1315. The Federal Circuit has determined “that
`Congress intended to adopt common law principles to govern the scope of
`the section 315(b) one-year bar.” Id. The Federal Circuited therefore looks
`“to common law preclusion principles for guidance.” Id.
`Whether a party who is not a named participant in a given proceeding
`nonetheless constitutes a “real party-in-interest” or “privy” to that
`proceeding “is a highly fact-dependent question.” PTAB Trial Practice
`Guide (“TPG”) at 13 (citing Taylor v. Sturgell, 553 U.S. 880 (2008)
`(summarizing common law preclusion principles)). “[A]t a general level,
`the ‘real party-in-interest’ is the party that desires review of the patent.”
`TPG at 14. Thus, the “real party-in-interest” may be the petitioner itself,
`and/or it may be the party or parties “at whose behest the petition has been
`filed.” Id; see AIT, 897 F.3d at 1351 (recognizing the “fact-dependent”
`nature of the RPI inquiry, and explaining that the two questions lying at its
`heart are whether a non-party “desires review of the patent” and whether a
`petition has been filed at a nonparty’s “behest”). A common meaning of
`“behest” is “because someone has ordered or requested it.” See Ex. 3002.
`In Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018 (Fed. Cir. 2021),
`the Federal Circuit stated that:
`[Determining whether a party is a RPI] has no bright-line test—
`relevant considerations, however, may include, “whether a
`[ ] party exercises [or could exercise] control over a petitioner’s
`participation in a proceeding, or whether a [ ] party is funding the
`proceeding or directing the proceeding.”
`
`12
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`Id. at 1028 (emphasis added) (quoting AIT, 897 F.3d at 1342, which cited
`“Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14,
`2012)”); see also TPG, 16 (“A common consideration is whether the non-
`party exercised or could have exercised control over a party’s participation
`in a proceeding. The concept of control generally means that ‘it should be
`enough that the nonparty has the actual measure of control or opportunity to
`control that might reasonably be expected between two formal coparties.’”
`(citing 18A CHARLES ALAN WRIGHT, ARTHUR R. MILLER &
`EDWARD H. COOPER, FEDERAL PRACTICE & PROCEDURE § 4451
`(2d ed. 2011) (hereinafter cited generally as “WRIGHT & MILLER”)).
`Thus, factors such as “control” and “funding” clearly are relevant.
`Consistent with Uniloc 2017, and as further explained in the Trial
`Practice Guide, “[c]ourts and commentators agree . . . that there is no
`‘bright-line test’ for determining the necessary quantity or degree of
`participation to qualify as a ‘real party-in-interest’ or ‘privy’ based on the
`control concept.” TPG at 16 (emphasis added) (citing Gonzalez v. Banco
`Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994); WRIGHT &MILLER § 4451
`(“The measure of control by a nonparty that justifies preclusion cannot be
`defined rigidly.”)).
`As stated in Gonzalez, the evidence as a whole must establish that
`“the nonparty possessed effective control over a party’s conduct . . . as
`measured from a practical, as opposed to a purely theoretical, standpoint.”
`Gonzalez, 27 F.3d at 759 (emphases added). Theoretical, hypothetical, or
`speculative assertions about effective control, unsupported by evidence, are
`neither probative nor persuasive.
`Additional relevant factors include: the non-party’s relationship with
`the petitioner; the non-party’s relationship to the petition itself, including the
`
`13
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`nature and/or degree of involvement in the filing; and the nature of the entity
`filing the petition. TPG at 17–18. Generally, a party does not become a
`“real party-in-interest” merely through association with another party in an
`unrelated endeavor. Id. at 17. A party also is not considered a real party-in-
`interest in an inter partes review solely because it is a joint defendant with a
`petitioner in a patent infringement suit or is part of a joint defense group
`with a petitioner in the suit. Id.
`According to Patent Owner, “whether a party is a RPI or privy
`‘demands a flexible approach that takes into account both equitable and
`practical considerations, with an eye toward determining whether the non-
`party is a clear beneficiary that has a preexisting, established relationship
`with the petitioner.’” Prelim. Resp. 15 (citing AIT, 897 F.3d at 1351).
`Apple’s Prior IPR Petition
`1.
`Apple timely filed its own petition, IPR2022-00600, challenging
`some, but not all, claims, of the ’039 patent. See Apple, Inc. v. CPC Patent
`Technologies, PTY, LTD., IPR2022-00600, Paper 1 (PTAB February 23,
`2022) (the “Apple ’600 petition”). The Apple ’600 petition challenges
`claims 1–2 and 19–20 based on three references, Bradford, Foss, and
`Yamane. Id. The Petition now before us challenges claims 3–12 and 15–18
`of the ’039 patent based mainly on Hsu and Sanford, as well as Hsu,
`Sanford, and one or more of Tsukamura, Leu, Houvener, and McCalley.
`Pet. 4. In the Apple ’600 petition, the Board instituted trial on all asserted
`grounds and all asserted claims. Apple, IPR2022-00600, Paper 8 (PTAB
`Oct. 17, 2022). The instituted proceeding based on the Apple ’600 petition
`is still pending.
`In Unified Patents v. Uniloc USA, Inc. et al, IPR2018-00199, Paper 33
`(PTAB May 31, 2019), the Board determined that the fact that Apple, also
`
`14
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`asserted to be an unnamed RPI in that case, filed its own similar petition
`around the same time as the petitioner in that case “does not suggest Apple
`is an unnamed RPI. To the contrary, it suggests that Apple did not need
`Petitioner to file this Petition on its behalf, and chose to file its own similar
`petition, giving Apple control over its own proceeding.” Unified Patents,
`IPR2018-00199, Paper 33 at 9. Based on the record before us, a similar
`determination can be made here. The fact that Apple filed the Apple ’600
`petition on February, 23, 2022, about three months before the Petition in the
`case before us was filed, suggests that Apple did not need Petitioner to file
`the Petition in this case on its behalf, because Apple had previously filed its
`own similar petition, giving Apple control over its own proceeding.
`Apple’s Relationship to Petitioner
`2.
`There is no dispute that Apple has a relationship with Petitioner.
`Petitioner filed a Declaratory Judgment complaint against “CPC Patent
`Technologies Pty. Ltd.” (Patent Owner in the proceeding before us) and
`“Charter Pacific Corporation Ltd.” (collectively referred to in the complaint
`as “Charter Pacific”). Ex. 2007 ¶ 1. In the Declaratory Judgment complaint,
`Petitioner states “Charter Pacific is also engaged in an aggressive litigation
`campaign that includes Apple Inc. (‘Apple’), a business partner of the
`ASSA ABLOY Entities.” Id. ¶ 30 (emphasis added); see also, e.g.,
`id. ¶¶ 21, 43, 98–106 (referring to products sold by Petitioner to Apple).
`The business relationship between Apple and Petitioner is that
`Petitioner, or one of the named entities collectively referred to as Petitioner,
`makes products that interface with Apple products and may be sold on
`Apple’s website. For example, ASSA ABLOY Residential Group, Inc., a
`named entity included as a Petitioner in this proceeding, makes and sells
`security locks under the brand name “Yale.” See Ex. 2007 ¶¶ 53–73
`
`15
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`(discussing the infringement allegation against “Yale Smart Locks”);
`Ex. 2027 (screen shots from Apple’s website concerning the “Yale Assure
`Lock SL Touchscreen Deadbolt”). As described in Exhibit 2007, the Yale
`Assure Lock uses a software application (“App”) on one’s mobile phone,
`here on an iPhone sold by Apple, to lock and unlock doors. The App is
`developed by Petitioner, or one of its business partners, and distributed to
`iPhone users through the Apple App store.
`Petitioner’s Assertions
`a)
`Petitioner asserts “Petitioners and Apple have a standard business
`relationship like that of over 34 million application developers on Apple’s
`platform (EX-1024 at 6-7) and hundreds of MFi Program10 participants
`(collectively its business partners).” Prelim. Reply. 1 (citing Ex. 1025).
`Essentially, Petitioner sells its products with and through Apple, and creates
`software applications that allows those products to interface with Apple’s
`iPhone and other Apple products.
`Our rules provide that “[t]he parties may agree to additional discovery
`between themselves.” 37 C.F.R. § 42.51(b)(2)(i). Our rules do not provide
`for interrogatories between the parties. Apparently, Petitioner agreed to
`respond to interrogatories from Patent Owner. Petitioner asserts that its
`“verified responses to CPC’s Interrogatories confirm that Apple never
`
`
`10 The acronym “MFi” refers to “Made for iPhone/iPod/iPad.” Apple’s
`Developer Program License Agreement (Ex. 2009) defines “MFi Program”
`to mean “a separate Apple program that offers developers, among other
`things, a license to incorporate or use certain Apple technology in or with
`hardware accessories or devices for purposes of interfacing, communicating
`or otherwise interoperating with or controlling select Apple-branded
`products.” (Ex. 2009, 6); see also Ex. 2017 (explaining how the MFi
`program works);
`
`16
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`provided any direction, control, or financing in this proceeding.” Prelim.
`Reply 2 (citing Ex. 102[3], responses to Interrogatories Nos. 3, 4).
`Exhibit 1023 contains responses to five interrogatories posed by
`Patent Owner to Petitioner regarding this IPR proceeding and its related
`proceedings. Ex. 1023, 1 (“These answers are made solely for the purpose
`of IPR2022-01006, IPR2022-01045, IPR2022-01089, IPR2022-01093, and
`IPR2022-01094”).
`In the interrogatories, Petitioner states:
`1. “Petitioners do not have any insurance policy or policies that name
`Apple as an additional insured” (id. at 7);
`2. “Petitioners have not had any communications with Apple, directly
`or through counsel, . . . other than communications that relate
`solely to Petitioners seeking Apple’s permission to produce
`documents in response to CPC’s discovery request” ((id. at 8);
`3. “Petitioners and other ASSA ABLOY entities have not had any
`communications with Apple, directly or through counsel, regarding
`the validity or invalidity of the . . . ’039 Patent” (id. at 10); and
`4. “There have been no communications between Petitioners and
`Apple, directly or through counsel, relating to indemnification or
`obligation to indemnify based on assertion of . . . U.S. Patent No.
`8,620,039) (id. at 11–12).
`
`Additionally, Petitioner states in its interrogatory responses:
`• Apple had no role whatsoever in Petitioners’ IPRs.
`• Petitioners never informed Apple that the IPR petitions were
`being prepared, never communicated with Apple regarding the
`substance of the IPR petitions, and never told Apple when or why
`the IPR petitions would be filed.
`
`17
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`• Petitioners provide all direction to their outside counsel
`regarding the IPRs and the district court litigation between
`Petitioners and Apple [sic].[11]
`• Apple previously filed its own IPR petitions regarding the
`subject patents (IPR2022-00600, IPR2022-00601, and IPR2022-
`00602). Petitioners likewise had no involvement whatsoever in
`Apple’s IPR petitions. Petitioners never knew that Apple’s IPR
`petitions were being prepared or that they would be filed.
`• Petitioners did not file any of Petitioners’ IPR petitions at
`Apple’s behest. Apple never requested that Petitioners file any
`IPR petitions challenging any of the patents-at-issue.
`• Apple has never had any control or say whatsoever in
`Petitioners’ IPR petitions.
`• Apple has not contributed financially or in any other manner to
`any of Petitioners’ IPR petitions.
`Ex. 1023, 8–9.
`Based on the record before us, there is no evidence that refutes or
`contradicts these interrogatory responses. The record before us contains no
`evidence of communications between Petitioner and Apple regarding this
`proceeding or the preparation of the Petition filed in this proceeding.
`Patent Owner’s Assertions
`b)
`Patent Owner asserts essentially two factual reasons to support its
`argument that Apple should be named a real party-in-interest in this
`proceeding:
`
`
`11 This appears to be a misstatement. We have not been informed of any
`litigation between “Petitioners and Apple.” The only litigation cited by the
`parties involves Petitioner and Patent Owner, Patent Owner and Apple, or
`Patent Owner and HMD Global. See Section I.C (“Related Matters”) of this
`Decision.
`
`18
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`(1) Petitioner is an App developer for Apple and entered into Apple’s
`standard “Apple Developer Program License Agreement” (the “Developer
`Agreement”) (Prelim. Resp. 10–12, 21–28 (citing Ex. 2010)); and
`(2) Petitioner enjoys an intimate business relationship with Apple and
`participates in Apple’s MFi certification program for non-Apple products
`made to be compatible with Apple products and Apple Wallet functionality.
`(Prelim. Resp. 21–36).
`Patent Owner states that “the Apple Agreement appears to be at least
`one important agreement governing the relationship between Apple and
`Petitioners with respect to the products-at-issue.” Prelim. Resp. 25. Patent
`Owner relies on several specific clauses in the Apple Developer Agreement
`to establish the asserted RPI relationship, including: (1) representations and
`warranties of noninfringement (id. at 28–31); indemnification clauses (id. at
`31–34); product inspection and insurance coverage clauses (id. at 34–37);
`and appointment of Apple as an agent for distribution of Petitioner’s
`“software on the Apple App Store;” (id. at 37).
`Patent Owner also relies on Bungie v. Worlds Inc., IPR2015-01264,
`Paper 64 (PTAB Jan. 14, 2020) for support of its arguments. See, e.g.,
`id. at 26.
`
`c) Developer Agreement (Ex. 2009)
`The Apple Developer Agreement is an 88-page agreement between
`Apple and software developers who need to use Apple software “to develop
`one or more Applications . . . for Apple-branded products.” Ex. 2009, 1.
`The Developer Agreement provides “a limited license” to use Apple
`software “to develop and test” the Developer’s software applications for
`Apple products. Id. “In order to use the Apple” software and related
`
`19
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`services,” the prospective developer “must first accept” the Developer
`Agreement. Id.
`
`representations and warranties
`(1)
`of noninfringement (Prelim. Resp. 28–31);
`Patent Owner cites Section 3.2(d) of the Developer Agreement for its
`“warranties of noninfringement.” Prelim. Resp. 28–29. Section 3.2(d) states
`“[t]o the best of Your knowledge and belief . . . the Developer’s products
`don’t infringe any Apple or third party intellectual property or other rights.”
`Ex. 2009, 16. We do not consider Section 3.2(d) to be a “warranty.” It is
`not a guarantee that products will not infringe. It is a representation of the
`developer’s current “knowledge and belief.” It is far different from the
`obligations created by the App developer’s agreement in Bungie.
`In Bungie, Bungie represented and warranted to Activision that
`Bungie owns or controls all the rights in “the Licensor Product Intellectual
`Property.” Bungie, IPR2015-01264, Paper 64 at 29. In Bungie, there also
`was a representation that “the use, development, distribution and publishing
`[of the Licensor Product] as contemplated by and set forth in [the Bungie]
`Agreement, shall not infringe upon or violate the rights of, nor require the
`consent of, any other party.” Id. (citations to the evidentiary record
`omitted). The representation in Section 3.2(d) of the Developer Agreement
`(Ex. 2009) in the case before us is not a similar warranty of
`noninfringement.
`Patent Owner also cites Schedule 1, Section 4.1, of the Developer
`Agreement as evidence of a representation and warranty of noninfringement.
`Prelim. Resp. 29–30.
`The Developer Agreement refers to three “Schedules”: Schedule 1,
`Schedule 2, and Schedule 3. See Ex. 2009, 1 (“Purpose,” referring to the
`
`20
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`different purposes of Schedules 1 and 2); id. § 7.1 (“Delivery of Free
`Licensed Applications”); § 7.2 (delivery of “Fee-Based Licensed”); (see also
`