by Dennis Crouch
In Applications in Internet Time v. RPX Corporation, the Federal Circuit send a PTAB decision of invalidity back down for reconsideration on the issue of whether the RPX IPR petition was time-barred under 35 U.S.C. § 315(b). Section 315(b) sets up a one-year deadline for filing an IPR petition against a patent following an infringement complaint for the patent at issue served on either the “the petitioner, real party in interest, or privy of the petitioner.”
315(b) Patent Owner’s Action.— An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.
The particular factual problem for the patent challenger (RPX) stems from its setup as a member-driven patent-protection company. Salesforce.com was previously charged with infringement of the patent at issue; since Salesforce.com is a member of RPX — then it seems likely that Salesforce.com is a “real party in interest” under the statute. For the Federal Circuit, the real-party-in-interest inquiry should be conducted “with an eye toward determining whether the nonparty is a clear beneficiary [of the IPR] that has a pre-existing, established relationship with the petitioner.” Note here that the lawsuit against Salesforce.com is still pending — the Nevada district court has stayed the case pending outcome of the RPX IPR proceedings.
Rehearing en banc: Following the Federal Circuit’s decision, RPX requested en banc rehearing — that request has now been denied.
The court’s ruling creates real challenges to the business model of defensive patent groups such as RPX. I expect that RPX will now petition for Supreme Court review and could become a companion case of the company’s already pending petition on the issue of when such a group has standing to appeal an adverse PTAB decision. RPX Corporation v. ChanBond LLC.
In its unsuccessful rehearing petition, RPX argued that the panel improperly expanded the meaning of real-party-in-interest because of its desire to protect patent holders against defensive patent groups.