PTAB Institutes IPR, Finds Unified Patents is Sole Real Party in Interest

By Gene Quinn & Steve Brachmann
December 4, 2018

On Tuesday, November 27th, the Patent Trial and Appeal Board (PTAB) issued a redacted version of a decision to institute an inter partes review (IPR) proceeding petitioned by Unified Patents to challenge the validity of patent claims that have been asserted in district court against at least one of Unified’s subscribing members. The PTAB panel of administrative patent judges (APJs) decided to institute the IPR despite the patent owners’ assertion that the petition should be denied because Unified didn’t identify all real parties in interest (RPIs) including members of Unified’s Content Zone.

For all of the chest thumping that Unified Patents typically engages in, they don’t publicly post a list of their members but at least one of these district court cases has been filed against a company subscribing to Unified: Google.

The Charade

The charade that Unified is the only real party in interest and simply acts in uncoordinated ways and not at the behest of those who pay for them to challenge patents continues, at least at the PTAB.

It seems the PTAB believes that companies pay Unified Patents for no particular service and for no particular reason, but then somehow still surreptitiously and secretively manage to find the patents they are sued on challenged at the PTAB. Of course — wink, wink, nod, nod — Unified clients are not in privy with Unified, and also not otherwise real parties in interest.

Of course, the PTAB continues to look the other way and pretend that Unified’s clients are not the real parties in interest, and remarkably are not paying for a service.  Despite the Federal Circuit recently, and finally, recognizing that one who pays for and then receives the beneficial actions of another is by definition a real party in interest.

The Patent

The patent-at-issue in this IPR proceeding is U.S. Patent No. 8934535, titled Systems and Methods for Audio and Video Data Storage and Distribution. Issued in January 2015, it covers data compression and decompression methods for compressing and decompressing data based on either actual or expected bandwidth of a system in such a way that eliminates bottlenecks in bandwidth. The IPR institution decision notes that the ‘535 patent is involved in 26 related proceedings in district court. 

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The Statute

Under 35 U.S.C. § 312(a)(2), an IPR petition can only be considered by the PTAB if the petitioner identifies all of the real parties in interest.  In this petition, Unified Patents identified itself as the sole real party in interest, despite the fact that one of its clients — Google — has paid Unified to challenge patents and will be the beneficiary of any invalidation of the patent in question.

When a patent owner provides sufficient evidence prior to institution questioning the accuracy of the petitioner’s identification of all real parties in interest, the burden is placed upon the petitioner to establish that it has complied with the identification requirement. Although it is redacted in the public version of the institution decision, patent owner Realtime Adaptive Streaming LLC did single out a company subscribing to Unified, which has been sued for infringing the patent claims challenged in the IPR. Realtime Adaptive Streaming also noted that several members subscribing to Unified’s Content Zone have been charged with infringing claims of the ‘535 patent. The patent owner argued that Unified acts as an association asserting the rights of its members which are at risk of being sued for patent infringement and that Unified acts as an attorney-in-fact because the members pay fees which they know will be used to file petitions within a particular technology zone to mitigate the risk of infringement litigation.

RPX at the Federal Circuit

Preclusion requires participation and control, Unified argued, and not just a mere interest as an advocate of its members’ interests. Unified further argued that it solely directed and funded this IPR, that no member communicated with Unified about this IPR or knew about it prior to the petition, and that none of its members have implicitly or explicitly participated in the IPR.

But this legal question is very similar to those decided earlier this year by the Federal Circuit in Applications in Internet Time v. RPX Corporation (AIT), in which the Federal Circuit overturned a decision by the PTAB to invalidate patent claims after finding that the PTAB was unduly restrictive in interpreting the statutory meaning of an RPI. Nevertheless, Unified argued that Realtime Adaptive Streaming incorrectly interpreted AIT as proposing a “benefits-plus-relationship” standard which would consider any party that benefits from an IPR and has any relationship to the petitioner to be an RPI.

Simply stated, Unified is incorrect. Applications in Internet Time absolutely and unambiguously stand for the proposition that the focus must be on benefits. “[T[he focus of the real-party-in-interest inquiry is on the patentability of the claims challenged in the IPR petition, bearing in mind who will benefit from having those claims canceled or invalidated,” Judge O’Malley explained. “Thus, when it comes to evaluating the relationship between a party bringing a suit and a non-party, the common law seeks to ascertain who, from a “practical and equitable” standpoint, will benefit from the redress that the chosen tribunal might provide.”

While Unified managed to convince the PTAB, try as they might they cannot erase the statements of Judge O’Malley in Applications in Internet Time, written on behalf the panel. Wish as they may, AIT is correctly interpreted as proposing a “benefits-plus-relationship” standard for determining real party in interest characterization, as is relatively familiar and common throughout the law for hundreds of years in a variety of contexts.

PTAB’s Institution

The PTAB’s institution decision found that Unified Patents had met its burden of proving it had accurately identified itself as the sole real party in interest and that Realtime Adaptive Streaming was overextending the reasoning of AIT. The PTAB found that there was a lack of evidence demonstrating a relationship the likes of the one between RPX and Salesforce in AIT, which included evidence of a substantial payment immediately prior to the filing of a petition with the PTAB as well as the fact that Salesforce was itself time-barred from filing a petition. In Unified’s case, there are no members time-barred from filing their own petition at the time of Unified’s petition and there is no evidence of Unified members contacting Unified about their ‘535 patent infringement litigation in district court. Further, the PTAB found that the company singled out by Realtime wasn’t accused of infringement as of the time that that Unified filed the IPR petition on the ‘535 patent and that there was no evidence that company knew it would be accused of infringement later. 

Those distinctions being what they are, they do not address the beneficial relationship test of AIT. As a paying Unified member, Google clearly has a relationship and if we are honest that relationship is one where there is an expectation that Unified will use funds received to seek to invalidate patents being used against members. Likewise, if we are going to be perfectly honest, we all know who receives the benefit associated with invalidating patents, or Unified negotiating a no-fee settlement on behalf of all its members. The charade isn’t even subtle.

Although the Federal Circuit often doesn’t respect its own precedent, this case will make for an interesting appeal.  

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments. Join the discussion.

  1. Anon December 4, 2018 9:45 am

    Perhaps this serves as yet another reminder why we have separation of powers and a reason why putting judicial power (and that power includes the discounting of what the judicial branch “interprets” as RPI) into the “political branch” (and as previously noted, the particular agency of that political branch with the known least dissociated [or objective] adjudicatory function).

    Unified does get a “pass” here — at least for now. And perhaps “control” does rise (return?) to an critical lever, as opposed to the “buy in for benefit” that more realistically reflects a real party in interest.

    But perhaps that may merely reflects that the agency theory should differentiate between a “controlling party of interest” and a “real party of interest.”

    The bottom line is inescapable: Unified’s business model IS the very type of RPI as reflected with RPX, even if “control” is different in degree (or even kind).

  2. Pro Se December 4, 2018 1:45 pm

    Here’s the Google Cahced version of this page written in 2013 that reveal Google and Netapp created Unified Patents:

    “For smaller companies that may be unable to finance patent defenses, Google and NetApp launched startup Unified Patents to help them pool resources. ”

    Source:
    https://webcache.googleusercontent.com/search?q=cache:C2_D3evXRSkJ:https://www.bloomberg.com/news/articles/2013-10-24/a-cheaper-way-to-defuse-patent-claims-kill-the-patent+&cd=5&hl=en&ct=clnk&gl=us

    When Google’s former Gen-Counsel is appointed to run the USPTO, what did anyone expect was the setup of the PTAB and its agenda?

  3. Mike December 4, 2018 5:44 pm

    @Pro Se regarding the setup of the PTAB and its agenda when Google’s former Gen-Counsel being appointed to run USPTO:

    Very true, and the article even makes that clear when it says: “Google’s patent counsel, Laura Sheridan, says her company wants Congress to pass legislation that would give more patents the same treatment [as being invalidated].”

    And if Google deletes this page from their cache and so does Bloomberg? Let’s turn to the web archives. Interestingly, something strange happens when searching wayback machine (web.archive.org) for the article — https://www.bloomberg.com/news/articles/2013-10-24/a-cheaper-way-to-defuse-patent-claims-kill-the-patent. The article appears for a few seconds, and then the page shows “404. Page Not Found”, which appears to be some javascript on the page hiding the content. However, choosing the option to “view source” in the web browser will show the entire text of the article, happily pasted below, with edits to remove the html/script tags etc.

    In the text, you can clearly see “Google and NetApp launched startup Unified Patents…” It appears that from the reporting on IpWatchDog, Unified Patents strategy goes much beyond “charg[ing] clients for subscriptions to its troll-monitoring news feed and tr[ying] to buy up patents before trolls can.” Unified Patents will also file IPRs on patents where invalidity will benefit its subscribing and paying members. So the AIA/IPR scheme created a system worse that the alleged “trolls” — a derogatory moniker created with absolutely no evidence, and an attempt to indicate that a patent owner who licenses his IP is a bad character – which is utterly false. The true bad characters are the entities spreading this lie and also now taking advantage of this loophole in the AIA and the ignorance of the PTAB in correctly seeing real parties of interest.

    Reference:
    http://web.archive.org/web/20160601194037/https://www.bloomberg.com/news/articles/2013-10-24/a-cheaper-way-to-defuse-patent-claims-kill-the-patent

    From the Source:
    =========
    October 24, 2013, 7:39 PM CDT

    A Cheaper Way to Defuse Patent Claims: Kill the Patent

    When a tech company gets hit with a patent infringement lawsuit, the odds are high it will settle. So-called patent trolls — businesses or individuals who buy older patents, then sue infringing companies in search of big payouts — win more than half of cases that go to trial. A White House report says more than 100,000 companies were threatened with infringement suits last year by businesses whose sole mission is to extract royalty revenue, and the Government Accountability Office says those outfits filed 19 percent of all patent lawsuits from 2007 to 2011. In cases that went to trial in 2012, licensors were awarded a median $11.2 million per case, according to a PricewaterhouseCoopers study.

    Google, Oracle, data-storage provider NetApp, and other tech companies have a new strategy for fighting back: petitioning the U.S. Patent and Trademark Office to revoke the patents they’re allegedly violating. These patent reviews, set up under the 2011 America Invents Act, can discourage frivolous patent claims by shifting the burden of proof to the plaintiff. The patent holder can’t refuse a review, overseen by administrative patent judges, even if a court case is already in progress. The outcome of a proceeding, required within 12 months instead of years, is legally binding; and although the trial judge isn’t required to put a case on hold while the Patent Office conducts a review, most do.

    In patent trials, plaintiffs’ attorneys are allowed to examine defendant e-mail and all manner of company documents in discovery, which can divulge trade secrets — and provide a huge incentive for defendants to settle. In patent reviews, the focus is narrowed to technical details about the technology in dispute. For tech companies, “the odds of winning a validity challenge are orders of magnitude higher than in other current forums,” says Austin (Tex.)-based attorney Scott Cole, who often represents patent owners. Patent Office spokesman Paul Fucito declined to comment.

    These newfound advantages for tech companies have shifted power away from the patent holders. Since reviews began this past year, some 41 of the Patent Office’s roughly 600 cases have been settled and at least one patent has been invalidated. Compared with protracted court battles, which cost defendants an average minimum of $650,000, administrative challenges cost far less, usually not more than $300,000. “We are looking at the most cost-effective way of dealing with dubious suits,” says Douglas Luftman, NetApp’s chief intellectual property counsel.

    Tech companies are pressing to further sweeten the review system by expanding the kinds of arguments they can use to invalidate a patent. SAP challenged a Versata Software patent on the grounds that the invention — customized pricing based on volume or consumer history — was so abstract that it shouldn’t have been patentable. As of now, that only works against patents on some kind of finance-related business concept. Google’s patent counsel, Laura Sheridan, says her company wants Congress to pass legislation that would give more patents the same treatment.

    The patent-review strategy carries some risks for companies already engaged in court battles, Sheridan says. “If you’re not successful, the jury will hear about that,” she says. For smaller companies that may be unable to finance patent defenses, Google and NetApp launched startup Unified Patents to help them pool resources. Unified charges clients for subscriptions to its troll-monitoring news feed and tries to buy up patents before trolls can. “All of these companies are seeing litigation on the same patents across all of their products,” says Chief Executive Officer Kevin Jakel, former head of IP litigation at Intuit.

    The potential savings have prompted some tech companies to attempt a long list of challenges against patent holders. After cloud-services company Rackspace Hosting was sued by licensor Rotatable Technologies for violating its patent on computer image displays, Rackspace “decided to stand up and not be pushed around,” says company lawyer Van Lindberg. He says Rackspace is challenging Rotatable’s patent and may file 10 other petitions against patent owners that have demanded payments. Rotatable lawyer Austin Hansley didn’t return calls seeking comment.
    ==============

  4. Paul Morgan December 5, 2018 10:54 am

    This is an abnormal situation of an IPR-filing organization that is apparently not a normal trade association or even an independent public interest organization, but rather seems more like a litigation defense-financing fund? Whatever the IPR decides the real party in interest issue would seem to be ripe for a Fed. Cir. appeal, especially if insufficient additional IPR discovery was requested and not provided on this issue in this IPR.

  5. Night Writer December 6, 2018 6:43 am

    This is ridiculous. I thought it was the very day they formed. I’ve spoke with founders of two of these businesses. Just ridiculous. We had to figure these out because clients were asking about them. My opinion was that they would not end well and that it was a transparent scheme. This was many like five years ago.

    Just so outrageous and far from reality to bring into question the entire structure of our system. There has to be consequences. Things don’t get better unless you discipline people for bad behavior.

  6. Anon December 6, 2018 1:01 pm

    As a follow-on to the thread topic, I saw a recent LAW 360 article indicating that the PTAB was still following a Google influence vis a vis an RPX matter (even though the CAFC rebuked the PTAB on RPX).

    As I recall, the PTAB was allowing institution based on the logical error that not all of the RPX base were parties of interest – committing the mistake of confusing “all being parties of interest” and the institution requrement of listing ALL parties of interest (which is violated if even ONE party of interest is omitted).

  7. Bronsworth December 11, 2018 2:58 am

    There are patents out there that should never have been issued, right? That’s what IPR does, find out of the patents are junk and get rid of them if it is? So the argument here is that the by some technicality the IPR should never take place to FIND OUT if the patent is junk, and gosh darn it, Quinn says, that technicality is valid?

    If the patents are junk, they’re junk. Let the IPR proceed!

  8. Gene Quinn December 11, 2018 11:23 am

    Bronsworth-

    You can mischaracterize what I’ve said if you like, but the problem you have is what I’ve said is findable and understandable by those who care to read it— and understand it. You, on the other hand, seem to prefer to intentionally misrepresent.

    Unified is clearly not the only real party in interest. They are paid by clients to kill patents— that is their business model. As the Federal Circuit has explained in the RPX case privy is a question of benefit, which means that all of Unified’s clients are in privy. That is what any good lawyer who understands hundreds of years of law associated with privy should conclude. Just read Wright & Miller and go back to Civ Pro 101.

    IPRs can continue, the real parties in interest just need to be identified as required. So, it is hardly a crazy notion that the law and rules actually be followed. I know of no statute or rule that absolves Unified from following the requirements of Title 35 of the U.S. Code or Title 37 of the Code of Federal Regulations. If you know of a cite that absolves Unified from the obligations of the statute and/or regulations please provide the cite. Otherwise why don’t you either: (1) crawl back under your rock; or (2) use your real name so we know who is intentionally misrepresenting what I’ve written.

    -Gene

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