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Federal Circuit Remands for Further Proceedings to Determine Whether RPX's Petitions for IPR Were Time Barred For Failing to Identify Its Client As a 'Real Party in Interest'
On July 9, 2018, Federal Circuit Judges O'Malley and Hughes issued an opinion authored by Judge O'Malley, with Judge Reyna concurring, in Applications in Internet Time, LLC v. RPX Corp., Case Nos. 2017-1698, -1699, and -1701. The issue on appeal was whether the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) relied on an erroneous understanding of the term “real party in interest” in determining that Salesforce.com, Inc. (Salesforce) was not a real party in interest with respect to petitions for inter partes review (IPR) filed by RPX Corp. (RPX), and thus, that RPX's IPR petitions were not time-barred under 35 U.S.C. §315(b). The panel vacated the PTAB's final written decisions, and remanded for further proceedings.
On Nov. 20, 2013, Applications in Internet Time, LLC (AIT) served a complaint on Salesforce, asserting infringement of U.S. Patent Nos. 7,356,482 (the '482 patent) and 8,484,111 (the '111 patent). Slip op. at 3. Salesforce filed petitions for covered business method (CBM) review of the patents in August 2014. Id. The PTAB denied both CBM petitions in February 2015 — after the one-year deadline for Salesforce to file any IPR petitions on the patents had passed. Id. The PTAB had concluded that Salesforce failed to establish that the patents are “covered business method patent[s]” within the meaning of the America Invents Act (AIA). Id. On August 17, 2015, several months after Salesforce's CBM petitions were denied, RPX filed three IPR petitions challenging the patentability of claims of the '482 and '111 patents. Id. at 4. In each petition, RPX acknowledged that the outcome of the IPRs could impact the ongoing litigation between AIT and Salesforce, yet identified itself as the “sole real party-in-interest.” Id. AIT moved for additional discovery, requesting that the PTAB compel RPX to produce documents relevant to identifying the real parties in interest; the PTAB granted AIT's motions over RPX's opposition. Id. In response, RPX produced documents, including a declaration from its Vice President of Client Relations, William W. Chuang. Id. at 4-6. Based on this discovery but without deposing Mr. Chuang, AIT filed its preliminary responses in which it argued, among other things, that the IPRs should not be instituted because RPX failed to properly identify Salesforce as a real party in interest and because the petitions were time-barred. Id. at 8-9. The PTAB nevertheless instituted IPRs, concluding that AIT “ha[d] not provided persuasive evidence to support” its real party in interest challenge. Id. at 9. AIT reiterated its assertions that Salesforce was a real party in interest, both in its responses to the petitions as well as at the final oral hearing held by the PTAB. Id. at 11. In its final written decisions, the PTAB determined that all challenged claims are unpatentable. Id. at 12. AIT appealed on its real party in interest challenge, among other issues.
At the outset of its discussion, the majority noted that the Federal Circuit has had little occasion to grapple with the meaning of the term “real party in interest” in the context of Section 315(b) due to the fact that time-bar determinations under this provision were not appealable until the Federal Circuit issued its en banc opinion in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 (Fed. Cir. 2018). Id. at 13.
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