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Federal Circuit Denies RPX’s Request for en banc Review in Applications in Internet Time v. RPX

Continuing our coverage of the Federal Circuit’s Applications in Internet Time, LLC v. RPX Corp. (“Internet Time”) decision, on Tuesday, October 23, 2018, the Federal Circuit denied RPX’s request to rehear the case en bancInternet Time held that the Patent Trial and Appeal Board (“PTAB”) must use a flexible approach when determining what entities constitute real parties in interest for the purpose of inter partes review (“IPR”). See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (July 9, 2018) (“Internet Time”). Petitioners for IPR challenging a patent must identify all real parties in interest in their petition. 35 U.S.C. § 312(a)(2). The Director is not authorized to institute trial on the petition if the petitioner, real party in interest, or privy of the petitioner, was served with an infringement complaint for the patent in question more than one year before the petition’s filing. See 35 U.S.C. § 315(b).

In Internet Time, patent owner Applications in Internet Time, LLC (“AIT”) argued that RPX should have named Salesforce, Inc. (“Salesforce”), who is an RPX member, as a real party in interest and failed to do so.  AIT further argued that since Salesforce was time barred RPX’s petition should be time barred as well.  The PTAB disagreed and invalidated claims of the challenged patent. In overturning the PTAB the Federal Circuit found that the PTAB applied an unduly narrow definition of real party in interest.  While the panel did not articulate a specific test for determining whether a party is a real party in interest, the panel did criticize the PTAB for failing to “take[] 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 petitioner.” Internet Time, 897 F.3d at 1351.

Now that RPX’s request has been denied, barring a further petition to the Supreme Court, the case is remanded back to the PTAB panel for reconsideration of whether Salesforce was a real party in interest that should have been named in RPX’s petition for IPR.  The outcome of this case could have vast implications for identifying a real party in interest in IPRs. Stay tuned to Mintz’s coverage for further developments as the case heads back to the PTAB.

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About this Author

Peter Snell, Mintz Levin Law Firm, New York, Intellectual Property and Litigation Law Attorney
Member

Peter litigates patent infringement, patent invalidity, and other intellectual property disputes in courts all across the country, including US district courts and the US Court of Appeals for the Federal Circuit. He has examined witnesses at trial, taken and defended depositions of fact and expert witnesses, and conducted discovery.

The areas of technology in which Peter has particular experience include communications systems and networking, packet switching, integrated circuits, semiconductor technology, powerline networks, RFID, electronics...

212-692-6850
Daniel Weinger, Mintz Levin Law Firm, Boston, Intellectual Property Litigation Attorney
Associate

Daniel's practice in intellectual property focuses on patent litigation, both at the International Trade Commission and the Federal District Courts. Daniel has participated in all phases of patent litigation, including active engagement in multiple evidentiary hearings at the International Trade Commission. He has done work in a variety of technology areas, including computer software, software architecture, GPS, network devices, semiconductors, converged devices, and LED lighting.

Prior to joining Mintz Levin, Daniel worked with Pepper Hamilton LLP and as a database programmer with InterSystems, Corp., where he specialized in programming solutions for database development with a focus primarily on integration engines.

While on leave from Mintz Levin, from 2014 - 2015, Daniel practiced as a Special Assistant District Attorney in the Middlesex County (MA) District Attorney's Office, based in the Framingham, MA, district court.  During that time, Daniel prosecuted and tried numerous drug, larceny, breaking and entering, and motor vehicle cases in bench and jury sessions.  He also argued bail hearings, motions to suppress, and motions to dismiss.

617-348-1629