Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 84
`Entered: November 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RPX CORPORATION,
`Petitioner,
`v.
`APPLICATIONS IN INTERNET TIME, LLC,
`Patent Owner.
`
`Cases IPR2015-01750, IPR2015-01751, IPR2015-01752
`Patents 7,356,482 B2 and 8,484,111 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, MITCHELL G. WEATHERLY, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`I. BACKGROUND
`A conference call was conducted on November 16, 2018, to discuss
`the conduct of the proceeding on remand from the decision in Applications
`in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018)
`(“RPX”). Judges Pettigrew, Weatherly, and Chagnon presided. Mr. Giunta
`represented Petitioner and Mr. Sereboff represented Patent Owner during the
`
`

`

`IPR2015-01750, IPR2015-01751, IPR2015-01752
`Patents 7,356,482 B2 and 8,484,111 B2
`call. Before the conference call and at the request of the panel, the parties
`also submitted an e-mail on November 15, detailing points of agreement and
`disagreement regarding procedures for remand.
`The e-mail reveals that the parties disagree on two main issues:
`(1) the scope of the factual and legal issues to be addressed on remand, and
`(2) the scope of discovery. For example, Petitioner contends that the panel
`need only resolve whether the Petition is barred under 35 U.S.C. § 315(b)
`because Salesforce.com, Inc. (“Salesforce”) is a real party-in-interest or a
`privy of Petitioner. Petitioner volunteers to produce in discovery all
`evidence relevant to these issues before it files an opening brief, which
`would be followed by an opposition from Patent Owner and a reply by
`Petitioner.
`Patent Owner contends that the panel must resolve whether Petitioner
`has failed to name not only Salesforce, but also any other entity that might
`be a real party-in-interest or privy. During the call, however, Patent Owner
`confirmed that it has no information indicating that the identification of any
`entity other than Salesforce might result in the Petition being barred under
`§ 315.
`Patent Owner also contends that, because the record is already
`complete on the issue of whether Salesforce is a real party-in-interest,
`briefing on that issue should proceed without new evidence. If, and only if,
`the panel decides on the current record that Salesforce need not be named as
`a real party-in-interest or privy, Patent Owner contends that the panel should
`permit additional discovery relating to Petitioner’s duty to name Salesforce
`or other entities as a real party-in-interest or privy.
`
`2
`
`

`

`IPR2015-01750, IPR2015-01751, IPR2015-01752
`Patents 7,356,482 B2 and 8,484,111 B2
`II. ANALYSIS
`At trial, Patent Owner focused solely upon Salesforce as an allegedly
`missing real party-in-interest, with its entire argument stating:
`In its decision instituting [this trial], the Board stated that
`there was insufficient evidence to find that the real party in
`interest is Salesforce.com, Inc. Patent Owner disagrees with the
`Board’s view of the law and the facts, and in particular believes
`that the Board misconstrued the law. As explained previously,
`the AIA was intended to prevent defendants from getting “a
`second bite at the apple.” Yet, the Board is doing just that by
`allowing Petitioner to act indirectly for Salesforce. In its
`decision, the Board set an improperly high burden of proof for
`the patent owner, and also improperly shifted the burden of proof
`to the patent owner. As explained in Patent Owner’s Preliminary
`Response, Salesforce is the real party in interest and Petitioner is
`acting as its proxy. Because Salesforce is time limited, so is
`Petitioner and patentability should be confirmed on this basis.
`PO Resp. 8. Even if we were to consider Patent Owner’s arguments made in
`its Preliminary Response, Patent Owner focused its arguments in that Paper
`solely upon its contention that Salesforce is a real party-in-interest1 in this
`proceeding. Prelim. Resp. 2–20.
`The Federal Circuit similarly focused its analysis on whether
`Salesforce should have been named as a real party-in-interest. See RPX, 897
`F.3d at 1353–56 (analyzing only whether Salesforce should be identified as
`real party-in-interest). The Federal Circuit vacated the Final Written
`Decisions in these proceedings because:
`
`
`1 Patent Owner contended that “[p]rivity of RPX and Salesforce goes to the
`highest level” without specifically alleging that Petitioner should have
`identified Salesforce as a privy. Prelim. Resp. 1. For the first time on
`appeal, Patent Owner “raised the possibility that RPX might be time-barred
`under § 315(b) as a ‘privy’ of Salesforce.” RPX, 897 F.3d at 1343.
`
`3
`
`

`

`IPR2015-01750, IPR2015-01751, IPR2015-01752
`Patents 7,356,482 B2 and 8,484,111 B2
`The Board’s decisions in this case neither considered the full
`range of relationships under § 315(b) and the common law that
`could make Salesforce a real party in interest with respect to this
`IPR nor properly applied the principles articulated in the Trial
`Practice Guide upon which it purported to rely.
`Id. at 1358. The Federal Circuit arguably expanded the scope of the inquiry
`on remand by indicating that: “In its discretion, the Board may authorize
`additional discovery relevant to whether Salesforce is either a real party in
`interest or a privy of RPX for purposes of § 315(b).” Id. The concurrence
`identified the panel’s failure to address fully the question of whether the
`Petitions were time barred under the privity provision of § 315(b) as an
`independent basis for vacatur and remand. Id. at 1358 (Reyna, J.
`concurring).
`To ensure that we have a fulsome record upon which to determine
`whether Salesforce is a real party-in-interest or privy, we will authorize
`discovery by Patent Owner on those topics. However, we discern no basis
`for expanding the scope of the inquiry to the question of whether Petitioner
`should identify entities other than Salesforce as a real party-in-interest or
`privy.
`
`The inquiry on remand thus relates to whether Salesforce must be
`identified as a real party-in-interest or privy. Discovery shall be limited to
`those issues and shall be completed in advance of the parties filing any
`briefing on the merits. Petitioner shall file the opening brief, followed by an
`opposition from Patent Owner, and a reply from Petitioner. Based upon our
`ruling on the scope of the remand in these proceedings, the panel instructs
`the parties to confer again to determine whether they can agree on a
`discovery plan and briefing schedule.
`
`4
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`

`

`IPR2015-01750, IPR2015-01751, IPR2015-01752
`Patents 7,356,482 B2 and 8,484,111 B2
`III. ORDER
`For the reasons given, it is:
`ORDERED that the proceeding on remand is limited to the issues of
`whether Salesforce is a real party-in-interest or a privy of Petitioner;
`FURTHER ORDERED that the parties shall confer to develop a joint
`discovery plan and briefing schedule; and
`FURTHER ORDERED that the parties shall report back to the panel
`via e-mail by no later than November 30, 2018, outlining their proposal
`regarding discovery and briefing on remand, indicating the points on which
`the parties agree and those on which they disagree.
`
`
`PETITIONER:
`
`Richard F. Guinta
`Elisabeth H. Hunt
`Randy J. Pritzker
`Michael Rader
`WOLF, GREENFIELD & SACKS, P.C.
`rguinta-ptab@wolfgreenfield.com
`ehunt@wolfgreenfield.com
`mrader-ptab@wolfgreenfield.com
`rpritzker@wolfgreenfield.com
`
`
`PATENT OWNER:
`
`Jonathan Pearce
`M. Kala Sarvaiya
`SOCAL IP LAW GROUP LLP
`jpearce@socalip.com
`ksarvaiya@socalip.com
`
`
`5
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