For the past six and a half years, across more than 150 inter partes reviews, Unified Patents Inc. has won every real party-in-interest (RPI) challenge---both at institution and on final written decision.
Unified’s status as the sole RPI was challenged in its first IPR where the Board held that Unified was the sole RPI. Unified Patents Inc. v. Clouding IP, LLC, IPR2013-00586, Paper 9 (Mar. 21, 2014) (members were not found to be RPIs, where there was no evidence of funding or control of the particular IPR; challenged claims were later cancelled in a Final Written Decision issued April 26, 2015). As catalogued below, Unified overcame every such challenge in the proceeding years. As a result, many times Unified’s RPI status was no longer being challenged.
But in 2018, the Federal Circuit had their first opportunity to review the Board’s developing RPI jurisprudence in a case involving a different membership organization. That opinion endorsed the Board’s long standing RPI test set forth in the Trial Practice Guide, but outlined facts particular to that situation (including a potential time-bar) and characteristics of that different membership organization that merited further scrutiny on remand. See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (July 9, 2018) (“AIT”).
The AIT decision led to a resurgence of challenges to Unified’s RPI status. In every ruling after AIT, Unified was found to be the sole RPI. As catalogued below, Unified has been distinguished from the facts of AIT and the practices of the organization in question. The PTAB has thoroughly reviewed this issue in numerous cases when confirming that Unified was the sole RPI.
Post-AIT Decisions
Final decision holding that Unified’s IPR was not controlled, funded, nor filed at the behest of one of its members. Found that membership fees are used to fund a variety of Unified’s deterrence activities (“Petitioner is not solely an inter partes review-filing entity”) and distinguishing the factors at issue in the AIT decision. “[W]e do not have evidence that Petitioner is representing any particular interest of [a particular member] here. Rather, the evidence shows Petitioner is representing the general interest that all subscribers to Petitioner’s have in mitigating litigation risk from patents in those zones.”
Institution decision holding that Unified properly identified itself as the sole RPI considering that neither no members had control of, provided funding or direction to, or received a specific benefit (e.g., to purposefully circumvent the one year time-bar) from the filing of the petition.
Unified Patents Inc. v. Barkan Wireless IP Holdings, LP, IPR2018-01186, Paper 27 at 15-16 (Jan. 8, 2019).
Institution decision rejecting Patent Owner’s argument that all members of Unified’s Content Zone are RPIs, explaining that “there is no evidence that any of Petitioner’s members controlled, directed, or directly financed this proceeding.”
Unified Patents Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883, Paper 36 at 16-17 (Nov. 27, 2018) (further noting that there was 1) no communication between Unified and any member regarding the petition or underlying litigation involving the patent; 2) no corporate relationships between Unified and members other than the membership agreement; 3) no evidence of a “very significant payment” shortly before Unified filed its IPR; and 4) no evidence that any member desired review of the patent but was time-barred from doing so.).
In a precedential decision, the Board has further cited Realtime Adaptive to prohibit overextending AIT to situations that include a general benefit and a relationship with the Petitioner. Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 10 (PTAB Jan. 24, 2019) (precedential) (citing Unified Patents, Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883, Paper 36 at 14–15 (PTAB Oct. 11, 2018)).
Final decision holding that “the evidence shows that Petitioner makes all decisions regarding any inter partes review proceeding, including which patents to challenge, without input from its members, and that Petitioner alone bears all costs of any such proceeding.”
Unified Patents Inc. v. Plectrum LLC, IPR2017-01430, Paper 30 at 9-10 (Nov. 13, 2018); id., Paper 8 (Nov. 14, 2017) (institution decision holding that “[t]he mere fact that members provide payment to Petitioner for a subscription to Petitioner’s services alone is insufficient to show that these members are funding this particular inter partes review.”).
Pre-AIT Decisions
Institution decision holding that Unified’s revenue coming from annual membership subscription fees does not make members an RPI even if timing of some of those funds was used to argue that the funds could have been used to file the IPR. “The evidence does not show an obligation on Unified’s part to file inter partes review proceedings on behalf of any member in return for payment, nor does it show that Unified’s members have any control over when and how Unified spends the revenue received from its members.”
Final decision holding that, in view of Petitioner’s identification of itself as the sole RPI, shifted the burden to the patent owner failed to produce sufficient evidence tending to place the RPI issue in dispute. Patent owner produced no evidence and thus never shifted the burden.
