Post-Grant for Practitioners: Recent Developments in RPI/Privity
The Federal Circuit issued two landmark decisions over the past several months that have changed the landscape for determining RPIs and parties in privity to a PTAB petitioner. Applications in Internet Time, LLC v. RPX Corp. (“AIT“) and Worlds Inc. v. Bungie, Inc. (“Worlds“) have reinforced the notion that the burden of persuasion remains on the petitioner to prove that it is not in privity with an estopped party and that there are no unnamed RPIs. In AIT, the Federal Circuit indicated that the Board must look beyond express assertions made by the petitioner and consider the entirety of the evidentiary record in assessing satisfaction of that burden. In Worlds, the Federal Circuit clarified that the burden of persuasion is initially satisfied by petitioner designation of RPI and certification of no estoppel in its petition. However, the petitioner may have to do more to carry its burden if confronted with an evidence-based challenge by the patent owner to its RPI designation. In addition to informing the Board of the proper framework for analyzing the RPI/privity issue, AIT and Worlds have also arguably lowered the bar for what types of relationships might lead to a finding of privity.
Karl Renner, Principal & Post-Grant Practice Co-Chair, Fish & Richardson
Rob Devoto, Principal, Fish & Richardson
David Holt, Principal, Fish & Richardson