Fifth 315(b) bar decision post WiFi One – CAFC Rules on RPI Identification Burden Framework

The Federal Circuit issued the fifth precedential decision involving the one year time-bar 35 U.S.C. § 315(b) since the issue became reviewable earlier this year in the wake of Wi-Fi One.

In Worlds Inc. v. Bungie, Inc. (Fed. Cir. 2018), the Court analyzed the PTAB’s burden-shifting framework for analyzing whether an unnamed party is a real party in interest for purposes of triggering the time-bar of § 315(b) as set forth in Atlantic Gas Light. The Court held that: “We largely concur with the burden framework used in Atlanta Gas Light. As explained below, we agree that the IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier. We also agree that an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner. And although we disagree with treating this initial acceptance as a ‘rebuttable presumption’ that formally shifts a burden of production to the patent owner, we agree that a patent owner must produce some evidence to support its argument that a particular third party should be named a real party in interest.”

On the issue of whether there were any unnamed, barred real parties in interest, the Court vacated and remanded because the patent owner World’s had produced “some evidence” tending to show that there was a dispute over the real party in interest status of Activision, who had been served with a complaint more than one year prior. Specifically, the Court held: “Under the framework we have outlined above, the Board was entitled to rely, at least initially, on Bungie’s list of all real parties in interest, which raised no time-bar issues under the facts presented. Here, however, Worlds presented evidence sufficient to put Bungie’s identification of itself as the sole real party in interest into dispute. Thus, in this circumstance, the Board could no longer merely rely upon Bungie’s initial identification of the real parties in interest. Instead, the Board was required to make any factual determinations necessary to evaluate whether Bungie had satisfied its burden to demonstrate that its petition was not time-barred based on the complaints served upon Activision, the alleged real party in interest.”

This article appeared in the September 2018 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.