➤➤  Would you like to receive Skilled in the Art as an email? Sign up here.

Unified Business Model Passes Muster at PTAB

One of the things I enjoy about this newsletter is the opportunity to admit when I am wrong. Here's the latest: I didn't think things looked good for Unified Patents last summer after the Federal Circuit tightened up its rules on real parties in interest in PTAB proceedings.

The Federal Circuit's AIT decision came in a case involving RPX Corp., not Unified, of course. But both companies bring IPRs that benefit their dues-paying members (and others). The Federal Circuit said Congress intended real party to have its “expansive common-law meaning,” which would cover a company that is “a clear beneficiary that has a preexisting, established relationship with the petitioner.” The decision meant that RPX member Salesforce.com could be a real party in interestin a few of RPX's IPRs, potentially rendering those IPRs untimely.

Non-practicing entity RealTime Adaptive Streaming has been arguing that the same logic should apply to Unified Patents and its “Content Zone”—some 200 broadband, cable and entertainment industry companies that pay Unified membership fees that support its IPR activities. “Even without explicit communication or control, Content Zone members have authorized Unified to file IPRs for their benefit,” William Rothwell of Noroozi PC argued in briefs to the PTAB.

RealTime further argued that Unified has a particularly close relationship with one member that's being sued by RealTime over its data compression patent. The member's name is redacted from the PTAB's order, but according to briefs filed in the case the company belongs to all of Unified's technology zones, including automotive, making it sound like Google.

But the PTAB instituted proceedings on Unified's petition last month, drawing a variety of distinctions between Unified's business model and the relationship between RPX and Salesforce.com.

For one thing, there's no evidence that Unified communicated with any of its members about the IPR or received significant payments just before filing it. And none of Unified's members asked Unified to reach out to RealTime about resolving the underlying patent litigation.

“We agree with Petitioner that Patent Owner is overextending the reasoning of AIT,” Administrative Patent Judge Nabeel Khan wrote. “The evidence does not point to any specific member whose ties with petitioner are so extensive to imply that petitioner filed this IPR at the behest of that member or that it was acting as an attorney-in-fact on behalf of that member.”

That goes, too, for the company that might or might not be Google, since it wasn't sued until after Unified filed its petition last April. Neither Google nor any other member of the Content Zone was time-barred from filing its own IPR when Unified filed its petition, in contrast to Salesforce, whose hands were tied by the time RPX filed its IPR in the AIT case.

The upshot: While this is one decision by one PTAB panel, it looks like Unified is still in the IPR business. Finnegan, Henderson, Farabow, Garrett & Dunner partnersLionel Lavenue and Brandon Rash and Lee & Hayes' James Stein represented Unified Patents, as did Unified chief IP counsel Jonathan Stroud and senior patent counsel Ashraf Fawzy.

As an aside, RPX, which has averaged about 10 IPRs a year over the last five years, hasn't filed any since the Federal Circuit heard arguments in AIT back in February. The AIT decision just became final Oct. 30, which means RPX is still eligible to challenge the decision at the U.S. Supreme Court.

An IPR Bonanza as BRI Era Comes to an End

Speaking of the PTAB, have you noticed the explosion of petitions filed in the last week? The PTAB typically receives fewer than 10 America Invents Act petitions a day. But the board was flooded with 136 over the course of Thursday, Friday and Monday—that's almost 10 percent of the PTAB's normal annual docket. Seventy-one petitions were filed on Monday alone, according to RPX's Daily Litigation Alert.

The reason, of course, is that Monday was the last call for petitions that will be analyzed under the Broadest Reasonable Interpretation claim construction standard. Starting today, all new petitions are subject to the narrower Phillips standard employed by federal courts.

Conventional wisdom had it that BRI and Phillips don't really lead to different results all that often. Tell that to Apple, which filed 20 IPR petitions in the last three days, including three against its good friends at Qualcomm. Or tell Comcast, which dropped a whopping 29 petitions on Tivo subsidiary Rovi Guides.

Disputes between goliath operating companies were a theme all three days. Verizon's Cellco Partnership petitioned against Samsung Electronics America. Intel filed five petitions against Qualcomm. Qualcomm brought seven of its own petitions against Apple. And Wells Fargo brought four CBM petitions against the United States Automobile Association.

So spare a thought for the PTAB practitioners who spent the last week grinding these out—and for the PTAB judges who are charged by law with deciding within six months whether to institute trial proceedings.

Gorsuch Brings Patent Chops to His Chambers

I've written before about the Supreme Court overlooking the Federal Circuit when it comes to clerk hiring. But at least one justice is bulking up on patent-savvy clerks, even if they don't come by way of 717 Madison Place.

Notre Dame University announced last month that IP professor Stephen Yelderman will clerk for Justice Neil Gorsuch during the 2019 term. Yelderman is a known quantity—he clerked for Gorsuch at the Tenth Circuit in 2010-11. He also has worked as a patent agent in Silicon Valley, a trial attorney in DOJ's Antitrust Division, and for the last five years on the Notre Dame faculty, where he's focused on patents, antitrust and copyright. He even submitted a brief earlier this year in the patent damages case WesternGeco v. Ion Geophysical, though Gorsuch wound up taking a different position in dissent.

As noted in Andrew Trask's tweet, Gorsuch had a hand in each of the court's three patent decisions last term. He wrote for the 5-4 majority in SAS Institute v. Iancu and penned dissents in Oil States v. Greene's Energy and WesternGeco.

Gorsuch's current class of clerks includes another patent-experienced litigator: former King & Spalding partner Paul Mezzina. During six years in K&S' appellate department, Mezzina's work included teaming up with partner Daryl Joseffer on The Internet Association's amicus briefs in the Section 101 cases Berkheimer v. HP and AmDocs v. Openet Telecom. Until withdrawing this summer, he was involved in Google's partly successful attempt to invalidate online spreadsheet technologyunder Section 101.

Mezzina already knows his way around the Supreme Court. He clerked for the late Antonin Scalia in 2013, following a stint at the D.C. Circuit in 2009-10 with Brett Kavanaugh.

So this could reflect Justice Gorsuch's ongoing interest in patent law, his desire for clerks who have experience working for him and/or the Supreme Court … or it could be both.

Google Tries to Take Venue Ruling En Banc

Speaking of Google, it has asked the full Federal Circuit to rehear its challenge to a ruling it says has opened the floodgates to patent suits against the company in the Eastern District of Texas.

Google says that thanks to TC Heartland, it had gone a year without being sued in the Eastern District. Then U.S. District Judge Rodney Gilstrap ruled in July that Google Global Cache servers housed in ISPs in the district are a “regular and established place of business.” Since then Google's been sued 17 times in ED-Tex, it says.

I have more details in my National Law Journal article here.

Recorder Announces Women Leaders in Tech Law

The Recorder named its 2018 Women Leaders in Tech Law last week, including 30 Next Generation honorees. Many are familiar names in Skilled in the Art. You can check out the entire list here. Better yet, check out the Q&As, where you can learn about the leader whose representation of Google in its first patent case shaped her career; the leader who got her first big break arguing an appeal about lead paint as a junior associate while nine months pregnant; and the leader who jokes that she's praying for autonomous vehicles before her sons reach driving age.

Estop Me Before I Post Again

I completely forgot to mention the biggest, sexiest IP news of the entire week: Assignor estoppel is officially dead at the PTAB. I've got all the details here.

That's all from Skilled in the Art for today. I'll see you all again on Friday.