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RPX Requests en banc Review in Applications in Internet Time v. RPX

On September 7, 2018, RPX Corporation (“RPX”) requested a rehearing en banc of the Federal Circuit’s July 2018 Applications in Internet Time, LLC v. RPX Corp. decision, which 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).

Internet Time involved three IPR petitions filed by RPX against patents owned by Applications in Internet Time, LLC (“AIT”). RPX stated in its petitions that it was the sole real party in interest. AIT disagreed and argued that RPX was acting as a proxy for SalesForce.com when it filed the petitions. AIT maintained that because it sued SalesForce.com for infringement more than one year before the petitions, and SalesForce.com was a subscriber to RPX’s services and had a pre-existing relationship with RPX, RPX was time-barred under 35 U.S.C. § 315(b). The PTAB was unpersuaded, instituted the IPRs, and invalidated parts of AIT’s patents.

The Federal Circuit vacated and remanded, finding fault with the PTAB’s analysis. The Federal Circuit stated that real party in interest determinations require a flexible approach that “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. In contrast, the “[PTAB]’s consideration of the evidence was impermissibly shallow, both under the Trial Practice Guide and the common law it incorporates.” Id.

In its petition for rehearing en banc, RPX argues that Internet Time’s interested party test is unreasonably broad and characterizes it as including anyone that may benefit from a patent being invalidated, as well as any party that has a relationship with the petitioner. Irrespective of whether the Federal Circuit rehears this case en banc, or the next decision is from the PTAB on remand, this case will have vast implications for identifying a real party in interest in IPRs. 

Kara Grogan contributed to this post.

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About this Author

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

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...

Daniel B. Weinger Patent Litigation Attorney Mintz Law Firm

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 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.