Not a Lexis Advance subscriber? Try it out for free.

Applications in Internet Time, LLC v. RPX Corp.

United States Court of Appeals for the Federal Circuit

July 9, 2018, Decided

2017-1698, 2017-1699, 2017-1701

Opinion

 [***1253]  [*1338]   O'Malley, Circuit Judge.

This appeal arises from three inter partes reviews ("IPRs") challenging claims of two patents owned by Appellant Applications in Internet Time, LLC ("AIT"): U.S. Patent Nos. 7,356,482 ("the '482 patent") and 8,484,111 ("the '111 patent"). The Patent Trial and Appeal Board ("Board") of the United States Patent and Trademark Office ("PTO") instituted the IPRs over AIT's objection that the three IPR petitions filed by Appellee RPX Corporation ("RPX") were time-barred under 35 U.S.C. § 315(b) (2012). AIT contended that RPX was acting as a "proxy" for one of its clients, Salesforce.com, Inc. ("Salesforce"), on whom AIT had served a complaint [**2]  alleging infringement of the '482 and '111 patents more than one year before RPX filed its petitions. Thus, AIT alleged that  [*1339]  RPX was not the only real party in interest and that the time bar applicable to Salesforce was equally applicable to RPX. In two final written decisions, the Board held certain claims of the patents unpatentable under 35 U.S.C. § 103. RPX Corp. v. Applications in Internet Time, LLC, Nos. IPR2015-01751, IPR2015-01752, 2016 Pat. App. LEXIS 13520, 2016 WL 7985456 (P.T.A.B. Dec. 28, 2016 (482 Decision)); RPX Corp. v. Applications in Internet Time, LLC, No. IPR2015-01750, 2016 Pat. App. LEXIS 13520, 2016 WL 7991300 (P.T.A.B. Dec. 28, 2016) (111 Decision).

AIT appeals, among other things, the Board's time-bar and unpatentability determinations. For the reasons set forth below, we conclude that the Board applied an unduly restrictive test for determining whether a person or entity is a "real party in interest" within the meaning of § 315(b) and failed to consider the entirety of the evidentiary record in assessing whether § 315(b) barred institution of these IPRs. We accordingly vacate the Board's final written decisions and remand for further proceedings.

I. Background

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

897 F.3d 1336 *; 2018 U.S. App. LEXIS 20605 **; 128 U.S.P.Q.2D (BNA) 1252 ***

APPLICATIONS IN INTERNET TIME, LLC, Appellant v. RPX CORPORATION, Appellee

Subsequent History: Rehearing denied by, Rehearing, en banc, denied by Applications in Internet Time, LLC v. RPX Corp., 2018 U.S. App. LEXIS 30297 (Fed. Cir., Oct. 23, 2018)

Motion granted by RPX Corp. v. Applications in Internet Time, LLC, 2019 U.S. LEXIS 832 (U.S., Feb. 19, 2019)

US Supreme Court certiorari denied by Rpx Corp. v. Internet, 2019 U.S. LEXIS 1842 (U.S., Mar. 18, 2019)

Prior History:  [**1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2015-01750, IPR2015-01751, IPR2015-01752.

RPX Corp. v. Applications in Internet Time, LLC, 2015 Pat. App. LEXIS 11561 (P.T.A.B., Oct. 20, 2015)

Disposition: VACATED AND REMANDED.

CORE TERMS

patent, real party in interest, privity, petitions, privy, challenges, non-party, parties, proxy, time-barred, legal relationship, proceedings, principles, decisions, common law, party-in-interest, factors, time barred, determinations, entity, terms, best practices, preclusion, suggests, infringement, common-law, instituted, estoppel, patent infringement, written decision

Business & Corporate Compliance, Patent Law, US Patent & Trademark Office Proceedings, Reexamination Proceedings, Patent Law, Jurisdiction & Review, Subject Matter Jurisdiction, Appeals, Filing Requirements, Administrative Law, Judicial Review, Standards of Review, Deference to Agency Statutory Interpretation, Standards of Review, Agency Rulemaking, Formal Rulemaking, Governments, Legislation, Interpretation, Civil Procedure, Preliminary Considerations, Justiciability, Standing, Statute of Limitations, Time Limitations, Parties, Real Party in Interest, US Patent & Trademark Office Proceedings, Substantial Evidence, Infringement Actions, Infringing Acts, Indirect Infringement, Evidence, Burdens of Proof, Allocation, Arbitrary & Capricious Standard of Review