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.
Finnegan reports that “the Supreme Court has requested the views of the Solicitor General in deciding whether to grant certiorari in RPX Corp. v. Chanbond LLC on the question of whether a petitioner suffers injury-in-fact sufficient to establish Article III standing to appeal an adverse final written decision of the Patent Trial and Appeal Board based solely on the statutory provisions of the AIA governing inter partes review, regardless of whether the petitioner/ appellant is engaged in activity potentially giving rise to an infringement suit.”
“based solely on the statutory provisions of the AIA governing inter partes review, regardless of…”
…[ordinary Article III standing requirements]”
We’ve covered the legal grounds on this topic previously (even dating back to a detailed explication from the late Ned Heller).
Congress supposedly knew what it was doing by setting up a dual forum system (knowingly choosing to create a part I to the system that expressly does not require Article III standing), and cannot bootstrap (eviscerate) past the “hard minimum” standing requirement to be in an Articlet III forum.
Yea, but the point is that if this IS such an easy slam dunk cert denial, then why “..the Supreme Court has requested the views of the Solicitor General”? They do not regularly do that.
Anything related to “Why does the Supreme Court…” often leaves the realm of critical and rational thought.
Do you really think that THAT body actually concerns itself with its own proper limits?
Seriously? You people are going to argue that these associations that are only there to try to get out of estoppel and other restrictions of IPRs are not in “privy” with those that decide to file the IPRs?
Seriously? Have you no shame. They join to get the protection. Odd of a member not getting protected from big lawsuit probably zero. Etc.
DC>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.
MM>>Probably true.
Most assuredly not true.
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.
Probably true.
The point of the “real party in interest” requirement was to prevent sued companies from creating shell companies and using the shells to file IPRs past the deadline.
since Salesforce.com is a member of RPX — then it seems likely that Salesforce.com is a “real party in interest” under the statute
Not if Salesforce doesn’t control RPX or the proceedings before the PTAB. What did discovery show?
The fact of the matter is everyone has an interest in getting invalid junk patents — like the junk that was invalidated in this case — off the books, as it were. That’s the paramount consideration underlying all the patent statutes and the patent statutes should be construed with that in line.
If Congress wants to establish that every individual who belongs to a group that is dedicated to eliminating every junk patent out there is a “real party in interest” whenever one of those junk patents is asserted against any member of that group, then Congress should attempt to pass that law. I think the Constitution may have something to say about that.
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.
This is the source of the problem, isn’t it? If the patent troll wants to continue the case against an individual while it’s getting hammered at the PTO by another entity, let the troll go ahead and spend its money. Nature abhors a junk patent, and nature abhors the sk umb@gs who run around sueing people with them.
Just ask Tricky Nicky Gross who will be forever branded with Judge Patel’s belt across his greedy butt.
link to techrights.org
LOL
“Just ask Tricky Nicky Gross who will be forever branded with Judge Patel’s belt across his greedy butt.”
Ooh, what a zinger! How unsurprising that you left out the part where the Defendant in the case, Wells Fargo, paid a sizable license fee to my client to settle the case? That’s what winning lawyers call a “success” a concept I can tell is completely alien in your practice lol
you left out the part where the Defendant in the case, Wells Fargo, paid a sizable license fee to my client to settle the case? That’s what winning lawyers call a “success”
My clients know that I’m not going to l i e for them.
But it’s true that they can always go to the street corner and find that kind of lawyers if they’re looking for a (LOL) “win”.
You’re a real “winner”, Nicky. Widely admired.
LOL
Today’s example of utter inanity:
“My clients know that I’m not going to l i e for them.”
Judging from how you act here Malcolm, the exact opposite is guaranteed.
MM is not one for reality JNG.
He lives in a world where functions come without structure.
Spirits perform information processing.
“The point of the “real party in interest” requirement was to prevent sued companies from creating shell companies and using the shells to file IPRs past the deadline.”
Not constrained to that – at all.
“doesn’t control RPX or the proceedings before the PTAB.”
Control comes in many forms – if what RPX is doing is the reason why a client joins, then that is the “control” that you need.
“ That’s the paramount consideration underlying all the patent statutes and the patent statutes should be construed with that in line.”
This is so far from reality as to be clearly an indictment of your anti-patent feelings.
paramount: par·a·mount /ˈperəˌmount/
adjective
more important than anything else; supreme.
You have your head buried in some nether region if you think that the supreme aspect of having patent law is to be able to NOT have patents once granted.
“If Congress wants to establish…then Congress should attempt to pass that law.”
Would you settle for what Congress actually did do (and as reflected in the decision that is the topic of this thread)…?
Maybe you want to make a comment on point to that? That is, if you can tear yourself away from your usual journey into ad hominem…
You have your head buried in some nether region if you think that the supreme aspect of having patent law is to be able to NOT have patents once granted.
Valid patents are perfectly welcome.
Not sure why that’s so hard to understand.
paramount: par·a·mount /ˈperəˌmount/
adjective
more important than anything else; supreme.
Indeed. The “public” has a “paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.”
Take it to the bank.
That happens prior to grant.
You are aware that THAT is how your “paramount” is meant to be achieved – as well you should realize that what you want is NOT actually paramount as that word is to be understood, given that the patent system is a bargained exchange with two parties, only one of which has the actual innovations…
But hey, keep on keeping on with your negative mindset.
That happens prior to grant.
Also after. See, e.g., the AIA.
Thanks for playing, Billy.
“Valid patents are perfectly welcome.”
Tell me again (or for the first time) about that presence and level of the legal presumption of validity, and why we have that law.
the legal presumption of validity, and why we have that law.
Someone has to have the burden of proof. The presumption puts that burden on the patent challenger.
A+
B-
You stated the obvious, and yet have not connected the dots.
(and the rather bland “well someone has to have the burden” says nothing at all about either the choice of that burden, not the level of that choice. You also fa1l to address what the overall law itself means: the act of grant itself — and how that act turns an innovators’s inchoate right into a full legal property right.
You are far too much in a hurry to pat yourself on the back and you miss the impact and meaning that are fundamental to patent law.
Try again.
I see that you have already moved on to your next drive-by…
Not a real surprise.
if what RPX is doing is the reason why a client joins, then that is the “control” that you need
Seems more like a privy relationship to me. I’m not saying that it is one, but your description would seem to match that term far better than “real party in interest.”
But take this a bit further. Let’s say that two entities own 80% of the junk patents and are trolling with them. In response, 90% of the country’s entities (individuals and corps) who use computers decide to “sign up” with RPX. RPX is now the “real party in interest” for all those businesses? Seems a bit odd.
A privy relationship….
Read again what Congress wrote (as pertains to the topic here).
Your better path is to acknowledge that I am correct.
“The point of the “real party in interest” requirement was to prevent sued companies from creating shell companies and using the shells to file IPRs past the deadline.”
Come on. RPX and Unified Patents exist solely to get around the intent of the AIA time bar (which is to prevent endless IPRs on the same Patent).
While they may or may not be successful in the future based on member agreement gymnastics they employ – can you at least agree that they exist to try and get around the time bar?
I’m confused. Would this decision impact the not-unusual situation of patent owners who deliberately only sues customers, rather than the manufacturer, and the un-sued manufacturer files an IPR? If the manufacturer loses the IPR would it be bared from a Fed. Cir. appeal and would estoppel apply to customers?
Customers and vendors do not have an agency relationship. A customer is not a member of a vendor.
Under the court’s novel “benefit” definition of RPI, I’m not confident there is a principled way to distinguish customers of a widget maker from customers of RPX.
“not confident there is a principled way to distinguish customers of a widget maker from customers of RPX.”
Sorry Eric, I am not seeing the conundrum that you think that you see.
The two are very much clearly different, and the there is no reach that I can see from what the court has done to broach any type of customer/vendor relationship to the business model of RPX and United Patents.
You appear to be seeing something that is just not there.
Can you provide some point upon which I can grasp your concern?
Last time I checked the Restatement on Agency, it didn’t include membership in an organization absent some measure of control. If a member tells RPX “no thanks, we’ve got this” and RPX decides to file an IPR anyway, for example to help a prospective member or as leverage to negotiate a license for the entire membership, then the first member is a real party in interest despite explicitly telling the petitioner it doesn’t want the IPR? Absurd.
That very much depends on what “membership” means (i.e., what the organization is about).
These cases concern that “about” being directly aligned with the action in court.
THAT is what is “being sold” by becoming a “member.”
If an organization was actually advertising that it would legally defend those who became “members,” isn’t that getting close to a form of attorney advertising for clients?
Where are you getting this “legally defend”…?
No closer than insurance companies get when they do just that. They still use outside counsel to do the actual lawyering.
Anyway, (almost) anyone can file an IPR on a patent.
The question here is whether RPX is an almost.
It is interesting here – I think that we’d find the general law cases are different when we’re talking about offensive vs defensive use of agency.
There is also a tension in saying, on the one hand that RPX has no injury and thus no standing to appeal (in the earlier RPX decision) and on the other hand saying that members who are injured (here, Salesforce) are the real-party-in-interest.
Agreed, however that tension seems to be caused by the court’s failure to understand RPX’s business model and distinguish it from that of Unified Patents. RPX wants to buy patents or patent licenses and in the majority of its transactions never files an IPR. Unified exists exclusively or almost exclusively to prosecute IPRs through completion. A failure to distinguish their respective uses of IPR in their business models when analyzing agency is gross negligence.
Really?
Gross negligence?
The case at point does concern RPX in an IPR situation, correct?
As to any actual analysis of agency, I will reserve comment, as I have not seen how the court conducted its agency evaluation. I am not certain just what type of “agency evaluation” would satisfy you Eric, given (as stated) that this particular case does involve the IPR scenario.
Dennis
thankfully we’re finally seeing CAFC stand up and play its role in the patent ecosystem, by whacking the PTO back into a role of being a neutral arbiter, and not just a tool for exploitation by serial infringers
Unified Patents is already backpedaling everywhere; their website has been altered and re-written to try and avoid the same taint for the cases they are involved with for their members. It should die a slow and painful death, because no member will want to join an organization which has substantial estoppel baggage accrue at the time of entry
With the BRI standard also going by the wayside, and a new IP respecting Sheriff at the PTO, we’re slowly undoing the damage of patent “deform” paid for by the usual suspects.
From the article: “The court’s ruling creates real challenges to the business model of defensive patent groups such as RPX.”
From the comment: “Unified Patents is already backpedaling everywhere”
Not surprisingly, and given how smug Shawn Ambwani has been in certain forums, that business model SHOULD reflect what it is: Unified Patents (and RPX) is an agent of its members (of all of its members).
I am kind of surprised to NOT see Malcolm decrying the “grifting” aspect of a business model that attempts to “hide” its connections to real parties. Oh wait, this grifting business model is anti-patent, and thus is likely considered to be a good thing…
Because I was certain UP would be sh*tting bricks after the decision, I screenshotted their site pages before they got wind of it and could change it. The difference in their promos, text, etc. is quite telling, as they now proclaim to just be a benevolent independent white knight trying to rid the world of bad patents, whereas before they were heavy on the sell of what they could do FOR MEMBERS. I’m sure they’ve contacted archive.org to try and sanitize their past.
we’re slowly undoing the damage of patent “deform”
LOL The self-proclaimed inventor of the “proxy server” is here to lecture everybody. Too funny.
Maybe after your reg number is chucked in the trash where it belongs, Tricky Nicky, we can talk about undoing the damage caused by you and your troll cohorts.
Until then, there’s much more bad news to come for maximalists like you.
[shrugs]
Own it. Anybody who would ever take a license to any of your cr@ p is a flipping m 0 r0n. For the laughs alone, it’d be worth watching you meltdown in court.
Wow, now Im the inventor of the proxy server too! Thanks – apparently I’m a legend in your mind
At least I have a reg number – AFAICT you’ve never been able to verify that anyone has ever hired you for anything… patent-related – you’re big on talk, but unsurprisingly unable to document anything of value
The green for your avatar suits you: I guess its depressing being you, having never thought of anything that anyone else would want, let alone pay for?
Somehow I think that pretty much sums up your experience in life: watching others
Face it Moon-man, if you spent more time doing real work you might be half as successful as the people you envy. Until then, your only claim to fame appears to be Internet board master-troll, which, I suspect, doesn’t pay very well, but is seemingly the limit of your talent/skills.
All that Malcolm is trying to do here is kick up dust, and make this personal with ad hominem to distract from the plain legal issues underlying the point of the thread.
Off-subject. Is there such a thing as “collusion to deprive of a property right” cause of action? Would it fall under RICO, if collusion is a “fraud”?
It’s never RICO.
I would totally watch a series where Hugh Laurie played an antisocial Assistant US Attorney.
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