CAFC Says AIA Confers No Freestanding Informational Right to Identities of Unnamed RPIs

Today, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Dolby Laboratories Licensing Corp. v. Unified Patents, LLC dismissing Dolby Labs’ appeal from the Patent Trial and Appeal Board (PTAB) for lack of an injury-in-fact to confer Article III standing. In so ruling, the Federal Circuit held that, although patent owners might have the right to dispute unnamed real parties in interest (RPIs) during inter partes review (IPR) proceedings, the America Invents Act (AIA) does not give patent owners a freestanding right to identify RPIs.

During IPR proceedings challenging the validity of Dolby Labs’ patent claims to a prediction method for video decoding, Dolby alleged that there were nine RPIs that were unnamed by petitioner Unified Patents. This issue wasn’t adjudicated by the PTAB when it instituted IPR proceedings on Unified’s petition. It was also largely avoided in the PTAB’s final written decision, which explained that RPI determinations were unnecessary in this case as there was no evidence that any alleged RPI was time-barred or estopped under 35 U.S.C. § 315, or that Unified purposefully omitted RPIs from the petition to gain any advantage.

Series of Alleged Harms Too Speculative to Support Appeal at the Federal Circuit

Demonstrating an injury-in-fact, or a concrete and particularized invasion of a legally protected interest, is one of three requirements that must be met for a party to have Article III standing to bring a case or controversy to federal court under the U.S. Supreme Court’s standard from Spokeo v. Robins (2016). Dolby Labs argued to the Federal Circuit that it had standing to appeal the PTAB’s refusal to adjudicate the RPI dispute based on the AIA’s statutory right to appeal, the violation of Dolby’s statutory right to information under the AIA, and other harms stemming from the PTAB’s refusal.

The Federal Circuit quickly dismissed Dolby Labs’ argument that it had a statutory right under 35 U.S.C. § 319 to appeal the PTAB’s final written decision as a “dissatisfied party.” The CAFC noted that JTEKT v. GKN Automotive (2018) identified a series of decisions establishing that the AIA did not create a statutory right to appeal obviating Article III standing requirements.

Dolby Labs also claimed an informational right to the identities of RPIs under 35 U.S.C. §312(a)(2), which requires that a petition include the names of all RPIs to be considered by the Board. While the Supreme Court has found an informational right to such information under public-disclosure or sunshine laws such as the Federal Advisory Committee Act and Federal Election Campaign Act, the contrasting purposes of the AIA to create a more streamlined and efficient patent system did not create such a right, the Federal Circuit held.

“Even if patent owners have a right under (Section) 312(a)(2) to have RPI disputes adjudicated, such a right only arises in the context of IPR proceedings; there is no freestanding right to that information.” – Federal Circuit

Finally, the Federal Circuit dismissed a series of other alleged harms as too speculative to confer an injury-in-fact. Dolby Labs produced no evidence showing that the alleged RPIs were in breach of licensing agreements, or that any of them were engaged in activities triggering infringement liability or any estoppel provisions. The Federal Circuit further found that Dolby could not show an injury from any potential conflict of interest among empaneled administrative patent judges (APJs) because Dolby prevailed at the PTAB. As well, any suggestion by Dolby that Unified would be disincentivized from filing IPRs by changing business practices to identify RPIs was too speculative to show an injury-in-fact.

Concluding that Dolby Labs did not establish Article III standing for its appeal, the Federal Circuit dismissed the appeal without reaching substantive challenges raised by Dolby.