This post was updated September 18, 2019.
For the past six and a half years, across more than 170 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.
Institution decision holding that the general benefit a member may receive from Unified’s petition does not make the member an RPI. In addition, evidence that a company is a corporate affiliate of a Unified member is not by itself sufficient to place RPI in dispute.
Institution decision holding that Unified is the sole RPI and that the mere fact that a member asserted invalidity using the same prior art in district court after Unified filed its petition is not enough, without more, to show a member is an RPI.
Final decision holding that Unified was the sole RPI and that a member’s decision to file its own petition further supports the conclusion that Unified was not acting under the control or direction of the member.
Final decision holding that Unified properly identified all RPIs and that a member “is not an unnamed RPI [. . .] based on any of the following: its membership with Unified; the alleged control over this IPR; or the relationship between [the member] and Unified and the alleged benefit of the IPR to [the member].”
Final decision holding that Unified was the sole RPI and a member that may benefit from Unified filing the IPR is not an RPI without showing some other evidence of a specific interest in the particular proceeding. Unified’s business model alone was not enough for a member to be found as an RPI.
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.”
Final decision finding that Unified’s status as the sole RPI is not in question because “Petitioner’s members join particular zones [and] Petitioner files IPRs on behalf of 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.
Institution decision holding that the general benefit members received from Unified’s common practice of filing IPRs in relevant technology areas was insufficient to demonstrate a specific benefit as discussed in AIT even when combined with evidence that Patent Owner engaged in licensing discussions with the alleged RPIs prior to Unified’s petition.
Institution decision holding that evidence consisting solely of generic statements from Unified’s web page that generally describe its business, but did not refer to any particular member was insufficient to demonstrate that the petition failed to name all RPIs.
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.”).
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.
Institution decision finding 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.
Institution decision finding that RPI arguments not raising specific evidence of communications or direct funding to challenge any specific patent failed; a “mere possibility” of communications related to the selection of patents did not suffice.
Institution decision holding that Unified’s members were not RPIs where there was no funding or control evidence relating to a specific IPR, even where Unified only filed IPRs against member-litigated patents. Distinguished from the adverse institution decisions in RPX . v. VirnetX, IPR2014-00171, -00172, -00173, -00174, -00175, -00176, -00177 (PTAB June 5, 2014)
Institution decision distinguished Unified from the In re Guan “Trollbusters” inter partes reexam decision cited in the PTAB Trial Practice Guide because Unified members did not “[pick] the patents to be challenged and [provide] funding for the particular proceedings[.]”