Salesforce's Reexams Estopped By RPX IPRs

• Published date: 12 July 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Jones Day
• Author: Marc S. Blackman and Ruth Brindel

In decisions rare of their kind, the U.S. Patent and Trademark Office ("USPTO") terminated two ex parte reexaminations in view of inter partes review ("IPR") proceedings initiated by a different party. The decisions represent another loss for Salesforce following a decade of legal efforts to strike down patents assigned to Applications in Internet Time, LLC ("AIT"). Ex parte Reexamination of U.S. Patent No. 8,484,111, 90/019,069, Decision on Petitions (USPTO, May 25, 2023); Ex parte Reexamination of U.S. Patent No. 7,356,482, 90/019,070, Decision on Petitions (USPTO, May 25, 2023).

RPX had previously filed two IPR petitions challenging claims of AIT's patents. The Patent Trial and Appeal Board ("PTAB") instituted IPRs, issued final written decisions, and concluded that numerous claims were unpatentable. On appeal, the Federal Circuit vacated the final written decisions and remanded for a determination of whether Salesforce was a real party in interest. On remand, the PTAB terminated both IPRs upon finding that Salesforce was a real party in interest and the IPRs were time barred. Subsequently, Salesforce filed requests for reexamination of AIT's patents.

In the reexamination proceedings, the parties disputed whether the prior IPRs initiated by RPX estopped the reexamination proceedings brought by Salesforce under 35 U.S.C. ' 315(e)(1). That section limits petitioners and real parties in interest in an IPR proceeding that resulted in a final written decision from challenging in the USPTO claims on any ground that was raised or reasonably could have been raised during the IPR proceeding.

In determining whether estoppel applied, the USPTO first considered whether Salesforce was a real party in interest to the IPRs initiated by RPX. Acknowledging that the PTAB previously found Salesforce was a real party in interest and that Salesforce did not contest this issue on reexamination, the USPTO found that this element of estoppel was satisfied.

As the grounds in the reexamination were not identical to the grounds in the IPRs, the USPTO evaluated whether the reexamination grounds...