American Patents patent determined to be likely invalid; Unified determined to be sole RPI

On August 6, 2019, the Patent Trial and Appeal Board (PTAB) issued a public order instituting trial on all challenged claims in an IPR filed by Unified against U.S. Patent 7,373,655 owned by American Patents, LLC, an NPE. The ’655 patent, directed to a method for control of access to network resources, has been asserted in multiple district court cases against such companies as TCL, LG, Samsung, Sharp, Acer, Huawei and others.

The Board’s decision included a thorough analysis related to real party-in-interest (RPI) and rejected Patent Owner's argument that a Unified member should have been named as an RPI in this proceeding. For example, the Board held:

Petitioner’s evidence indicates that [the member] . . . had no involvement with or knowledge of the Petition before it was filed, did not and will not fund the proceeding, and cannot exercise control over the proceeding. [. . .] Furthermore, [the member] is a general beneficiary of the Petition because it has been accused of infringing the ’655 patent, but we are sufficiently persuaded that [the member] does not derive a specific benefit from the Petition. Finally, we are not persuaded at this stage by Patent Owner’s argument that Petitioner’s business model is designed to improperly circumvent RPI case law. On this record, we are sufficiently persuaded that the Petition was not filed at [the member’s] behest and that Petitioner cannot be said to be representing [the member’s] interest.

IPR2019-00482, Paper 36 at 20 (PTAB Aug. 6, 2019) (citations omitted). This is the latest in a series of decisions that have consistently found Unified to be the sole RPI.

Unified is represented by Haynes and Boone in this proceeding. View American Patent’s district court litigation here. To read the decision and view the entire case proceeding, see Unified’s Portal.