U.S. Patent and Trademark Office Patent Trial and Appeal Board Announced Three New Precedential Decisions on RPI And Joinder

The U.S. Patent and Trademark Office Patent Trial and Appeal Board has elevated three panel decisions to precedential this month.

RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential)

RPX focuses on real party in interest and the 35 U.S.C. § 315(b) time bar. Here, the Chief, Deputy Chief, and Vice Chief Judge of the Board issued the decision. In terminating and IPR, the Board noted that the Federal Circuit remanded this case after holding the petitioner was time-barred because the petitioner’s client was an unnamed real party-in-interest that had been served with an infringement complaint more than one year before filing the petition.

SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential)

SharkNinja also focuses on real party in interest. Here the Board instituted and held that it does not need to resolve real party in interest if that decision does not impact the Board’s institution decision. The Board held the parties need to provide the real party(ies) in interest in good faith.

Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020) (precedential)

This case focuses on joinder petition. The USPTO stated “This decision denying institution and the petitioner joinder motion applies the factors set forth in General Plastic to a copycat petition that the petitioner filed against the challenged patent after its first petition was denied institution.”

This article appeared in the December 2020 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.