Trials@uspto.gov
`571.272.7822
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` Paper No. 124
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` Filed: September 4, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`RPX CORPORATION,
`Petitioner,
`v.
`APPLICATIONS IN INTERNET TIME, LLC,
`Patent Owner.
`____________
`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751 (Patent 7,356,482 B2)
`IPR2015-01752 (Patent 7,356,482 B2)
`____________
`
`
`
`
`Before SCOTT R. BOALICK, Chief Administrative Patent Judge, JACQUELINE
`WRIGHT BONILLA, Deputy Chief Administrative Patent Judge, and SCOTT C.
`WEIDENFELLER, Vice Chief Administrative Patent Judge.
`
`
`PER CURIAM.
`
`
`
`PANEL CHANGE ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`

`

`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`
`The above-captioned IPRs are on remand to the Board from the United
`States Court of Appeals for the Federal Circuit. See Applications in Internet Time
`LLC v. RPX Corp., 897 F.3d 1336, 1358 (Fed. Cir. 2018) (vacating and remanding
`the Board’s final written decisions because the Board “neither considered the full
`range of relationships under [35 U.S.C.] § 315(b) and the common law” that may
`make a certain party a real part in interest “nor properly applied the principles
`articulated in the Trial Practice Guide”).
`These IPRs raise important issues, including the determination of a “real
`party in interest” (“RPI”) within the meaning of the petition requirement of 35
`U.S.C. § 312(a)(2) and the 35 U.S.C. § 315(b) one-year time bar. In addition, the
`Federal Circuit remanded the above-captioned cases to the Board before the
`Supreme Court issued its decision in Thryv, Inc. v. Click-To-Call Techs., LP, 140
`S. Ct. 1367, 1370 (2020), which held that § 314(d) prohibits judicial review of
`Board decisions regarding § 315(b) time bar determinations, and before the Federal
`Circuit issued its decision in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958
`F.3d 1378, 1386 (Fed. Cir. 2020), which held that § 314(d)’s prohibition of judicial
`review extends to RPI determinations.
`
`In addition, these IPRs present unique scheduling and timing issues. The
`Federal Circuit remanded these IPRs on July 9, 2018, and the mandate issued on
`October 30, 2018. After receiving the mandate from the Federal Circuit, the Board
`authorized further discovery and set forth a briefing schedule on remand for the
`parties to address “whether Salesforce.com, Inc. must be identified as a real party-
`in-interest or privy” of Petitioner RPX Corporation. IPR2015-01750, Paper 87 at
`2. On April 25, 2019, approximately six months after the mandate issued, the
`Board held an oral hearing on the issue of whether Salesforce.com is a real party-
`in-interest or privy. About two months later, on June 24, 2019, the Supreme Court
`
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`2
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`

`

`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`granted certiorari in Thryv, which implicated the reviewability of the issue on
`remand. On April 20, 2020, the Supreme Court issued its decision in Thryv,
`prohibiting further judicial review of the issue in these IPRs. On April 30, 2020,
`Petitioner filed a motion to stay these IPRs pending a motion it filed with the
`Federal Circuit to recall the mandate. On May 29, 2020, the Federal Circuit denied
`the motion to recall the mandate, and on August 24, 2020, the Board issued an
`order dismissing the motion to stay by Petitioner. In the meantime, on August 3,
`2020, Patent Owner filed a petition for a writ of mandamus to compel the Board to
`issue a decision on remand in these IPRs. On August 7, 2020, Patent Owner
`withdrew the writ of mandamus in view of an agreement with the Office to issue a
`decision on remand by September 9, 2020.
`
`Given the complexities of the proceedings, under SOP 1, the parties are
`notified that the panel has changed in the above-referenced proceedings to a panel
`of the most senior administrative patent judges available. See PTAB Standard
`Operating Procedure 1, Rev. 15. Review of the issues by this senior panel will
`help to best ensure compliance with relevant precedent and the Federal Circuit’s
`mandate under the unique timing and scheduling considerations in these cases on
`issues that also will have applicability in future cases. The pending issues are of
`particular importance in view of recent precedent. Thryv, 140 S. Ct. at 1370; ESIP,
`958 F.3d at 1386. The issue on remand is fully briefed and, therefore, no further
`briefing is necessary. See IPR2015-01750, Papers 98, 100, 101.
`
`
`Accordingly, based on the foregoing and pursuant to SOP 1, it is:
`ORDERED that the panel in these proceedings is changed to the panel
`identified in the case caption.
`
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`3
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`

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`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`For PETITIONER
`
`Richard Giunta
`Elisabeth Hunt
`Randy Pritzker
`Michael Rader
`WOLF, GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`EHunt-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`MRader-PTAB@wolfgreenfield.com
`
`For PATENT OWNER:
`
`Steven Sereboff
`Jonathan Pearce
`SOCAL IP LAW GROUP LLP
`ssereboff@socalip.com
`jpearce@socalip.com
`
`
`
`4
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`