Case: 17-1698 Document: 95 Page: 1 Filed: 05/04/2020
`
`2017–1698, –1699, –1701
`__________________________
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`__________________________
`
`APPLICATIONS IN INTERNET TIME, LLC,
`Appellant
`
`v.
`RPX CORPORATION,
`
`__________________________
`
`Appellee
`
`Appeals from the United States Patent and Trademark Office,
`Patent Trial and Appeal Board, in IPR2015-01740, IPR2015-01751, IPR2015-01752
`__________________________
`
`MOTION TO RECALL THE MANDATE, VACATE THE COURT’S JUDGMENT,
`AND REINSTATE THE APPEAL FOR A MERITS DECISION IN LIGHT OF THE
`SUPREME COURT’S DECISION IN THRYVV.CLICK-TO-CALL
`__________________________
`
`Nathan K. Kelley
`PERKINS COIE LLP
`700 Thirteenth Street N.W., Suite 800
`Washington, D.C. 20005
`Phone:
`(202) 654–3343
`E-mail: NKelley@perkinscoie.com
`
`Dan L. Bagatell
`PERKINS COIE LLP
`3 Weatherby Road
`Hanover, New Hampshire 03755
`Phone:
`(602) 351–8250
`E-mail: DBagatell@perkinscoie.com
`
`Counsel for Appellee RPX Corporation
`
`May 4, 2020
`
`

`

`Case: 17-1698 Document: 95 Page: 2 Filed: 05/04/2020
`
`AIT
`
`IPR
`PTAB
`RPI
`RPX
`Salesforce
`
`USPTO
`
`TABLE OF ABBREVIATIONS
`
`Patent Owner/Appellant Applications in Internet Time
`LLC
`inter partes review
`Patent Trial and Appeal Board
`real party in interest
`Petitioner/Appellee RPX Corporation
`Salesforce.com, Inc., a non-party that AIT has sued for
`patent infringement
`United States Patent and Trademark Office
`
`– i –
`
`

`

`Case: 17-1698 Document: 95 Page: 3 Filed: 05/04/2020
`
`TABLE OF CONTENTS
`
`Table of Abbreviations........................................................................................ i
`Table of Authorities ..........................................................................................iii
`Introduction ....................................................................................................... 1
`Background and Procedural History................................................................... 3
`Argument ........................................................................................................... 6
`A. Appellate courts have the authority to recall a mandate and vacate a
`previous decision, and supervening decisions by the Supreme Court
`are a classic ground for doing so................................................................6
`B. This Court should exercise its authority to recall its mandate, vacate
`its opinion, and reinstate the appeal for consideration of the merits of
`the PTAB’s unpatentability determinations...............................................9
`1.
`Thryv’s emphasis on the dangers of judicial review of PTAB
`determinations that IPR petitions were timely strongly
`supports the relief RPX seeks here...................................................10
`Finality and repose are not concerns here ........................................11
`2.
`3. Granting this motion would not unfairly prejudice AIT ..................12
`4. Granting this motion will ensure fairness to RPX, which
`would be unable to appeal any adverse time-bar decision...............13
`5. Granting relief here will not open any floodgates............................14
`Conclusion ....................................................................................................... 14
`Certificate of Interest ....................................................................................... 16
`Certificate of Compliance ................................................................................ 18
`
`– ii –
`
`

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`
`TABLE OF AUTHORITIES
`
`Cases
`
`Pages
`
`Achates Reference Publishing, Inc. v. Apple Inc.,
`803 F.3d 652 (Fed. Cir. 2015) .............................................................................4
`Am. Iron & Steel Inst. v. EPA,
`560 F.2d 589 (3d Cir. 1977) ................................................................................8
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) ...................................................................3, 4, 5
`Applications in Internet Time, LLC v. Salesforce.com, Inc.,
`No. 3:13-cv-00628, Dkt. 116 (D. Nev. Jan. 7, 2020) ........................................13
`Bergy, In re,
`596 F.2d 952 (CCPA 1979) .................................................................................8
`Dow Chem. Corp. v. Nova Chems. Corp. (Can.),
`803 F.3d 620 (Fed. Cir. 2015) ...........................................................................13
`IAL Aircraft Holding, Inc. v. FAA,
`216 F.3d 1304 (11th Cir. 2000) ...........................................................................9
`Judkins v. Beech Aircraft Corp.,
`745 F.2d 1330 (11th Cir. 1984) ...........................................................................9
`Mars Inc. v. Coin Acceptors, Inc.,
`557 F.3d 1377 (Fed. Cir. 2009) ...........................................................................7
`Microsoft Corp. v. Science Applications Int’l Corp.,
`No. 20-1464, Dkt. 23 (Apr. 16, 2020) ...............................................................12
`Power Integrations, Inc. v. Semiconductor Components Indus., LLC,
`No. 18-1602, Dkt. 65 (Feb. 28, 2019) .................................................................7
`Return Mail, Inc. v. United States Postal Serv.,
`No. 16-1502, Dkt. 75 (Jul. 15, 2019) ...................................................................7
`RPX Corp. v. Applications in Internet Time LLC,
`IPR2015-01750, Papers 87, 93, 106 (PTAB) ......................................................5
`RPX Corp. v. Applications in Internet Time LLC,
`No. 18-1075 (U.S.) ..............................................................................................6
`
`– iii –
`
`

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`Snyder, In re,
`557 F.2d 820 (CCPA 1977) .............................................................................6, 7
`United States v. Skandier,
`125 F.3d 178 (3d Cir. 1997) ................................................................................8
`United States v. Tolliver,
`116 F.3d 120 (5th Cir. 1997) ...............................................................................8
`Thryv, Inc. v. Click-to-Call Techs., LP,
`No. 18-916, slip op. (U.S. Apr. 20, 2020) ..................................................passim
`WesternGeco L.L.C. v. ION Geophysical Corp.,
`No. 13-1527, Dkt. 151 (Jul. 27, 2018) .................................................................7
`Wi-Fi One, LLC v. Broadcom Corp.,
`878 F.3d 1364 (Fed. Cir. 2018) (en banc) .........................................1, 4, 5, 6, 14
`Willis, In re,
`537 F.2d 513 (CCPA 1976) .................................................................................7
`Zipfel v. Halliburton Co.,
`861 F.2d 565 (9th Cir. 1988) ...............................................................................9
`
`Statutes
`
`Pages
`
`35 U.S.C. § 314(d) ...........................................................................................passim
`35 U.S.C. § 315(b) ...........................................................................................passim
`
`Other Authorities
`
`Pages
`
`Restatement (Second) of Judgments (1981)
`§ 13 ....................................................................................................................12
`§ 14 ....................................................................................................................12
`§ 16 ....................................................................................................................12
`
`– iv –
`
`

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`INTRODUCTION
`
`RPX respectfully requests that the Court recall its mandate to the USPTO
`
`(Dkt. 90), vacate the Court’s judgment (Dkt. 66), and reinstate this appeal for a
`
`decision on the merits of whether the PTAB properly determined that the patent
`
`claims at issue were unpatentable over the asserted prior art. RPX recognizes that
`
`recalling the mandate and vacating a previous decision are unusual steps, but this is
`
`an extraordinary situation.
`
`After the PTAB concluded that RPX’s petitions were timely and that RPX
`
`had proven the unpatentability of AIT’s claims, AIT appealed on both issues. The
`
`Court’s decision addressed one issue: AIT’s argument that RPX’s IPR petitions
`
`were time-barred under 35 U.S.C. § 315(b). RPX contended that under 35 U.S.C.
`
`§ 314(d), this Court had no authority to review the PTAB’s ruling that RPX’s
`
`petitions were timely. In Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364
`
`(2018), however, the en banc Court concluded that this Court may review time-bar
`
`determinations despite Section 314(d). The Court here followed Wi-Fi One,
`
`reviewed the PTAB’s ruling that RPX’s petitions were timely, and remanded the
`
`case for further analysis of whether Salesforce (a time-barred third party) was a
`
`real party in interest in this IPR, rendering RPX’s petitions time-barred as well.
`
`After the Court’s mandate issued, the case was remanded to the PTAB. The PTAB
`
`has conducted further proceedings on remand but has not yet issued a decision.
`
`– 1 –
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`

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`In the meantime, RPX and parties in other cases petitioned for certiorari
`
`challenging this Court’s authority to review PTAB time-bar determinations. The
`
`Supreme Court denied certiorari in this case, perhaps because of its interlocutory
`
`posture, but it granted certiorari on the same issue in Thryv, Inc. v. Click-to-Call
`
`Technologies, LP, No. 18-916. Two weeks ago, the Supreme Court held that
`
`Section 314(d) precludes all judicial review of the PTAB’s application of the
`
`Section 315(b) time-bar and accordingly vacated this Court’s judgment in that case
`
`and remanded with instructions to dismiss the appeal for lack of jurisdiction.
`
`Under Thryv, it is now clear that this Court had no authority to review the
`
`PTAB’s Section 315(b) determinations in this case and the case therefore should
`
`not have been remanded for further analysis on the time-bar issues. RPX submits
`
`that the proper remedy is for this Court to recall its mandate in this appeal, vacate
`
`its judgment, and reinstate the appeal for a decision on the merits of the PTAB’s
`
`unpatentability determinations, which the PTAB is not reconsidering. In other
`
`words, this case should be put back to where it would be if this Court had had the
`
`benefit of Supreme Court’s Thryv decision when it ruled on the original appeal.
`
`As explained below, this Court has the authority to recall a mandate in light
`
`of a later Supreme Court decision that makes clear that a previous ruling was
`
`mistaken, and doing so is appropriate here. The logic of Thryv itself supports
`
`recall, vacatur, and reinstatement. There is no issue of repose or finality because
`
`– 2 –
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`

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`the PTAB has not issued any ruling on remand. Recalling the mandate and
`
`reinstating the appeal would not be unfair to AIT because AIT was not entitled to a
`
`remand on the time-bar issue and its infringement case against Salesforce remains
`
`stayed. And RPX may be severely prejudiced if this Court does not act now: if the
`
`PTAB were to rule that RPX’s petitions were time-barred, the IPRs would be dis-
`
`missed and RPX could not appeal under Thryv and Section 314(d). To avoid such
`
`a Catch-22, the Court should reset the playing field to where it would have been if
`
`the Court had correctly applied Section 314(d) in the first instance: AIT’s appeal
`
`should proceed, but only on the merits of the PTAB’s unpatentability rulings.
`
`BACKGROUND AND PROCEDURAL HISTORY
`
`In August 2015, RPX filed three IPR petitions challenging the patentability
`
`of claims of two AIT patents. See Applications in Internet Time, LLC v. RPX
`
`Corp., 897 F.3d 1336, 1339 (Fed. Cir. 2018). AIT contended that RPX’s petitions
`
`were time-barred under Section 315(b) on grounds that (1) Salesforce was a real
`
`party in interest (RPI) here and (2) AIT sued and served Salesforce more than a
`
`year before RPX filed its petitions. RPX responded that Salesforce was not an RPI
`
`because Salesforce was entirely uninvolved in these IPRs. After the PTAB ordered
`
`RPX to provide discovery, the PTAB concluded that RPX was not time-barred,
`
`found a reasonable likelihood that some claims were unpatentable on the asserted
`
`grounds, and accordingly instituted review. See id. at 1342-43.
`
`– 3 –
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`

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`In December 2016, the PTAB issued final written decisions in which it
`
`rejected AIT’s claim constructions and found that RPX had shown that various
`
`claims were unpatentable on each instituted ground. The PTAB reiterated its
`
`finding that Salesforce was not an RPI and that RPX’s petitions were therefore not
`
`time-barred under Section 315(b). See id. at 1343-44.
`
`AIT appealed to this Court. In its opening brief, AIT argued both that
`
`RPX’s IPR petitions were time-barred because RPX was a proxy for Salesforce
`
`and, on the merits, that the PTAB misconstrued the claims and the claims were
`
`patentable under AIT’s preferred claim constructions. Dkt. 49 (corrected brief).
`
`RPX’s response brief contended that Section 314(d) barred this Court from review-
`
`ing the Board’s timeliness determinations and resulting institution decisions, that
`
`the Board’s no-time-bar ruling was correct even if it were reviewable, and that the
`
`Board correctly construed the claims and found them unpatentable. Dkt. 29.
`
`Because this Court had not yet decided Wi-Fi One when the case was briefed, the
`
`briefing on the Section 314(d) issue focused on previous decisions such as Achates
`
`Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015).
`
`In January 2018, just weeks before the oral argument in this case, the
`
`en banc Court ruled in Wi-Fi One that it had the authority to review PTAB time-
`
`bar rulings under Section 315(b) notwithstanding Section 314(d). 878 F.3d at
`
`1374. The Court in this case took that holding as a given and proceeded to review
`
`– 4 –
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`

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`the PTAB’s no-time-bar determinations here. In its July 2018 opinion, the Court
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`found fault with several aspects of the PTAB’s RPI analysis and vacated and
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`remanded for further proceedings regarding the time-bar issues. 897 F.3d at 1351-
`
`58. The Court did not reach the merits of AIT’s patentability arguments and did
`
`not remand for further analysis of the merits. Id. at 1358.
`
`In October 2018, this Court denied RPX’s petition for rehearing, Dkt. 89,
`
`and issued its mandate to the USPTO, Dkt. 90. On remand, the PTAB ordered
`
`additional discovery on both RPI and privity issues and accepted further briefing
`
`and argument on those points. See RPX Corp. v. Applications in Internet Time
`
`LLC, IPR2015-01750, Papers 87, 93, 106. The panel did not entertain further
`
`briefing or argument on the merits of its unpatentability determinations. Id. To
`
`date, the PTAB has not issued a new decision reanalyzing the time-bar issues.
`
`In the meantime, RPX filed a petition for certiorari asking the Supreme
`
`Court to reassess the issue that the en banc Court resolved in Wi-Fi One: whether
`
`Section 314(d) bars this Court from reviewing timeliness determinations under
`
`Section 315(b). No. 18-1075 (U.S.). The Supreme Court denied that petition, but
`
`shortly thereafter it granted review on the same issue in Thryv v. Click-to-Call,
`
`No. 18-916 (Jun. 24, 2019). Two weeks ago, the Supreme Court ruled in Thryv,
`
`agreeing with the petitioner that Section 314(d) bars this Court from reviewing
`
`– 5 –
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`

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`PTAB time-bar determinations under Section 315(b), even when the PTAB revisits
`
`those issues in its final written decision. Id., slip op. 6-14 (Apr. 20, 2020).
`
`Thryv effectively overruled Wi-Fi One and makes clear that this Court had
`
`no authority to review the time-bar issues that the Court addressed in its original
`
`opinion in this case. Given the Supreme Court’s ruling and the fact that the PTAB
`
`has not issued a new decision on remand, RPX now requests that this Court apply
`
`Thryv in this case by recalling its mandate, vacating its earlier judgment, and rein-
`
`stating the appeal for consideration of the patentability issues over which this
`
`Court has appellate jurisdiction.
`
`RPX has notified the PTAB that it is filing this motion and has requested
`
`that the PTAB stay proceedings there until this Court resolves this motion. The
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`PTAB will be holding a conference call tomorrow. RPX has also discussed this
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`motion with AIT. AIT does not consent to the motion and may file a response.
`
`ARGUMENT
`
`A.
`
`Appellate courts have the authority to recall a mandate
`and vacate a previous decision, and supervening decisions
`by the Supreme Court are a classic ground for doing so
`
`Appellate courts universally recognize that they have the inherent authority
`
`to recall a mandate and reinstate an appeal where justice so requires. This Court’s
`
`predecessor, the Court of Customs and Patent Appeals, observed that it “ha[d] the
`
`power, in the interest of justice, to recall its mandate in an appropriate case.” In re
`
`– 6 –
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`

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`Snyder, 557 F.2d 820, 821 (1977) (quoting In re Willis, 537 F.2d 513, 515 (CCPA
`
`1976)). This Court itself has likewise recognized and exercised this authority,
`
`noting, however, that it should be invoked “sparingly and only upon a showing of
`
`good cause.’” Mars Inc. v. Coin Acceptors, Inc., 557 F.3d 1377, 1378 (Fed. Cir.
`
`2009) (quoting Snyder, 557 F.2d at 821). The Court has exercised that authority in
`
`a wide variety of contexts, including errors or omissions in its own opinions, e.g.,
`
`id. at 1378-80 (failure to address interest), and errors by parties that would have
`
`produced an unjust result, e.g., Power Integrations, Inc. v. Semiconductor Com-
`
`ponents Indus., LLC, No. 18-1602, Dkt. 65 (Feb. 28, 2019) (recalling mandate and
`
`reinstating appeal where counsel inadvertently neglected to file the joint appendix).
`
`This Court has not hesitated to recall mandates, vacate judgments, and
`
`reinstate appeals based on subsequent Supreme Court decisions that have made
`
`clear that the Court’s analysis was mistaken. For example, when the Supreme
`
`Court reverses or vacates a decision of this Court and remands for further proceed-
`
`ings, this Court routinely recalls its mandate to the trial court or agency, reinstates
`
`the appeal, and takes appropriate action on the merits. E.g., Return Mail, Inc. v.
`
`United States Postal Serv., No. 16-1502, Dkt. 75 (Jul. 15, 2019); WesternGeco
`
`L.L.C. v. ION Geophysical Corp., No. 13-1527, Dkt. 151 (Jul. 27, 2018). In
`
`appropriate cases, the Court may also recall its mandate and reinstate an appeal in
`
`one case in light of a later Supreme Court decision in a different case. See, e.g.,
`
`– 7 –
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`

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`In re Bergy, 596 F.2d 952, 957 (CCPA 1979) (noting that the Court had vacated its
`
`judgment in In re Chakrabarty at the USPTO’s request in light of a grant-vacate-
`
`and-remand order by the Supreme Court earlier in Bergy).
`
`Other circuit courts have consistently recognized that their authority to recall
`
`a mandate and vacate an opinion to prevent injustice includes cases “when a subse-
`
`quent decision by the Supreme Court renders a previous appellate decision demon-
`
`strably wrong.” United States v. Tolliver, 116 F.3d 120, 123 (5th Cir. 1997)
`
`(recalling mandate where a conviction conflicted with a Supreme Court decision).
`
`In American Iron & Steel Institute v. EPA, 560 F.2d 589 (1977), the Third Circuit
`
`explained why recalling a mandate is appropriate in such circumstances:
`
`Where, as here, a decision of the Supreme Court the
`preeminent tribunal in our judicial system departs in
`some pivotal aspects from those of lower federal courts,
`amendatory action may be in order to bring the pro-
`nouncements of the latter courts into line with the views
`of the former. ... [R]ecall of a mandate traditionally has
`been warranted when and to the extent necessary “to pro-
`tect the integrity” of a court’s earlier judgment. Certain-
`ly, such integrity may be jeopardized when the solemn
`declarations of a court are called into question by a later
`Supreme Court opinion. Recall of a mandate, in such a
`situation, would appear to be an appropriate response by
`a court of appeals.
`
`Id. at 596 (recalling mandate in case decided in 1975 due to inconsistency with a
`
`1977 Supreme Court decision involving environmental law); see also United States
`
`v. Skandier, 125 F.3d 178, 182-83 (3d Cir. 1997) (following American Iron and
`
`– 8 –
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`

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`Case: 17-1698 Document: 95 Page: 14 Filed: 05/04/2020
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`recalling mandate based on Supreme Court decision adopting a different interpreta-
`
`tion of the habeas corpus statute). The Ninth Circuit in Zipfel v. Halliburton Co.,
`
`861 F.2d 565 (1988), likewise “exercise[d its] power to recall [its] mandate and
`
`amend [its] opinion” after a Supreme Court decision that interpreted the Anti-
`
`Injunction Act in a contrary manner, citing “an overpowering sense of fairness and
`
`a firm belief that this is the exceptional case requiring recall of the mandate in
`
`order to prevent an injustice.” Id. at 567-68 (quotation marks and citation omit-
`
`ted). See also Judkins v. Beech Aircraft Corp., 745 F.2d 1330, 1332 (11th Cir.
`
`1984) (recognizing the court’s power to recall its mandate based on a “supervening
`
`change in law,” but holding that recall was not warranted there because the plain-
`
`tiff’s filings also satisfied the standard adopted by the Supreme Court); IAL
`
`Aircraft Holding, Inc. v. FAA, 216 F.3d 1304, 1305-07 (11th Cir. 2000) (recalling
`
`mandate and vacating decision after learning that the case had become moot before
`
`the opinion was filed the year before and thus should not have been decided).
`
`B.
`
`This Court should exercise its authority to recall its mandate,
`vacate its opinion, and reinstate the appeal for consideration
`of the merits of the PTAB’s unpatentability determinations
`
`For the reasons just explained, this Court clearly has the discretion to recall
`
`its mandate, vacate its judgment based on the Supreme Court’s supervening deci-
`
`sion in Thryv, and address the merits aspects of AIT’s appeal on which Section
`
`314(d) has no effect. The Court should exercise that discretion.
`
`– 9 –
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`

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`1.
`
`Thryv’s emphasis on the dangers of judicial review
`of PTAB determinations that IPR petitions were
`timely strongly supports the relief RPX seeks here
`
`In Thryv, the Supreme Court stressed that in enacting the IPR regime,
`
`Congress was “concerned about overpatenting and its diminishment of competi-
`
`tion” and thus “sought to weed out bad patent claims efficiently.” Slip op. 8. The
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`Court also recognized that judicial review of time-bar rulings “tug[s] against that
`
`objective, wasting the resources spent resolving patentability and leaving bad
`
`patents enforceable.” Id. at 9. Simply put, “vacatur [on time-bar grounds] would
`
`unwind the agency’s merits decision” and “operate to save bad patent claims.” Id.
`
`The Court further observed that Section 315(b) aims to “minimize burdensome
`
`overlap between inter partes review and patent-infringement litigation,” yet
`
`“[j]udicial review after the agency proceedings cannot undo the burdens already
`
`occasioned.” Id. at 10. The Court also noted that merits “appeals necessary to
`
`protect patent claims from wrongful validation” are unaffected because “patent
`
`owners remain free to appeal final decisions on the merits.” Id.
`
`Thryv’s logic strongly supports recalling this Court’s mandate in this case,
`
`vacating the Court’s judgment, and reinstating the appeal for a decision on the
`
`patentability merits. The resources the PTAB spent resolving patentability and
`
`weeding out bad patent claims should not be wasted, and allowing the vacatur of
`
`those decisions to stand could unwind the agency’s thorough merits decisions and
`
`– 10 –
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`potentially save AIT’s bad patent claims. Of course, AIT contends that its patent
`
`claims were patentable, but this Court can and should assess those issues by rein-
`
`stating AIT’s appeal on the merits.
`
`2.
`
`Finality and repose are not concerns here
`
`Courts of appeals are sometimes reluctant to recall their mandates and rein-
`
`state appeals out of concerns for finality and repose. If a case is over, it may be
`
`impractical or unfair to revive it. At some point, res judicata controls.
`
`But no such concerns apply here because these IPRs are not final, AIT has
`
`not lain in repose, and res judicata does not apply. This Court remanded to the
`
`PTAB, but the PTAB has not yet ruled on the time-bar issues. Because there has
`
`been no revised final written decision or dismissal of these IPRs, the cases are very
`
`much alive. And because they are alive, they should be decided according to the
`
`Supreme Court’s authoritative construction of the governing law.
`
`Under Thryv, Section 314(d) barred this Court from reviewing the PTAB’s
`
`no-time-bar decision—both its initial decision to institute review and its confirm-
`
`ation of that ruling in its final written decision. This Court should apply that
`
`settled law, vacate its judgment remanding for more analysis of the time-bar issues,
`
`and proceed to review the merits as it would have done if the en banc Court had
`
`correctly anticipated the result in Thryv. This is not a case where it would be
`
`impossible or impractical to unwind the decision and apply the correct law.
`
`– 11 –
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`Notably, courts routinely unwind decisions when applying res judicata
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`principles. A final judgment of a district court triggers issue and claim preclusion
`
`in other cases. Restatement (Second) of Judgments §§ 13, 14 (1981). But if the
`
`triggering judgment is vacated, reversed, or otherwise nullified on appeal, a party
`
`that suffered a later judgment predicated on the original, mistaken judgment is
`
`entitled to move to set aside the later judgment and obtain restitution for any
`
`benefits that were mistakenly awarded. Id. § 16.
`
`Here the solution is even simpler because there has been no subsequent
`
`judgment by the PTAB. This Court can simply take the case back from the PTAB
`
`and proceed to decide the appeal as it should have been decided in the first place.
`
`3.
`
`Granting this motion would not unfairly prejudice AIT
`
`Granting this motion would not unfairly prejudice AIT. AIT had its oppor-
`
`tunity to litigate the time-bar issue at the PTAB and was not entitled to appellate
`
`review of the PTAB’s determinations under Section 314(d). The same constraints
`
`applied to RPX. See Microsoft Corp. v. Science Applications Int’l Corp., No. 20-
`
`1464, Dkt. 23 (Apr. 16, 2020) (dismissing IPR petitioner’s appeal from PTAB’s
`
`time-bar determination under Section 315(b)).
`
`Nor can AIT reasonably claim any prejudice in its district court action
`
`against Salesforce. As the Supreme Court observed in Thryv, slip op. 10, any
`
`burdens from the IPRs have “already [been] occasioned.” Moreover, the district
`
`– 12 –
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`

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`Case: 17-1698 Document: 95 Page: 18 Filed: 05/04/2020
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`court considered AIT’s claims of burden and decided to maintain the stay until the
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`IPR results are final. See Applications in Internet Time, LLC v. Salesforce.com,
`
`Inc., No. 3:13-cv-00628, Dkt. 116 (D. Nev. Jan. 7, 2020) (order denying motion to
`
`lift stay).
`
`4.
`
`Granting this motion will ensure fairness to RPX, which
`would be unable to appeal any adverse time-bar decision
`
`Granting this motion is critical to ensure that RPX is treated fairly. From the
`
`outset of this appeal, RPX has consistently argued that Section 314(d) bars this
`
`Court from reviewing all time-bar issues. This Court ruled otherwise, however,
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`and as a result, the case was remanded and RPX has been forced to relitigate the
`
`time-bar issues before the PTAB under a new legal framework. If this Court’s
`
`error had involved a statutory provision other than Section 314(d), the Court pre-
`
`sumably could have fixed the mistake on a second appeal. (The law-of-the-case
`
`doctrine gives way to intervening changes in law. See, e.g., Dow Chem. Corp. v.
`
`Nova Chems. Corp. (Can.), 803 F.3d 620, 628-31 (Fed. Cir. 2015).) Yet if the
`
`PTAB were to conclude on remand that RPX’s petitions were time-barred, Section
`
`314(d) would likely prevent RPX from appealing that ruling.
`
`That would be an intolerable Catch-22: the PTAB’s original determination
`
`for RPX was vacated pursuant to a misconstruction of Section 314(d), yet Section
`
`314(d) would likely prevent RPX from appealing a later determination against it.
`
`– 13 –
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`

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`Case: 17-1698 Document: 95 Page: 19 Filed: 05/04/2020
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`Granting this motion would avoid that potential conundrum and ensure correction
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`of the earlier error in reaching issues that the Court had no authority to reach.
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`5.
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`Granting relief here will not open any floodgates
`
`Finally, granting this motion will not invite similar motions because few, if
`
`any, cases are in a similar procedural posture. Indeed, RPX is unaware of any
`
`other pending case like this one in which the PTAB is reconsidering a no-time-bar
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`ruling on remand from this Court.
`
`This Court reviewed no-time-bar rulings by the PTAB only during the two-
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`year period between the en banc decision in Wi-Fi One and the Supreme Court’s
`
`decision in Thryv. In some of those cases, including Wi-Fi One, this Court
`
`affirmed PTAB rulings that no time bar applied, so no relief will be necessary.
`
`Three cases, including Thryv, are on their way back from the Supreme Court, and
`
`this Court presumably will deal with those cases in its usual manner. The PTAB
`
`has dismissed other cases in which this Court reversed or vacated PTAB no-time-
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`bar rulings, so the results in those cases are final. Even if there are other cases like
`
`this one, the class is small, and applying Thryv to them would be both practical and
`
`equitable.
`
`CONCLUSION
`
`RPX respectfully requests that the Court exercise its discretion to recall its
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`mandate to the USPTO, vacate its judgment because it reviewed issues that were
`
`– 14 –
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`

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`Case: 17-1698 Document: 95 Page: 20 Filed: 05/04/2020
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`unreviewable under Thryv, reinstate the appeal, and decide the merits issues that
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`are properly subject to appellate review. RPX is unaware of any intervening case
`
`law on the merits issues and is prepared to submit those issues on the existing
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`papers.
`
`Respectfully submitted,
`PERKINS COIE LLP
`/s/Dan L. Bagatell
` Dan L. Bagatell
` Nathan K. Kelley
`Counsel for Appellee RPX Corporation
`
`– 15 –
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`

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`Case: 17-1698 Document: 95 Page: 21 Filed: 05/04/2020
`
`CERTIFICATE OF INTEREST
`
`Counsel for appellants certifies the following:
`
`The full name of the party I represent is:
`RPX Corporation
`
`The names of all other real parties in interest represented by me are:
`none
`
`The names of all parent corporations and any publicly held companies that
`own 10% or more of the stock of the party I represent are:
`
`RPX Corporation is a wholly-owned subsidiary of Riptide
`Parent, LLC, which is indirectly and beneficially owned by
`investment vehicles that are advised by HGGC, LLC, a
`Delaware limited liability company conducting business in
`Palo Alto, California. No publicly held company currently
`controls more than 10% of RPX Corporation, Riptide Parent,
`LLC, or HGGC, LLC.
`
`The names of all law firms and lawyers that appeared for the parties now
`represented by me at the agency or are expected to appear in this Court, but have
`not appeared in this Court, are:
`
`WOLF, GREENFIELD & SACKS, P.C.
`Randy J. Pritzker*
`
`______________
`
`* Michael N. Rader, Richard F. Giunta, Bryan S. Conley, and Elisabeth H. Hunt of
`Wolf, Greenfield & Sacks, P.C. previously appeared in this appeal and withdrew.
`
`

`

`Case: 17-1698 Document: 95 Page: 22 Filed: 05/04/2020
`
`The title and number of all cases known to counsel to be pending in this or
`any other court or agency that will directly affect or be directly affected by this
`Court’s decision in the pending appeal are:
`RPX Corp. v. Applications in Internet Tim