PTAB Designates Three Precedential Decisions on Follow-On Petitions and Real Parties in Interest

On December 4, the United States Patent and Trademark Office (USPTO) designated three Patent Trial and Appeals Board (PTAB) decisions as precedential. In Apple Inc. v. Uniloc 2017 LLC, the PTAB refused to institute inter partes review (IPR) based on Apple’s “follow-on copycat petition.” SharkNinja Operating LLC v. iRobot Corporation and Applications in Internet Time, LLC v. RPX Corp. both related to real parties in interest (RPI). In SharkNinja, the PTAB declined to engage in a lengthy analysis to consider whether a non-party must be named as an RPI and in Applications in Internet Time the PTAB found the non-party to be an RPI and denied institution.

Apple Inc. v. Uniloc

In Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, the PTAB refused to institute IPR of certain claims of U.S. Patent No. 6,467,088 (the ’088 patent) and denied Apple’s Motion for Joinder with Microsoft Corp. v. Uniloc 2017 LLC, IPR2020- 00023 (the ‘023 IPR). In October 2018, Apple filed a first petition for IPR in Apple Inc. v. Uniloc 2017 LLC, IPR2019- 00056 (the 056 IPR), where the PTAB denied institution “because the evidence and arguments presented failed to meet substantively the reasonable likelihood threshold required for institution.” In October 2019, Microsoft filed a petition challenging the ’088 patent in the 023 petition. Apple the filed a “me-too petition” on April 23, 2020, seeking review of the ‘088 patent for a second time, together with the Motion for Joinder, seeking to join the ‘023 IPR.

Uniloc challenged Apple’s request to join the ‘023 IPR, noting that Apple’s first petition was denied and that the second petition should be denied under General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016- 01357, because “Apple is using the joinder procedure as an ‘end run around its failed petition.’” Apple argued that General Plastics did not apply to its request for joinder. The PTAB considered each of the seven factors set forth in General Plastics in determining that the majority of the factors weighted in favor of denying institution. Thus, since the PTAB denied institution, it followed that Apple’s Motion for Joinder was also denied.

SharkNinja Operating LLC v. iRobot Corporation

In SharkNinja Operating LLC v. iRobot Corporation, the PTAB instituted IPR based on a petition filed by SharkNinja  SharkNinja Operating LLC, SharkNinja Management LLC, and SharkNinja Sales Company (SharkNinja) requesting institution of IPR of claims 1–19 of U.S. Patent No. 9,921,586. In concluding that SharkNinja showed a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim, the PTAB conducted a detailed analysis of SharkNinja’s obviousness allegations.

The PTAB also considered iRobot’s argument that institution should be denied under 35 U.S.C. because SharkNinja failed to name all real parties in interest (RPI). In particular, iRobot argued that JS Global Lifestyle Company Limited (JS Global) was the corporate parent for all three Petitioners and was an unnamed RPI. The PTAB noted that it did not need to address “whether JS Global [was] an unnamed RPI because, even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” Citing the precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, the PTAB stated that its “jurisdiction to consider a petition [did] not require a ‘correct’ identification of all RPIs in a petition.” The PTAB explained that certain PTAB decisions have gone through an extensive analysis in considering whether other parties should have been named as RPIs, “even where there is no allegation that the failure to name the purported RPI results in time bar, estoppel, or anything else material to the case.” The PTAB also recognized that, in other decisions, such when there is no time bar implication, the PTAB has determined that such a lengthy exercise is unnecessary for the purposes of rendering a decision on institution of trial.

The decision noted that the option of declining to engage in a lengthy analysis regarding RPIs “better serves the interest of cost and efficiency” and further explained that the present case is not one where a patent owner could be “forced to defend against later judicial or administrative attacks on the same or related grounds by a party that is so closely related to the original petitioner as to qualify as a real party in interest.” Thus, the PTAB declined to consider whether JS Global must be named as an RPI.

Applications in Internet Time, LLC v. RPX Corp

In Applications in Internet Time, LLC v. RPX Corp., IPR2015-01750, IPR2015-01751, and IPR2015-01752, on remand after a decision by the U.S. Court of Appeals for the Federal Circuit (CAFC) in Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018), the PTAB determined that Salesforce was a real party in interest (RPI) of RPX. In the 2018 decision, the CAFC vacated a series of final written decisions issued by the PTAB which invalidated patent claims held by Applications in Internet Time (AIT). The court also found that the PTAB applied an unduly restrictive test in determining the statutory meaning of RPI for the purposes of instituting IPR proceedings petitioned by RPX on patents asserted against RPX’s client Salesforce. The CAFC found that the PTAB didn’t meaningfully examine Salesforce’s relationship with RPX and the nature of RPX as an entity that helps its clients extricate themselves from patent litigation, both factors that are contemplated by the PTAB’s Trial Practice Guide.

On remand, the PTAB followed the guidance of the CAFC in noting that a flexible approach must be taken when determining the RPI and focused on the “two related purposes” of the RPI requirement: “(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).”

The PTAB considered the entirety of the evidentiary record, including evidence relating to RPX’s business model, RPX’s interest in the IPRs, whether RPX takes client interests into account when filing IPRs, RPX’s relationship with Salesforce, and Salesforce’s interest in and whether it would benefit from the IPRs. Following a review of the evidence and arguments, the PTAB agreed with the CAFC that Salesforce was “a clear beneficiary that ha[d] a preexisting, established relationship with RPX,” and was an RPI. Thus, the PTAB terminated its prior Decisions and denied IPR review.

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