• RPX Corporation v. Applications In Internet Time, LLCRehearing denied
  PTAB · Dec 4, 2020 · IPR2015-01752 · APJ Scott R Boalick · IPR · Rehearing

  The Board denied RPX’s rehearing request, leaving in place the determination that 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 / privityRpi dispute resolved for patent ownerDecided 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 barDenied

    “In the Final Decision on Remand, we determined that Salesforce was a real party in interest (an “RPI”) in these proceedings, and the Petitions, therefore, were time-barred under 35 U.S.C. § 315(b). Dec. 35, 40. Based on that determination, we terminated the previously instituted inter partes reviews. Id. at 40. On October 9, 2020, RPX Corporation (“Petitioner”) filed a Request for Rehearing of the Board’s Final Decision on Remand. Paper 134 (“Req. Reh’g.”). Pursuant to our authorization, Patent Owner filed a Response (Paper 135, “PO Resp.”), and Petitioner filed a Reply (Paper 136, “Pet. Reply”). For the reasons discussed below, we deny Petitioner’s Request for Rehearing.” slip op. at 2

  • 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)).” slip op. at 4

  Discretionary denial
  Patents in suitUS 7,356,482
• RPX Corporation v. Applications In Internet Time, LLCRehearing denied
  PTAB · Dec 4, 2020 · IPR2015-01751 · APJ Scott R Boalick · IPR · Rehearing

  The Board denied RPX’s rehearing request, leaving in place termination of the instituted IPRs 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 › §315(b) time barDecided for patent owner

    “In the Final Decision on Remand, we determined that Salesforce was a real party in interest (an “RPI”) in these proceedings, and the Petitions, therefore, were time-barred under 35 U.S.C. § 315(b). Dec. 35, 40. Based on that determination, we terminated the previously instituted inter partes reviews. Id. at 40. On October 9, 2020, RPX Corporation (“Petitioner”) filed a Request for Rehearing of the Board’s Final Decision on Remand. Paper 134 (“Req. Reh’g.”). Pursuant to our authorization, Patent Owner filed a Response (Paper 135, “PO Resp.”), and Petitioner filed a Reply (Paper 136, “Pet. Reply”). For the reasons discussed below, we deny Petitioner’s Request for Rehearing.” slip op. at 2

  • 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 › 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 denial
  Patents in suitUS 7,356,482
• RPX Corporation v. Applications In Internet Time, LLCRehearing denied
  PTAB · 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 denial
  Patents in suitUS 8,484,111
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Regents Of The University Of MinnesotaRehearing denied
  PTAB · 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 denial
  Patents in suitUS 8,774,309
• Paypal, Inc. / Upwork Global Inc. et al. v. Personalweb Technologies, LLCRehearing denied
  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 denial
  Patents in suitUS 7,802,310
• Paypal, Inc. / Upwork Global Inc. et al. v. Personalweb Technologies, LLCRehearing denied
  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 denial
  Patents in suitUS 6,928,442
• Paypal, Inc. / Upwork Global Inc. et al. v. Personal Web Technologies, LLCRehearing denied
  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 denial
  Patents in suitUS 7,945,544
• Juniper Networks, Inc. v. Finjan, Inc.Rehearing denied
  PTAB · 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 denial
  Patents in suitUS 7,418,731
• Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Rehearing denied
  PTAB · Sep 17, 2019 · IPR2018-01627 · APJ Scott E Bain · IPR · Rehearing

  The Board denied Avigilon’s rehearing request, holding that § 315(a)(1) barred institution because Avigilon had filed a declaratory judgment action challenging the patent’s validity.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION A request for rehearing must “identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2

  • PTAB / AIA Trials › §315(b) time barDenied

    “In our Decision, we concluded that 35 U.S.C. § 315(a)(1) barred institution of an inter partes review because Avigilon previously filed a declaratory judgment action challenging the validity of claims in the ’630 patent, notwithstanding Avigilon’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 6–11. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Clickto-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 8–10.” slip op. at 2

  Discretionary denial
  Patents in suitUS 9,191,630
• Ruiz Food Products, Inc. v. Macropoint LLCRehearing denied
  PTAB · May 6, 2019 · IPR2017-02018 · APJ Nathan A Engels · IPR · Rehearing

  The Board denied the rehearing request, leaving in place dismissal and termination because the petitions were untimely under § 315(a)(1).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “background legal principle (id. at 2–7), the Decision considers the principle but follows the Federal Circuit’s guidance that the principle is not “firmly established and unequivocal” and therefore cannot justify applying an exception to the unambiguous language of § 315(a)(1). Decision 9–10 (citing Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1335 (Fed. Cir. 2018) (explaining that a “background legal principle” must be both “firmly established and unequivocal before it can justify ignoring the plain text of the statute”; holding that the principle that “a dismissal without prejudice leaves the parties as if the underlying complaint had never been filed” is “anything but unequivocal”)).” slip op. at 2

  • PTAB / AIA Trials › §315(b) time barDecided for patent owner

    “(Paper 18) and terminating the proceedings, the Board determined that the Petitions were untimely under 35 U.S.C. § 315(a)(1) and that the Board therefore lacked jurisdiction over the proceedings. More specifically, the Board determined that a complaint for declaratory judgment filed before the Petitions triggered the time bar of § 315(a)(1) even though the complaint was dismissed without prejudice after its filing. Decision at 2–3.” slip op. at 2

  Discretionary denial
  Patents in suitUS 9,429,659

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