Patent Case Summaries December 9, 2020

Patent Case Summaries | Week Ending December 4, 2020

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

RPX Corp. v. Applications in Internet Time, LLC, No. IPR2015-01750 (PTAB Oct. 2, 2020) (designated precedential on Dec. 4, 2020). Opinion by Boalick, joined by Bonilla and Weidenfeller.

On remand from the Federal Circuit, the Patent Trial and Appeal Board addressed whether Salesforce, who was itself time-barred from petitioning for IPR, should have been named as a real party in interest to RPX’s IPR petitions. The Board applied “the Federal Circuit’s admonition that ‘Congress intended that the term ‘real party in interest’ have its expansive common-law meaning.’” The Board focused on “the ‘two related purposes’ of the real party in interest (‘RPI’) requirement set forth in the legislative history, i.e., to preclude parties from getting ‘two bites at the apple’ by: (1) ensuring that third parties who have sufficiently close relationships with IPR petitioners are bound by the outcome of instituted IPRs in final written decisions under 35 U.S.C. § 315(e), the IPR estoppel provision; and (2) safeguarding patent owners from having to defend their patents against belated administrative attacks by related parties via 35 U.S.C. § 315(b).”

After considering the evidentiary record, the Board determined that Salesforce is a real party in interest of RPX. In analyzing the “highly fact-dependent question,” the Board considered RPX’s business model, RPX’s explanation of its interest in the IPRs, whether RPX took Salesforce’s interests into account when determining whether to file the IPR petitions, Salesforce’s relationship with RPX, Salesforce’s interest in the IPRs, whether RPX was representing that interest, whether Salesforce actually desired review of the patents, the fact that Salesforce and RPX had overlapping Board members, and evidence regarding communications between RPX and Salesforce.

The Board stated that the real party in interest inquiry “sweeps more broadly than requiring explicit evidence of request, funding, or control, instead requiring consideration of the factors” noted above. Here, the evidence indicated that “RPX represented Salesforce’s interests to Salesforce’s benefit and, consequently, that RPX effectively acted as if Salesforce had requested action by RPX, when filing the IPR petitions.” Thus, Salesforce was “a clear beneficiary” that had “a preexisting, established relationship with RPX, and is therefore a real party in interest.” Accordingly, the Board terminated the prior institution decisions and denied inter partes review.

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SharkNinja Operating LLC, et al. v. iRobot Corp., No. IPR2020-00734 (PTAB Oct. 6, 2020) (designated precedential on Dec. 4, 2020). Opinion by Melvin, joined by McMillin and Wieker.

The Patent Trial and Appeal Board instituted an IPR sought by petitioner SharkNinja directed to the claims of a patent owned by iRobot.

The patent owner argued that the Board should deny institution under 35 U.S.C. § 312(a)(2) because the Petition did not name all real parties in interest (RPI). In particular, the Petition did not identify SharkNinja’s ultimate corporate parent, JS Global Lifestyle Company Limited. Addressing that argument, the Board stated that § 312(a)(2) “serves important notice functions to patent owners, to identify whether the petitioner is barred from bringing an IPR due to an RPI that is time-barred or otherwise estopped, and to the Board, to identify conflicts of interests that are not readily apparent from the identity of the petitioner.” Here, the Board determined that it “need not address whether JS Global is an unnamed RPI because, even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.”

The Board explained that its “jurisdiction to consider a petition does not require a ‘correct’ identification of all RPIs in a petition.” Notably, there was “no allegation or evidence that JS Global is barred or estopped from this proceeding, or that Petitioner purposefully omitted JS Global to gain some advantage.” Therefore, analyzing whether JS Global should have been named as an RPI “is unnecessary for the purposes of rendering a decision on institution of trial.” Accordingly, the Board instituted the IPR without considering whether JS Global must be named as an RPI.

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Apple Inc. v. Uniloc 2017 LLC, No. IPR2020-00854 (PTAB Oct. 28, 2020) (designated precedential on Dec. 4, 2020). Opinion by Quinn, joined by Wieker and Raevsky.

Apple filed a petition for IPR along with a motion to join an earlier-instituted IPR (the 023 IPR) concerning the same patent. Apple’s petition asserted “challenges and evidence identical to those asserted in the 023 IPR.” Apple had previously filed a petition for IPR of the patent, but the Board had denied institution. Thus, Apple filed this new petition, which the Board referred to as a “me-too petition,” in which Apple sought to take an “understudy” role in the existing 023 IPR.

In response to Apple’s new petition and motion for joinder, the Patent Owner argued that the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) and deny joinder, citing the Fintiv and General Plastic factors. The Board agreed, stating that “Petitioner’s understudy argument is not persuasive here where the copied petition is Petitioner’s second challenge to the patent, and should Microsoft settle, Petitioner would stand in to continue a proceeding that otherwise would be terminated. In effect, it would be as if Apple had brought the second challenge to the patent in the first instance. This is the kind of serial attack that General Plastic was intended to address.”

After analyzing each of the General Plastic factors and the fact that Apple “failed in its first attempt to challenge the ‘088 patent, and, over a year later and subject to a § 315(b) bar, seeks to join an ongoing proceeding challenging that same patent,” the Board exercised its discretion to deny institution and deny Apple’s motion for joinder.

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