On December 4, 2020, the Board designated three cases from October as precedential. Together, the rulings help understand the Board’s approach to both serial challenges to issued patents and application of 35 U.S.C. § 315’s limitations on proceedings. Two of the newly precedential decisions address the real party in interest (“RPI”) requirement and the third concerns follow-on petitions and joinder motions. See RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (P.T.A.B. Oct. 2, 2020) (“RPX”); Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (P.T.A.B. Oct. 28, 2020) (“Apple v. Uniloc”); SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (P.T.A.B. Oct. 6, 2020) (“SharkNinja”).Read more about these decisions below.
RPX was on remand from the Federal Circuit, which vacated the Board’s earlier RPI determination for applying an overly restrictive test and failing to consider the whole record. RPX, Paper 128 at 4. After additional discovery, the Board concluded that RPX should have named its client/member as an RPI. Id. at 35. The Board made extensive findings regarding RPX’s business model, including its “core subscription business” of “patent aggregation, licensing, and filing IPRs to protect its clients.” Id. at 15. According to the Board, “RPX filed these IPRs to benefit its member,” id., even if RPX had its own separate interests of strengthening its business, id. at 15-17. Although the client had not explicitly requested the petitions or controlled them, the Board explained that the “RPI inquiry sweeps more broadly than requiring explicit evidence of request, funding, or control.” Id. at 33.
Because the client was an RPI, RPX’s petitions were precluded under the one-year bar. Id. at 35. The patent owner had sued the client over a year earlier for infringement of the challenged patents, so any IPR petition by RPX’s client would have been time-barred under § 315(b). Id. at 3-4. The Board focused on the RPI requirement’s role in precluding “parties from getting ‘two bites at the apple’ by allowing such parties to avoid either the estoppel provision or the time-bar,” id. at 9, a theme running throughout the decision, see id. at 32-35, 38-39.
SharkNinja considered another alleged RPI omission. In contrast to RPX, however, the alleged omission in SharkNinja would not affect the one-year bar or estoppel provisions. See SharkNinja, Paper 11 at 17-20. In fact, the lack of practical consequences made the RPI determination unnecessary at the institution stage. Even if the absent party (petitioners’ corporate parent) was an RPI, it “would not create a time bar or estoppel under 35 U.S.C. § 315.” Id. at 18. Therefore, any procedural error in omitting the corporate parent could be corrected after institution, did not preclude the IPR, and afforded no advantage to the petitioner. Id. at 18-19. Because the named petitioners had established a reasonable likelihood of prevailing on the merits, the Board granted institution. Id. at 21.
The Board’s third precedential decision rejected a copy-cat petition and joinder motion that would have circumvented the time bar of § 315 and allowed Apple to bring a second challenge to a Uniloc patent. Apple v. Uniloc, Paper 9 at 2, 7. Apple had filed an earlier petition in 2018, which the Board refused to grant. Id. at 5-6. Subsequently, more than a year after the patent owner sued Apple, Microsoft filed a petition that the Board did grant. Id. at 6. Apple followed with a “substantially identical” petition and joinder motion. Id. at 2-3, 6. The “copied petition is Petitioner’s second challenge to the patent,” the Board explained, and if Microsoft settled and Apple proceeded, “it would be as if Apple had brought the second challenge to the patent in the first instance.” Id. at 4; see also id. at 12. The Board walked through the General Plastic factors for discretionary denials under 35 U.S.C. § 314(a), found that all but one weighed against institution, and performed its “holistic review” to deny institution. Id. at 7-13 (citing Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)). With no instituted proceeding for Apple, the Board denied the accompanying motion to join the Microsoft IPR. Id.
The three precedential opinions thus reflect the Board’s current policies on the naming of RPIs and filing of certain follow-on petitions that implicate the time-bar and estoppel provisions of § 315.