- RPX Corporation v. Applications In Internet Time, LLCRehearing deniedPTAB · Dec 4, 2020 · IPR2015-01750 · APJ Scott R Boalick · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving in place the remand decision terminating the reviews because Salesforce was an RPI and the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“legally required for Salesforce to be a “beneficiary.” Req. Reh’g. 14. Further, Petitioner further asserts that we overlooked the authority cited by Petitioner that “‘behest’ means command, and that RPX cannot have acted as Salesforce’s representative unless RPX were appointed by Salesforce to so act.” Id. at 14–15. Petitioner asserts that the evidence, at most, demonstrates that RPX filed as a “mere volunteer to benefit Salesforce.” Id. at 15. We are not persuaded because Petitioner’s argument proposes that we apply a more narrow and rigid analysis of RPI than the one instructed by the Federal Circuit in these cases. As stated by the Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’ demands a flexible approach that takes 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 the petitioner.” AIT, 897 F.3d at 1351; see also Dec. 4–5. Applying this flexible approach to the evidence of record, we determined that Salesforce is an RPI in these proceedings.” slip op. at 16
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“III. ANALYSIS In the Final Decision on Remand, we determined that Petitioner had not shown, by a preponderance of the evidence, that Salesforce was not an RPI in these proceedings. Dec. 1–2, 6–7, 30–35, 40. As noted above, in light of this determination, we terminated the previously instituted inter partes reviews, and denied inter partes reviews under 35 U.S.C. § 315(b). Id. at 35, 40.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“entitled to due process and the protections afforded by the Administrative Procedure Act. Pet. Reply 1 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)). We agree with Patent Owner, however, that all requirements of procedural due process have been met here. “The indispensable ingredients of due process are notice and an opportunity to be heard by a disinterested decision-maker.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013)). In this case, Petitioner had ample opportunity to brief the issue of RPI. See Paper 28, Paper 29 (redacted version); Paper 38, Paper 37 (redacted version); Paper 98, Paper 95 (redacted version); Paper 100, Paper 104 (redacted version); Paper 101, Paper 102 (redacted version). Petitioner also had an opportunity to argue the issue of RPI in two oral hearings. See Paper 77, Paper 112, Paper 123 (redacted version). Moreover, in its Request for Rehearing, Petitioner had a chance to identify any matters it believes this panel misapprehended or overlooked in its Final Decision on Remand. Petitioner further had an opportunity to file a Reply to Patent Owner’s Response to its Request. Thus, both before and after this panel issued its Final Decision on Remand, Petitioner had notice and an opportunity to be heard on issues relevant to these cases on remand from the Federal Circuit. Finally, although a change in panel after remand from the Federal Circuit is not common, this panel, like the original panel, decided the merits of each case based on the entirety of the record. Stated another way, either panel would have decided the case after careful consideration of the same evidence. Nor can Petitioner complain that it lacked notice and an opportunity to be heard regarding the panel change – Petitioner received notice of the panel change both before and in the panel decision, and Petitioner’s Request for Rehearing and Board-authorized Reply gave it ample opportunity to be heard. Accordingly, we are not persuaded that the change in panel has prejudiced Petitioner in any way or violated Petitioner’s due process rights.” slip op. at 4
Discretionary denialPatents in suitUS 8,484,111 - ROKU, Inc. v. Universal Electronics, Inc.Institution deniedPTAB · Nov 10, 2020 · IPR2020-00952 · APJ Sharon Fenick · IPR · Institution
The Board denied institution on claims 1, 2, 6, and 8 because the petition was time-barred under § 315(b), and denied Roku’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“III. ANALYSIS “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.” 35 U.S.C. § 315(b). The parties agree that the Petition was filed more than one year after the date on which Petitioner was served in the related litigation with a complaint” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Petitioner’s argument is nevertheless foreclosed by the Federal Circuit’s recent decision in Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321 (Fed. Cir. 2020). In that decision, the Federal Circuit expressly considered the impact of Thryv, determining that the Board’s joinder decisions are “unlike” the challenges it is precluded from reviewing and “more like” those that it may review. Windy City, 973 F.3d at 1332. the Board’s joinder decisions.” Id. And after reviewing such a joinder decision, the court further concluded that 35 U.S.C. § 315(c) “does not authorize same-party joinder, and does not authorize the joinder of new issues.” Id. at 1333–38. In accordance with the Federal Circuit’s decision, we deny Petitioner’s Motion for Joinder. Consequently, we conclude that the Petition is time-barred and that no exception applies under the facts before us. We therefore deny the Petition.” slip op. at 9
Discretionary denialPatents in suitUS 9,716,853 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Regents Of The University Of MinnesotaRehearing deniedPTAB · Sep 18, 2020 · IPR2017-01186 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving institution denied because the petition was time-barred under § 315(b) based on privity with district court defendants.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing of a decision whether to institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that 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.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that 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.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
Discretionary denialPatents in suitUS 8,774,309 - PTAB · Mar 16, 2020 · IPR2019-01111 · APJ Joni Y Chang · IPR · Rehearing
The Board denied rehearing and maintained denial of the petition as time-barred under § 315(b), because Amazon was a privy of several Petitioner Entities.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Here, Requesters simply disagree with the way in which we resolved the disputed privity issue in our Decision. Mere disagreement with our Decision is not proper basis for rehearing when we had considered and addressed Petitioner Entities’ arguments in the Decision itself. Requesters do not show that we misapprehended or overlooked an argument that they made in the Petition or Reply. Moreover, Requesters have not identified persuasively in the Request an erroneous interpretation of the law or factual findings not supported by substantial evidence such that the Decision should be modified.” slip op. at 9
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In particular, we explained that the District Court’s ruling is on appeal, and Amazon has intervened in the appeal to continue its defense of Petitioner Entities’ interests in Amazon’s products. Id. at 29−30; Ex. 2017 (Patent Owner’s Appeal Brief); Ex. 2018 (Amazon’s Motion to Intervene). Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and some of the Petitioner Entities, have not changed and that Amazon and Petitioner Entities remain in privity. Dec. 23−24, 27−30, 35.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“concerns by evaluating whether one or more of the Taylor’s categories apply. Dec. 18−36. We separately and expressly analyzed three grounds— namely, Taylor’s second, third, and fifth categories identified above. Id. For example, the third Taylor category, addressing due process concerns, is whether a party not involved in a lawsuit nevertheless was represented adequately by someone with the same interests who was a party to the lawsuit. See Taylor, 553 U.S. at 894; WesternGeco, 889 F.3d at 1319. We determined that Amazon is a privy of several Petitioner Entities under this ground, as well as two additional grounds. Dec. 18−36.” slip op. at 5
Discretionary denialPatents in suitUS 7,802,310 - PTAB · Mar 16, 2020 · IPR2019-01092 · APJ David C Mckone · IPR · Rehearing
The Board denied rehearing and maintained its denial of the petition as time-barred under § 315(b) because Petitioner entities remained in privity with Amazon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Petitioner entities, the parties challenging the Institution Decision. See 37 C.F.R. § 42.71(d) (2018). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“particular, we explained that the District Court’s ruling is on appeal, and Amazon has intervened in the appeal to continue its defense of Petitioner entities’ interests in Amazon’s products. Dec. 18, 20–21; Exs. 2017–2018. Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and at least some of the Petitioner entities, have not changed, and that Amazon and Petitioner entities remain in privity. Dec. 18, 21.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“the customer cases [, which include at least some Petitioner entities,3] are in privity with Amazon because they share the same interest in the unfettered use of Amazon’s web services, and Amazon adequately represented this interest in the [2011] Texas Action.” Ex. 2012, 14 (emphases added), quoted in Dec. 14. We do not understand Petitioner entities to be arguing that this determination was incorrect—Petitioner entities are the clear beneficiaries of the District Court’s ruling. In our Decision, we noted that the District Court’s articulation “is very similar, if not identical, to category three (adequate representation by the named party) in Taylor, where nonparty preclusion based on a privity relationship may be found.”” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“preclusion is, of course, subject to due process limitations,” and that “[a] person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.” Taylor v. Sturgell, 533 U.S. 880 (2008), 891–92. Thus, “[a]s informed by Taylor and other cases, the standards for the privity inquiry must be grounded in due process.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). According to the U.S. Court of Appeals for the Federal Circuit, “[b]ecause nonparty preclusion risks binding those who have not had a full and fair opportunity to litigate, the Supreme Court has cautioned that there is a general rule against nonparty preclusion, subject to certain exceptions.” Id. (emphasis added); accord Taylor, 533 U.S. at 893 (“[T]he rule against nonparty preclusion is subject to exceptions.”). Taylor groups such exceptions into six categories, 533 U.S. at 893–95, three of which we analyzed in the Decision, at 13–27 (analyzing exceptions 2, 3, and” slip op. at 4
Discretionary denialPatents in suitUS 6,928,442 - PTAB · Mar 16, 2020 · IPR2019-01093 · APJ Denise M Pothier · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the petitioner entities remained in privity with time-barred Amazon under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The abuse of discretion standard of review is the same heightened standard that federal appeals courts use to review district court factual findings. See PNY Techs., Inc. v. Phison Elecs. Corp., IPR2013-00472, Paper 16 at 2 (PTAB Apr. 23, 2014) (Final Written Decision) (citing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005) (“An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.”)). A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d) (2018). The party must identify specifically all matters that we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“entities’ interests in Amazon’s products. Id. at 19, 21–22; Exs. 2017–2018. Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and at least some of the Petitioner entities, have not changed and that Amazon and Petitioner entities remain in privity. Dec. 19, 22–23.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Specifically, the District Court expressly found that “the defendants in the customer cases[, which include at least some Petitioner entities,3] are in privity with Amazon because they share the same interest in the unfettered use of Amazon’s web services, and Amazon adequately represented this interest in the [2011] Texas Action.” Ex. 2012, 14 (emphases added), quoted in Dec. 23. Petitioner entities are the clear beneficiaries of this ruling by the District Court, and we do not understand Petitioner entities to be arguing that this determination by the District Court was incorrect. In our 3 As stated in the Decision (Dec. 13), the U.S. Court of Appeals for the Federal Circuit in Click-to-Call read § 315(b) “to apply petition-by-petition, not petitioner-by-petitioner, with the collection of petitioners on a single petition treated as a unit indistinguishable from each member of that collection” “for the one-year time bar.” Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1338 (Fed. Cir. 2018) (en banc in part). Decision, we noted that the District Court’s articulation “is very similar, if not identical, to [exception] three (adequate representation by the named party) in Taylor, where nonparty preclusion based on a privity relationship may be found.” Dec. 16. In the Decision, we further agreed with the District Court’s determination related to privity and reached the same conclusion upon considering the parties’ arguments and evidence. Id. at 23– 27. Thus, we considered whether denying the Petition was consistent with and grounded in due process, and concluded that it was, because, as analyzed in the Decision and discussed above, the record’s evidence met the third Taylor exception.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“The Supreme Court has stated that “[t]he federal common law of preclusion is, of course, subject to due process limitations,” and that “[a] person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.” Taylor, 533 U.S. at 891–92. Thus, “[a]s informed by Taylor and other cases, the standards for the privity inquiry must be grounded in due process.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). According to the Federal Circuit, “[b]ecause nonparty preclusion risks binding those who have not had a full and fair opportunity to litigate, the Supreme Court has cautioned that there is a general rule against nonparty preclusion, subject to certain exceptions.” Id. (emphasis added); accord Taylor, 533 U.S. at 893 (“[T]he rule against nonparty preclusion is subject to exceptions.”). Taylor groups such exceptions into six categories, 533 U.S. at 893–95, three of which we analyzed in the Decision. Dec. 13–28 (analyzing the second exception (pre-existing substantive legal relationship between the 2 Patent Owner filed a complaint against Amazon on December 8, 2011, in the Eastern District of Texas (“the 2011 Amazon lawsuit”), alleging infringement of the ’544 patent based on Amazon’s Simple Storage Service (“S3”). Pet. 2; Prelim. Resp. 13–14 (citing PersonalWeb Techs. LLC v. Amazon Web Servs. LLC, No. 6:11-cv-00658 (E.D. Tex. dismissed on June 9, 2014)). parties), the third exception (adequate representation by the named party), and fifth exception (the nonparty acts as a proxy for the named party to re-litigate the same issues)). See also WesternGeco, 889 F.3d at 1319 (summarizing Taylor’s “non-exhaustive list of considerations where nonparty preclusion would be justified”). In the Decision, we addressed Petitioner entities’ due process concerns by evaluating whether one or more of Taylor’s exceptions apply. For example, one of the Taylor exceptions (the third exception) addressing due process concerns considers whether a nonparty to a lawsuit was represented adequately by someone with the same interests who was a party to the lawsuit. See Taylor, 553 U.S. at 894; WesternGeco, 889 F.3d at 1319. As explained below, we considered and analyzed this exception in the Decision.” slip op. at 4
Discretionary denialPatents in suitUS 7,945,544 - PTAB · Mar 2, 2020 · IPR2019-01589 · APJ Kevin W Cherry · IPR · Institution
The Board denied joinder because no proceeding remained to join, then denied institution because the petition was time barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Because IPR2019-00748 has terminated in a Final Written Decision and no proceeding remains for Petitioner to join, we deny Petitioner’s motion to join IPR2019-00748.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Under 35 U.S.C. § 315(b), 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 is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.101(b). Because Petitioner was served with a complaint asserting infringement of the ’535 patent more than one year before it filed the Petition, Pet. 5, we deny the Petition as barred under 35 U.S.C. § 315(b).” slip op. at 2
Discretionary denialPatents in suitUS 8,934,535 - Juniper Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Feb 27, 2020 · IPR2019-01403 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Juniper’s rehearing request, finding no abuse of discretion in denying institution because the petition was time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“district court and the June 13, 2018 vacatur of that grant, we determined that “service occurred at a time authorized by the district court.” Dec. 6. In its Request, Petitioner contends that, because the district court originally granted leave to serve the complaint in “error,” “Patent Owner’s June 8, 2018 filing was not properly served and cannot start the clock on Petitioner’s one-year deadline.” Req. Reh’g 1. But in advancing this contention, Petitioner misconstrues the meaning of “properly served” in the context of the Board’s precedential decision in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019) (precedential). In recognizing that a complaint “improperly served” does not trigger the § 315(b) time bar, the Precedential Opinion Panel in GoPro cites IpDatatel, LLC v. ICN Acquisition, LLC, IPR2018-01823, Paper 17 at 10–18 (PTAB Apr. 17, 2019) for the interpretation of “served” in § 315(b) as “requir[ing] compliance with Rule 4 of the Federal Rules of Civil Procedure.” GoPro at 14. Although we alerted the parties in our Decision that “we discern no evidence on this record that service failed to comply with Rule 4 of the Federal Rules of Civil Procedure,” Petitioner offers no evidence or argument in its Request that prompts us to reconsider that finding. See Dec. 6.” slip op. at 3
- Other 314aOther
“In this case, the Chief Judge has considered Petitioner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 2
Discretionary denialPatents in suitUS 7,418,731 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01361 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the government was Microsoft's privy and the petitions were time-barred under § 315(b); it also independently denied review under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring).” slip op. at 6
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring). In Taylor v. Sturgell, 553 U.S. 880 (2008), the Supreme Court identified a non-exhaustive list of six considerations under which nonparty preclusion would be justified: (1) an agreement between the parties to be bound; (2) pre-existing substantive legal relationships between the parties; (3) adequate representation by the named party; (4) the nonparty’s control of the prior litigation; (5) where the nonparty acts as a proxy for the named party to re-litigate the same issues; and (6) where special statutory schemes foreclose successive litigation by the nonparty (e.g., bankruptcy or probate). WesternGeco, 889 F.3d. at 1319−20 (citing Taylor, 553 U.S. at 894–95). The presence of one of these is sufficient to establish privity. See id.” slip op. at 6
- Other 314aInstitution denied discretionary otherInstitution denied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4. Also, Patent Owner asserts that the United States is a real party in interest and privy in this proceeding. The information to be sealed is the basis for Patent Owner’s argument that Petitioner is time-barred under 35 U.S.C. § 315(b). Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. Because Patent Owner’s argument and Petitioner’s rebuttal depend on the information to be sealed, the parties have adequately shown that there exists a genuine need to rely on that information. See Argentum, Paper 27 at 4. For these reasons, we determine that good cause exists for sealing part of Petitioner’s Reply, part of Patent Owner’s Sur-Reply, and the concurrently filed exhibits (Exs. 1027, 2006). Thus, we grant the Motions to Seal in each case.” slip op. at 14
Discretionary denialPatents in suitUS 9,618,752 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01360 · APJ Jason M Repko · IPR · Institution
The Board denied the petitions because the government was Microsoft’s privy, making the petitions time-barred under § 315(b); it also exercised § 314(a) discretion to deny review.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“pre-existing substantive legal relationships between the parties” Under the second Taylor factor, the evidence shows a “pre-existing substantive legal relationship between” the government and Petitioner. “Qualifying relationships include, but are not limited to, preceding and succeeding owners of property, bailee and bailor, and assignee and assignor.” See Taylor, 553 U.S. at 894. “A common character of these relationships is that the two parties share a high degree of commonality of proprietary or financial interest.” AIT, 897 F.3d at 1352 (Reyna, J., concurring). The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. slip op. at 7
- PTAB / AIA Trials › §315(b) time barDenied
“C. SECTION 315(B) BARS INSTITUTION We have found that the government, a nonparty to the instant proceedings, is a privy of Petitioner. Under 35 U.S.C. § 315(b), “[a]n 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 government was served with a complaint alleging infringement of the patents-at-issue in 2017. The instant Petitions were filed in July 2019, more than 1 year from the service of the complaint on the government. Accordingly, inter partes review may not be instituted under § 315(b).” slip op. at 13
- Other 314aInstitution denied discretionary otherDenied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4.” slip op. at 14
Discretionary denialPatents in suitUS 9,229,230
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.