PTAB Adds to RPI/314(a) Precedent

Designation of Additional Cases Clarify Basis for RPI Disputes

Last Friday the Patent Trial & Appeal Board (PTAB) added to its list of precedential cases. The new precedent clarifies when RPI disputes will be considered by the Board, what factors will be considered for petitions lodged by member organizations, and whether joinder can be leveraged by a failed petitioner.

RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential)(here)

This decision on remand from the Federal Circuit holds that the petitioner was time-barred because the petitioner’s client was an unnamed real party-in-interest that had been served with an infringement complaint more than one year before filing the petition. Given the highly factual nature of this case, the precedential value of this case lies in the application of 314(a) to such filings as “follow-on” petitions, and that the factors outlined by the CAFC in its remand decision may be applied to similar circumstances where member organizations are involved (assuming a time bar exists to trigger the assessment in accordance with SharkNinja, below)

SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential)(here)

This decision instituting inter partes review holds that, while petitioners must identify any real parties-in-interest, and must do so in good faith, the Board does not need to resolve a dispute regarding a possible real party-in-interest if it would not impact the Board’s institution decision (i.e., there is no time bar involving the disputed, unnamed party).

Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020) (precedential)(here)

This decision denying institution and the petitioner’s joinder motion applies the factors set forth in General Plastic to a copycat petition that the petitioner filed against the challenged patent after its first petition was denied institution.  That is, 314(a) will prevent joinder where the joining party is utilizing joinder as a mechanism to present a “follow-on” petition as defined by General Plastic.

Scott A. McKeown is an author of the Patents Post Grant