Applications in Internet Time, LLC v. RPX Corp.
897 F.3d 1336
| Fed. Cir. | 2018Background
- AIT sued Salesforce in Nov 2013 for infringement of two patents ('482 and '111); Salesforce was served Nov 20, 2013.
- Salesforce filed CBM petitions in Aug 2014 (denied Feb 2015); more than one year after service, RPX filed three IPR petitions Aug 17, 2015.
- RPX identified itself as the sole real party-in-interest; RPX is a for‑profit patent‑risk firm and Salesforce is a paying client.
- AIT requested discovery alleging RPX acted as a proxy for Salesforce (and thus RPX should be time‑barred under 35 U.S.C. § 315(b)); RPX produced marketing materials, a Best Practices Guide, a declaration, and evidence of payments from Salesforce.
- The PTAB instituted the IPRs, rejecting AIT’s RPI/privity arguments and later issued final written decisions holding claims unpatentable; AIT appealed the § 315(b) time‑bar and related issues.
- The Federal Circuit vacated and remanded: the Board applied an unduly narrow RPI test, failed to consider the full record and common‑law principles (including privity/proxy theories), and misapplied the Trial Practice Guide and APA standards.
Issues
| Issue | Plaintiff's Argument (AIT) | Defendant's Argument (RPX) | Held |
|---|---|---|---|
| Whether Salesforce is a "real party in interest" under § 315(b) | RPX acted as a proxy/agent for Salesforce; Salesforce therefore is an RPI and the IPRs are time‑barred | RPX independently decided to file IPRs, followed internal "best practices," had no contractual obligation or communications about filing | Court: Board used too narrow RPI test, must apply expansive common‑law meaning; vacated and remanded for full record analysis |
| Whether the Board considered the entirety of the evidentiary record (substantial evidence) | Board ignored evidence (business model, payments, communications, Best Practices timing) that supports RPI/privity | Board relied on RPX declaration and counseled that RPX had independent interests | Court: Board failed to weigh record as whole and inadequately explained rejection of AIT's theories; APA review fails; vacated |
| Whether Board conflated § 312(a)(2) (pleading/identification of RPIs) with § 315(b) (time‑bar/privity) | § 315(b) is a jurisdictional/gating limit distinct from § 312; Board improperly framed the dispute as an identification issue | Board treated the matter principally as whether RPIs were identified | Court: § 315(b) distinct; Board erred by not conducting a proper § 315(b)/privity analysis; remand required |
| Whether privity (privy) or other common‑law doctrines (proxy, apparent authority, estoppel) support time‑bar | AIT argued Taylor categories (including relitigating through a proxy and substantive legal relationships) support privity between Salesforce and RPX | RPX denied contractual obligation or control and emphasized independent motives | Court (concurring opinion): Board also failed to address privity adequately; remand to analyze Taylor factors and permit discovery as appropriate |
Key Cases Cited
- Wi‑Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (time‑bar determinations under § 315(b) are appealable and common‑law principles govern RPI/privity)
- WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308 (Fed. Cir. 2018) (applies common‑law privity principles to § 315(b))
- Taylor v. Sturgell, 553 U.S. 880 (2008) (framework of nonparty preclusion/privity categories, including proxy/relitigation)
- Sprint Commc'ns Co. v. APCC Servs., Inc., 554 U.S. 269 (2008) (historical/common‑law development of the "real party in interest" concept)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (context on IPRs as agency‑administered proceedings)
- United States v. Mead, 533 U.S. 218 (2001) (deference principles for agency statutory interpretation)