Patent Trial and Appeal Board’s Decision on Inter Partes Review (IPR) Petition
On November 27th, the Patent Trial and Appeal Board (PTAB) made a significant decision, initiating an Inter Partes Review (IPR) as requested by Unified Patent. The IPR aims to challenge the validity of patent claims previously asserted in district court against one of Unified’s subscribers. Despite objections regarding the identification of real parties in interest (RPIs), the PTAB proceeded with the IPR.
Unified Patents and District Court Cases
Unified Patents, known for its assertive stance, doesn’t publicly disclose its member list. Interestingly, a district court case has been filed against Google, a company subscribing to Unified. The PTAB seems to overlook the relationship between Unified and its subscribers, assuming that Unified’s customers are not genuine parties in interest.
The Act of Challenging Patents
The PTAB’s belief that Unified’s customers are not actual parties in interest raises questions about the purpose and nature of the services provided by Unified. Despite recent Federal Circuit recognition that those benefiting from another’s actions are genuine parties in interest, the PTAB continues to maintain its stance.
The Patent at Issue
The IPR centers around U.S. Patent No. 8934535, titled “Systems and Techniques for Sound and Video Data Storage and Distribution.” Issued in January 2015, it addresses data compression and decompression methods. The PTAB notes the patent’s involvement in multiple district court processes.
Identification of Genuine Parties in Interest
Under 35 U.S.C. § 312(a)(2), an IPR petition must identify all genuine parties in interest. Unified Patent asserted itself as the sole genuine party, disregarding the fact that Google, one of its customers, pays Unified for challenging patents and would benefit from any patent cancellation.
RPX at the Federal Circuit
Comparisons to a recent Federal Circuit case, Applications in Web Time v. RPX Corporation (AIT), suggest potential flaws in the PTAB’s approach. While Unified argues against a “benefits-plus-relationship” standard, the AIT decision emphasizes focusing on benefits when determining genuine party in interest representation.
PTAB’s Institution Decision
The PTAB, however, sided with Unified Patent, stating that it accurately identified itself as the sole genuine party. The PTAB dismissed Realtime Mobile Streaming LLC’s interpretation of AIT and found no evidence of a relationship similar to the RPX and Salesforce case.
Despite the PTAB’s decision, the case presents an interesting appeal opportunity, particularly for Property Attorneys. The Federal Circuit’s historical inconsistency with its own precedent adds complexity to the legal landscape, making this case one to watch.