Applications in Internet Time, LLC v. Rpx Corporation

United States Court of Appeals
for the Federal Circuit
______________________
APPLICATIONS IN INTERNET TIME, LLC,
Appellant
v.
RPX CORPORATION,
Appellee
______________________
2017-1698, 2017-1699, 2017-1701
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-01750, IPR2015-01751, IPR2015-01752.
______________________
Decided: July 9, 2018
______________________
STEVEN C. SEREBOFF , SoCal IP Law Group LLP,
Westlake Village, CA, argued for appellant.
MICHAEL N. RADER, Wolf, Greenfield & Sacks, PC,
New York, NY, argued for appellee. Also represented by
BRYAN S. CONLEY , RICHARD G IUNTA, ELISABETH HUNT ,
Boston, MA.
______________________
Before O’MALLEY , REYNA, and HUGHES , Circuit Judges.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 2
Opinion for the court filed by Circuit Judge O’MALLEY , in
which Circuit Judge HUGHES joins in the judgment.
Concurring opinion filed by Circuit Judge R EYNA.
O’MALLEY , Circuit Judge.
This appeal arises from three inter partes reviews
(“IPRs”) challenging claims of two patents owned by
Appellant Applications in Internet Time, LLC (“AIT”):
U.S. Patent Nos. 7,356,482 (“the ’482 patent”) and
8,484,111 (“the ’111 patent”). The Patent Trial and Ap-
peal Board (“Board”) of the United States Patent and
Trademark Office (“PTO”) instituted the IPRs over AIT’s
objection that the three IPR petitions filed by Appellee
RPX Corporation (“RPX”) were time-barred under 35
U.S.C. § 315(b) (2012). AIT contended that RPX was
acting as a “proxy” for one of its clients, Salesforce.com,
Inc. (“Salesforce”), on whom AIT had served a complaint
alleging infringement of the ’482 and ’111 patents more
than one year before RPX filed its petitions. Thus, AIT
alleged that RPX was not the only real party in interest
and that the time bar applicable to Salesforce was equally
applicable to RPX. In two final written decisions, the
Board held certain claims of the patents unpatentable
under 35 U.S.C. § 103. RPX Corp. v. Applications in
Internet Time, LLC, Nos. IPR2015–01751, IPR2015–
01752, 2016 WL 7985456 (P.T.A.B. Dec. 28, 2016) (482
Decision); RPX Corp. v. Applications in Internet Time,
LLC, No. IPR2015–01750, 2016 WL 7991300 (P.T.A.B.
Dec. 28, 2016) (111 Decision).
AIT appeals, among other things, the Board’s time-
bar and unpatentability determinations. For the reasons
set forth below, we conclude that the Board applied an
unduly restrictive test for determining whether a person
or entity is a “real party in interest” within the meaning
of § 315(b) and failed to consider the entirety of the evi-
dentiary record in assessing whether § 315(b) barred
institution of these IPRs. We accordingly vacate the

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 3
Board’s final written decisions and remand for further
proceedings.
I. BACKGROUND
A. The Salesforce Litigation and Failed Covered Business
Method Petitions
Salesforce is a software company that offers customer
relationship management software to its clients. On
November 8, 2013, AIT filed a complaint against
Salesforce, asserting infringement of both patents. See
Compl., Applications in Internet Time, LLC v.
Salesforce.com, Inc., No. 3:13-cv-00628 (D. Nev. Nov. 8,
2013), ECF No. 1. Salesforce was served with a copy of
the complaint on November 20, 2013.
As the district court noted, Salesforce’s “right to file a
petition with the PTAB seeking [IPR] of the patents in
suit expired in November 2014” under 35 U.S.C. § 315(b).
Id. Rather than timely petition for IPR of the ’482 and
’111 patents, Salesforce filed petitions for covered busi-
ness method (“CBM”) review in August 2014. Applica-
tions in Internet Time, LLC v. Salesforce.com, Inc., No.
3:13-cv-00628, 2015 WL 8041794, at *1 (D. Nev. Dec. 4,
2015). The Board denied both CBM petitions in February
2015, concluding that Salesforce failed to establish that
the patents are “covered business method patent[s]”
within the meaning of the AIA. Salesforce.com, Inc. v.
Applications in Internet Time LLC, No. CBM2014–00168,
2015 WL 470747, at *6 (P.T.A.B. Feb. 2, 2015);
Salesforce.com, Inc. v. Applications in Internet Time LLC,
No. CBM2014–00162, 2015 WL 470746, at *7 (P.T.A.B.
Feb. 2, 2015).
B. RPX’s IPR Petitions and Pre-Institution Discovery
RPX is a public company whose stated “mission is to
transform the patent market by establishing RPX as the
essential intermediary between patent owners and oper-
ating companies.” J.A. 31. One of its strategies is “to help

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 4
members of [its] client network quickly and cost-
effectively extricate themselves from [non-practicing
entity (‘NPE’)] lawsuits.” J.A. 29. Salesforce is one of
RPX’s clients.
On August 17, 2015—more than one year after
Salesforce was served with copies of AIT’s complaint in
the Salesforce litigation and several months after
Salesforce’s CBM petitions were denied—RPX filed three
IPR petitions challenging the patentability of claims of
the ’482 and ’111 patents. In each petition, RPX identi-
fied itself as the “sole real party-in-interest,” and certified
that it is not barred or estopped from requesting IPR as to
the ’482 and ’111 patent claims. Moreover, in each peti-
tion, RPX acknowledged that the outcome of the IPRs
could impact the ongoing Salesforce litigation.
Shortly thereafter, AIT filed motions for additional
discovery, in which it asked the Board to compel RPX to
produce documents relevant to identifying the real parties
in interest. AIT “expect[ed] that the requested discovery,
together with additional information, will make a compel-
ling showing that RPX is the agent of un-named third
party Salesforce.com, Inc. (Salesforce), thus establishing
that the petitions are time-barred under 35 U.S.C.
§ 315(b).” J.A. 17. RPX opposed the motions. The Board,
relying on passages in the PTO’s Patent Trial Practice
Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“Trial Practice
Guide”), was “persuaded that the combination of factors
present here justifie[d] permitting additional discovery on
the issue of whether Salesforce is a” real party in interest,
and granted in part AIT’s motions. J.A. 1068–69.
Over the following weeks, RPX produced documents
responsive to certain of AIT’s discovery requests. Among
these documents are webpages that reveal, among other
things, that (1) RPX “is the leading provider of patent risk
solutions, offering defensive buying, acquisition syndica-
tion, patent intelligence, insurance services, and advisory

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 5
services,” id. at 73; (2) its “interests are 100% aligned
with those of [their] clients,” id. at 71; (3) RPX “work[s] to
ensure that each RPX client avoids more in legal costs
and settlements each year than they pay RPX in subscrip-
tion fees,” id.; and (4) although RPX “prevent[s] patent
litigation,” it also “can help after a litigation has begun,”
id. at 72. Another webpage, titled “Client Relations,”
provides that the company has teams that “vet each
possible asset for quality, assertion history, seller reputa-
tion, and—especially—likelihood of threat to any or all
RPX members.” Id. at 28. This same webpage states that
RPX’s “insight into the patent market allows [it] to serve
as an extension of a client’s in-house legal team to better
inform its long-term IP strategy.” Id. Also among the
documents produced were RPX’s Form 10-K annual report
for the period ending December 31, 2013, which lists one
of RPX’s “[s]trateg[ies]” as “facilitati[ng] . . . challenges to
patent validity . . . .” Id. at 30–31. Other documents
reveal that RPX and Salesforce share a member on their
respective boards of directors. Id. at 32–36.
In addition to the foregoing, RPX produced three doc-
uments containing confidential information that are
relevant to this appeal. The first, titled “Validity Chal-
lenge Identification Process and Best Practices” (“Best
Practices Guide”), sets forth the company’s “best practic-
es” for identifying patents whose validity it will challenge
in an IPR. Id. at 80–81. The document, which was creat-
ed on July 9, 2014, id. at 1227 ¶ 14, provides that “RPX
best practices help ensure that RPX is complying with all
contractual obligations and to ensure that RPX is and will
be deemed by the PTAB and district courts as the sole
real party-in-interest in all validity challenges unless
another real party-in-interest is expressly identified.” Id.
at 80. RPX’s best practices (1) expressly discourage the
company from taking suggestions from third parties,
including clients, regarding validity challenges; (2) pro-
vide that it will not discuss forthcoming validity challeng-

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 6
es with third parties in advance of filing; and (3) mandate
that RPX will not discuss strategy or take feedback on
pending validity challenges, and will “maintain complete
control of all aspects of pending validity challenges.” Id.
This document further explains that “[a] validity chal-
lenge identification team . . . will identify potential validi-
ty challenges to propose to the Validity Challenge
Approval Committee,” and “will identify potential candi-
dates based, in part, on” multiple factors. Id. at 80–81.
The second document is a declaration from RPX’s Vice
President of Client Relations, William W. Chuang, in
which Chuang testified as to the reasons RPX files IPRs,
the process that led to RPX’s filing of the IPR petitions in
this case, and RPX’s interactions with Salesforce. Chuang
testified that “RPX has many reasons for filing IPR peti-
tions,” including (1) reducing patent risk to an industry of
companies, including current and potential clients;
(2) decreasing the number of plainly invalid patents,
which undermines confidence in the general patent mar-
ket and might cause current and prospective clients to
question whether they should pay subscription fees to
RPX; (3) providing leverage in negotiating reasonable
prices for acquiring patent rights and removing them
from the hands of NPEs; and (4) conveying to the industry
that RPX, unlike certain of its competitors, “uses every
available method to reduce patent risk efficiently.” J.A.
1223–26 ¶¶ 5–10.
Chuang also averred that RPX followed its Best Prac-
tices Guide in deciding to file the three IPR petitions in
this case, and that it accordingly “had no communication
with Salesforce whatsoever regarding the filing of IPR
petitions against the AIT Patents before the AIT IPRs
were filed.” J.A. 1229 ¶ 20. He testified that “RPX origi-
nally looked at the AIT Patents after the AIT-Salesforce
Litigation was filed” pursuant to its “customary practice”
of monitoring newly filed patent infringement lawsuits to
identify suits brought by NPEs. J.A. 1235 ¶¶ 35–36.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 7
According to Chuang, RPX “most likely” identified the
’482 and ’111 patents as “good potential IPR candidates
that aligned well with the selection criteria” set forth in
the Best Practices Guide during a meeting held on Febru-
ary 20, 2015—just after Salesforce’s CBM petitions were
denied. J.A. 1236–37 ¶¶ 37–40.
Chuang further testified regarding “six communica-
tions between RPX and Salesforce employees in which the
AIT-Salesforce Litigation and/or the AIT Patents were
mentioned or discussed.” J.A. 1230 ¶ 22. The first of
these communications, initiated by RPX, occurred on
January 7, 2014, during which Chuang “mentioned that
RPX had become aware that Salesforce had been sued by
AIT”; “provided a small amount of information” that RPX
knew about the litigation; indicated that, although RPX
did not have knowledge of AIT’s expectations for its
litigation campaign, it had previous dialogue on other
matters with the same counsel who was representing AIT
in the litigation; and offered to reach out to that counsel.
J.A. 1231 ¶ 23. The following month, after Salesforce
“had just renewed its membership agreement with RPX,”
an in-person meeting was held during which Salesforce
“indicated that it would be interested if RPX could reach
out to AIT and find out any information regarding AIT’s
expectations for its litigation campaign.” J.A. 1231 ¶ 24.
During a phone call on June 30, 2014, Salesforce “again
indicated that it would be interested in any information
RPX could obtain concerning AIT’s expectations for its
litigation campaign.” J.A. 1232 ¶ 25. It does not appear
that any contact between RPX and AIT’s counsel occurred
during that time period. J.A. 1231–32 ¶¶ 24–25.
Shortly after this third communication, Salesforce
filed its CBM petitions. See Salesforce, 2015 WL 8041794,
at *1. According to Chuang, RPX initiated a call to
Salesforce approximately two weeks later, during which
Salesforce informed RPX that it had filed the CBM peti-
tions, that a stay would therefore be granted in the dis-

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 8
trict court litigation, and that Salesforce no longer was
interested in having RPX reach out to AIT to obtain
information about AIT’s expectations for that litigation.
J.A. 1232 ¶ 26.
On March 11, 2015, approximately five weeks after
the Board denied Salesforce’s two CBM petitions, RPX
again asked Salesforce during a phone call “if Salesforce
would like RPX to reach out to AIT to try to obtain infor-
mation regarding AIT’s expectations for its litigation
campaign in view of the fact that Salesforce’s petition for
CBM review had been denied.” J.A. 1232 ¶ 27. According
to Chuang, Salesforce indicated that it was not interested
in having RPX reach out to AIT at that time, but would
inform RPX if circumstances changed in the future. J.A.
1232–33 ¶ 27. Very shortly thereafter, however, in April
or May 2015, “Salesforce began to bring up the subject of
the AIT-Salesforce Litigation,” but RPX, apparently
experiencing a change of heart, “immediately indicated
that it was not inclined to discuss that matter, and the
topic of discussion turned elsewhere.” J.A. 1233 ¶ 28.
The third document contains information regarding
the terms of Salesforce’s contractual arrangement with
RPX. In relevant part, the document reveals that
Salesforce has paid RPX substantial sums as membership
fees since its membership began, including a very signifi-
cant payment shortly before the IPR petitions at issue
here were filed. J.A. 82.
After receiving and reviewing the aforementioned dis-
covery, AIT filed preliminary responses in which it ar-
gued, among other things, that the IPRs could not be
instituted because RPX failed to properly identify
Salesforce as a real party in interest and because the
petitions were time-barred. It noted the volume and
timing of payments Salesforce had made to RPX and
provided timelines plotting correspondence between
Salesforce and RPX relating to the Salesforce litigation,

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 9
the CBM proceedings, and the IPR proceedings. AIT did
not, however, depose Chuang.
C. The Institution Decisions
The Board instituted IPRs over AIT’s real party in in-
terest challenges, which it construed as being premised on
35 U.S.C. § 312(a), 37 C.F.R. § 42.8(b)(1), and § 315(b). It
acknowledged that both the ’482 and ’111 patents had
been asserted against Salesforce, RPX’s client, in district
court, but concluded that AIT “ha[d] not provided persua-
sive evidence to support” its assertion that “RPX must
have filed the [petitions] as a proxy for Salesforce” or that
its “business model is built upon [RPX] acting as an agent
or proxy for third parties in cases just like this.” In
reaching this conclusion, the Board articulated the legal
standard as follows:
Whether an entity that is not named as a par-
ticipant in a given proceeding constitutes [a real
party in interest] is a highly fact-dependent ques-
tion that takes into account how courts generally
have used the terms to “describe relationships and
considerations sufficient to justify applying con-
ventional principles of estoppel and preclusion.”
Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,759 (Aug. 14, 2012). According to the
Trial Practice Guide,
the spirit of that formulation as to IPR . . .
proceedings means that, at a general level,
the “real party-in-interest” is the party
that desires review of the patent. Thus,
the “real party-in-interest” may be the pe-
titioner itself, and/or it may be the real
party or parties at whose behest the peti-
tion has been filed.
Id. As stated in the Trial Practice Guide, there
are “multiple factors relevant to the question of

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 10
whether a non-party may be recognized as” an
RPI. Id. (citing Taylor v. Sturgell, 533 U.S. 880,
893–895, 893 n.6 (2008)). There is no “bright line
test.” Id. Considerations may include, for exam-
ple, whether a non-party exercises control over a
petitioner’s participation in a proceeding, or
whether a non-party is funding the proceeding or
directing the proceeding. Id. at 48,759–60.
A petition is presumed to identify accurately
all RPIs. See Zerto, Inc. v. EMC Corp., Case
IPR2014-01295, slip op. at 6–7 (PTAB Mar. 3,
2015) (Paper 34). When a patent owner provides
sufficient evidence prior to institution that rea-
sonably brings into question the accuracy of a pe-
titioner’s identification of RPIs, the overall burden
remains with the petitioner to establish that it
has complied with the statutory requirement to
identify all RPIs. Id.
J.A. 1483–84.
The Board then wrote that several of AIT’s citations
to the record, including one in which RPX states its inter-
ests are “100% aligned” with those of its clients, were
either taken out of context or mischaracterized. J.A.
1484. It juxtaposed those statements against other
paragraphs in Chuang’s declaration, including those in
which he testified (1) that the “primary factor” driving
RPX’s decision to file the petitions was the ability to file a
strong petition against a low-quality software patent
“before the NPE extracted its price from its first litigation
and proceeded to assert the patents more broadly against
other targets,” which would “provide significant reputa-
tional benefits to RPX”; and (2) that “RPX did not have
any contractual obligation to file [this and the related]
IPRs or any ‘unwritten,’ implicit or covert understanding
with Salesforce that it would do so.” J.A. 1485. The
Board also rejected AIT’s argument that “RPX has a

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 11
history of acting as a proxy,” distinguishing on their facts
two of its earlier decisions on which AIT relied: RPX
Corporation v. Virnetx Inc., No. IPR2014-00171 (P.T.A.B.
June 5, 2014), Paper No. 49, and RPX Corporation v.
ParkerVision, No. IPR2014-00946 (P.T.A.B. Jan. 8, 2015),
Paper No. 25. J.A. 1486.
The Board next disposed of AIT’s argument that RPX
has “adopted a ‘willful blindness’ strategy,” under which
“it intentionally operates its business to circumvent the
[Board’s] RPI case law,” stating that it was “not persuad-
ed that the evidence of record supports this assertion” and
that RPX’s declaration testimony “that explains RPX’s
‘best practices’ for identifying RPIs . . . contradicts [AIT’s]
assertion.” J.A. 1487. The Board was likewise not per-
suaded by AIT’s argument that Salesforce “advanced”
RPX the cost of the petitions, finding this “conjecture
without evidentiary support.” J.A. 1487–88. Finally, the
Board disagreed with AIT’s assertion that timelines
showing RPX’s communications with Salesforce demon-
strate “a clear pattern of conspiracy.” The Board pointed
to portions of Chuang’s declaration in which he testified,
without rebuttal, that, although RPX communicated with
Salesforce regarding the Salesforce litigation, the CBM
proceedings, offers to reach out to AIT, and requests for
additional information from Salesforce, RPX did not
communicate with Salesforce on the specific topic of the
IPRs. J.A. 1489.
D. The Final Written Decisions
AIT filed a combined response to the IPR petitions, re-
iterating its belief that RPX was acting as a proxy for real
party in interest Salesforce. RPX filed separate replies,
and the Board held an oral hearing on December 7, 2016,
during which AIT again raised its real-party-in-interest
argument. At the hearing, AIT, for the first time, raised
the possibility that RPX might be time-barred under
§ 315(b) as a “privy” of Salesforce, arguing that the stat-

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 12
ute “merely requires that the real party-in-interest or a
privy be time barred without speaking of control.” J.A.
2024.
In its final written decisions, the Board again rejected
AIT’s real-party-in-interest challenge and determined
that all challenged claims are unpatentable as anticipated
or obvious in view of certain prior art references. 482
Decision, 2016 WL 7985456, at *19; 111 Decision, 2016
WL 7991300, at *3, *15. AIT appeals from the final
written decisions, arguing that the Board both “lacked
authority to proceed in rendering the [decisions] because
it misconstrued the law of privity and real party in inter-
est” and erred in certain of its claim constructions and
unpatentability determinations. J.A. 483–91.
II. D ISCUSSION
The primary issue in this appeal is whether the Board
relied on an erroneous understanding of the term “real
party in interest” in determining that the IPR petitions
filed by RPX were not time-barred under § 315(b).1 We
conclude that it did.
1 As stated above, the time-bar arguments that AIT
made to the Board centered on a theory that Salesforce
was a real party in interest, rather than a privy of RPX.
The first time it hinted that it believed Salesforce was a
privy of RPX was during the oral hearing, where counsel
argued that § 315(b) “merely requires that the real party-
in-interest or privy be time barred without speaking of
control.” J.A. 2024. It then argued in its Notices of
Appeal that “the Board lacked authority to proceed in
rendering the Final Written Decision because it miscon-
strued the law of privity and real party in interest.” J.A.
298, 303, 308, 484, 489. Because AIT focused its argu-
ments on whether Salesforce was an unnamed real party

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 13
This court has had little occasion to grapple with the
meaning of the term “real party in interest” in the context
of § 315(b). This is due, in no small part, to the fact that
time-bar determinations under this provision were not
reviewable until we issued our en banc opinion in Wi-Fi
One, LLC v. Broadcom Corporation, 878 F.3d 1364, 1374
(Fed. Cir. 2018) (Wi-Fi En Banc), holding “that time-bar
determinations under § 315(b) are reviewable by this
court.” On remand, the panel held that “[t]he use of the
familiar common law terms ‘privy’ and ‘real party in
interest’ indicate that Congress intended to adopt com-
mon law principles to govern the scope of the [§] 315(b)
one-year bar.” Wi-Fi One, LLC v. Broadcom Corp., 887
F.3d 1329, 1335 (Fed. Cir. 2018) (Wi-Fi Remand).
Although we have issued a few decisions recently ap-
plying these common-law principles in the context of
§ 315(b) challenges, they have been in cases where privity
challenges were raised and where the arguments on that
question related to the parties’ relationship during an
earlier litigation that reached a final judgment; the ques-
tion of who is a “real party in interest” in the context of an
IPR was not addressed.
In the years since the enactment of the Leahy–Smith
America Invents Act, Pub. L. No. 112–29, § 6(a)–(c), 125
Stat. 284, 299–305 (2011) (“AIA”), the PTO has attempted
to provide guidance with respect to the meaning of
§ 315(b) and the terms used therein. Specifically, it has
published a Trial Practice Guide discussing these terms.2
in interest and because we vacate the Board’s determina-
tion on that score, we need not address in this opinion
whether RPX and Salesforce were in privity, and leave
this argument for the Board to consider on remand.
2 We discuss the Trial Practice Guide in more detail
later. We note, however, that the Trial Practice Guide is

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 14
And the PTO’s tribunals, including the Board below, have
rendered time-bar determinations involving alleged real
parties in interest and privies of petitioners that have
exactly that and no more. It is “a practice guide” pub-
lished by the PTO “to advise the public on the general
framework of the regulations, including the structure and
times for taking action in each of the new proceedings.”
77 Fed. Reg. at 48,756. Importantly, it is not binding on
Board panel members. Accordingly, it is, at best, “‘enti-
tled to respect’ under” Skidmore v. Swift & Co., 323 U.S.
134, 140 (1944), “only to the extent that those interpreta-
tions have the ‘power to persuade’ . . . .” Christensen v.
Harris Cty., 529 U.S. 576, 587 (2000) (describing agency
manuals and interpretive guidelines as documents that
“lack the force of law” and “do not warrant Chevron-style
deference,” but instead are “entitled to respect” under
Skidmore). We do not pass judgment on the persuasive-
ness of all aspects of the Trial Practice Guide here, or
whether it covers the entirety of the common-law land-
scape covered by § 315(b). We note that many of the
statements in the Trial Practice Guide concerning §
315(b) are consistent with the language, structure, and
purpose of the statutory provision it addresses and with
its common-law predicates. More particularly, we do not
believe that any of the general legal principles expressed
in the Trial Practice Guide cited by the Board here run
contrary to the common-law understanding of “real party
in interest.” Our concern here is not with whether the
Trial Practice Guide is a thoughtful and useful resource to
which individual Board members and the public might
turn for guidance—it is—but with this particular panel’s
understanding and application of the principles articulat-
ed therein, and articulated in the common law which the
Trial Practice Guide considers.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 15
relied, to varying degrees, on statements contained in the
Trial Practice Guide.
The facts of this case and the arguments made by the
parties require us to explore in greater detail the meaning
of the term “real party in interest” in the context of the
AIA. As such, we first construe § 315(b) by examining the
language of the provision, its place in the overall statuto-
ry scheme, and the legislative history of the provision.
We then explain how the Board in this case rendered a
flawed time-bar determination under § 315(b) by taking
an unduly narrow view of the meaning of the governing
statutory term and by failing to consider the entirety of
the record before it.
A. Legal Standards
We review the PTO’s statutory interpretations pursu-
ant to Chevron, U.S.A., Inc. v. Natural Resources Defense
Council, Inc., 467 U.S. 837 (1984); Auer v. Robbins, 519
U.S. 452 (1997); and United States v. Mead, 533 U.S. 218,
229–30 (2001). Chevron requires that a court reviewing
an agency’s construction of a statute it administers first
discern “whether Congress has directly spoken to the
precise question at issue.” 467 U.S. at 842. If the answer
is yes, the inquiry ends, and the reviewing court must
give effect to Congress’s unambiguous intent. Id. at 842–
43. If the answer is no, the court must consider “whether
the agency’s answer [to the precise question at issue] is
based on a permissible construction of the statute.” Id. at
843. The agency’s “interpretation governs in the absence
of unambiguous statutory language to the contrary or
unreasonable resolution of language that is ambiguous.”
United States v. Eurodif S.A., 555 U.S. 305, 316 (2009)
(citing United States v. Mead, 533 U.S. 218, 229–30
(2001)).
When a statute expressly grants an agency rulemak-
ing authority and does not “unambiguously direct[ ]” the
agency to adopt a particular rule, the agency may “enact

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 16
rules that are reasonable in light of the text, nature, and
purpose of the statute.” Cuozzo Speed Techs., LLC v. Lee,
–– U.S. ––, 136 S. Ct. 2131, 2142 (2016) (first citing Mead,
533 U.S. at 229; then citing Chevron, 467 U.S. at 843). In
such situations, when the PTO does adopt rules, “[w]e
accept the [Director’s] interpretation of Patent and
Trademark Office regulations unless that interpretation
is plainly erroneous or inconsistent with the regulation.”
In re Sullivan, 362 F.3d 1324, 1326 (Fed. Cir. 2004) (first
citing Auer, 519 U.S. at 461–62; then citing Bowles v.
Seminole Rock & Sand Co., 325 U.S. 410, 414 (1945)
(internal quotations omitted)).
Where an agency instead engages in “interpretive”
rulemaking, at best, a lower level of deference might
apply. See Mead, 533 U.S. at 227–29, 230–31 (describing
notice-and-comment as “significant . . . in pointing to
Chevron authority”); Reno v. Koray, 515 U.S. 50, 61 (1995)
(according “some deference” to an interpretive rule that
did “not require notice and comment”). The Supreme
Court has explained that “[t]he fair measure of deference
to an agency administering its own statute has been
understood to vary with circumstances, and courts have
looked to the degree of the agency’s care, its consistency,
formality, and relative expertness, and to the persuasive-
ness of the agency’s position.” Mead, 533 U.S. at 228
(footnotes omitted) (citing Skidmore, 323 U.S. at 139–40).
B. Interpreting § 315(b)
We begin our analysis of the Board’s application of
§ 315(b) by construing the provision. “As in any case of
statutory construction, our analysis begins with the
language of the statute.” Hughes Aircraft Co. v. Jacobson,
525 U.S. 432, 438 (1999) (internal quotation marks omit-
ted). “The first step ‘is to determine whether the lan-
guage at issue has a plain and unambiguous meaning
with regard to the particular dispute in the case.’” Barn-
hart v. Sigmon Coal Co., 534 U.S. 438, 450 (2002) (quot-

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 17
ing Robinson v. Shell Oil Co., 519 U.S. 337, 340 (1997)).
We also “must read the words ‘in their context and with a
view to their place in the overall statutory scheme.’” King
v. Burwell, –– U.S. ––, 135 S. Ct. 2480, 2489 (2015) (quot-
ing FDA v. Brown & Williamson Tobacco Corp., 529 U.S.
120, 133 (2000)). This is because statutory “[a]mbiguity is
a creature not [just] of definitional possibilities but [also]
of statutory context.” Brown v. Gardner, 513 U.S. 115,
118 (1994). Importantly, we may not conclude that a
statutory provision is ambiguous until we conclude that
resort to all standard forms of statutory interpretation are
incapable of resolving any apparent ambiguity which
might appear on the face of the statute. See Chevron, 467
U.S. at 843 n.9.
The primary dispute in this case is whether the Board
applied an unduly narrow test for determining whether
Salesforce is a “real party in interest” under § 315(b). We
apply the principles set forth in Chevron and its progeny
with this dispute in mind.
1. The Common Law in Context
Section 315 governs the relationship between IPRs
and other proceedings conducted outside the IPR process.
Section 315(b), titled “Patent Owner’s Action,” provides
that an IPR “may not be instituted if the petition request-
ing the proceeding is filed more than 1 year after the date
on which the petitioner, real party in interest, or privy of
the petitioner is served with a complaint alleging in-
fringement of the patent.”
Two insights into Congress’s intent vis-à-vis the reach
of § 315(b) can be gleaned from the statutory text alone.
First, the inclusion of the terms “real party in interest”
and “privy of the petitioner” in § 315(b) makes clear that
Congress planned for the provision to apply broadly—
sweeping in not only what might be traditionally known
as real parties in interest, but privies as well. Second,
Congress did not speak of there being only one interested

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 18
party in each case; instead, it chose language that bars
petitions where proxies or privies would benefit from an
instituted IPR, even where the petitioning party might
separately have its own interest in initiating an IPR.
Indeed, Congress understood that there could be multiple
real parties in interest, as evidenced by § 312(a)’s re-
quirement that an IPR petition must “identif[y] all real
parties in interest.” 35 U.S.C. § 312(a)(2) (emphasis
added).
The terms “real party in interest” and “privy of the
petitioner” are not defined in the AIA. As we recognized
in Wi-Fi Remand, however, “[t]he use of the familiar
common law terms ‘privy’ and ‘real party in interest’
indicate that Congress intended to adopt common law
principles to govern the scope of the section 315(b) one-
year bar.” 887 F.3d at 1335; see also Kirtsaeng v. John
Wiley & Sons, Inc., 568 U.S. 519, 538 (2013) (explaining
that, where terms in a statute cover ‘“issue[s] previously
governed by the common law,’” courts “must presume that
‘Congress intended to retain the substance of the common
law.’” (quoting Samantar v. Yousuf, 560 U.S. 305, 320
n.13 (2010))). In WesternGeco LLC v. ION Geophysical
Corp., we shed additional light on the meaning of “privy”
in the context of § 315(b), but did not elaborate on the
scope of “real party in interest” because the patent owner
focused on privity as the key basis of its time-bar chal-
lenge. WesternGeco, 889 F.3d 1308, 1316–19 (Fed. Cir.
2018). We now examine the common-law meaning of “real
party in interest,” keeping in mind the administrative
context in which this question arises.
As the Supreme Court explained in Sprint Communi-
cations Co. v. APCC Services, Inc., the concept of a “real
party in interest” developed at common law over the
centuries in large measure as a means of eliminating a
restrictive common law rule that prohibited assignees of a
legal claim for money from bringing suit in their own
name. 554 U.S. 269, 273–81 (2008); see also 6A Charles

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 19
Alan Wright, Arthur R. Miller, & Mary Kay Kane, Feder-
al Practice & Procedure § 1545 (3d ed. 2018) (“Wright &
Miller”) (“At common law the assignee of a chose in action
did not hold legal title to it and could not qualify as the
real party in interest. Indeed, in large measure the real-
party-in-interest concept developed as a means of elimi-
nating this restrictive rule.” (footnote omitted)). The
Court explained that 17th century English courts “strictly
adhered to the rule that a ‘chose in action’—an interest in
property not immediately reducible to possession (which,
over time, came to include a financial interest such as a
debt, a legal claim for money, or a contractual right)—
simply ‘could not be transferred to another person by the
strict rules of the ancient common law.’” Sprint
Commc’ns, 554 U.S. at 275 (quoting 2 William Blackstone,
Commentaries *442). Over time, “the law increasingly
permitted the transfer of legal title to an assignee, [and]
courts agreed that assignor and assignee should be treat-
ed alike in this respect.” Id. at 279–80.
Federal Rule of Civil Procedure 17(a), titled “Real
Party in Interest,” codifies these broad, common-law
principles. See Wright & Miller § 1541 (explaining that
the “original text of Rule 17(a) was taken almost verba-
tim” from equitable and legal rules that “discarded the
cumbersome procedures for ‘use’ actions at law”). The
Rule provides that “[a]n action must be prosecuted in the
name of the real party in interest,” and specifies seven
categories of individuals who “may sue in their own
names without joining the person for whose benefit the
action is brought”: (1) executors; (2) administrators; (3)
guardians; (4) bailees; (5) trustees of express trusts; (6)
parties “with whom or in whose name a contract has been
made for another’s benefit”; and (7) parties authorized by
statute. Fed. R. Civ. P. 17(a). “The list in Rule 17(a) is
not meant to be exhaustive and anyone possessing the
right to enforce a particular claim is a real party in inter-

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 20
est even if that party is not expressly identified in the
rule.” Wright & Miller § 1543 (emphasis added).
As stated in Wright & Miller, the effect of Rule 17(a)
“is that the action must be brought by the person who,
according to the governing substantive law, is entitled to
enforce the right.” Id. (emphasis added). Indeed, “[t]he
basis for the real-party-in-interest rule was stated by the
Advisory Committee in its Note to the 1966 amendment
to Rule 17(a)” as follows:
[T]he modern function of the rule in its negative
aspect is simply to protect the defendant against a
subsequent action by the party actually entitled to
recover, and to ensure generally that the judg-
ment will have its proper effect as res judicata.
Id. The treatise also notes that, “[i]n order to apply Rule
17(a)(1) properly, it is necessary to identify the law that
created the substantive right being asserted by plaintiff.”
Id.
Two questions we must answer, then, are (1) what
“right” is being enforced; and (2) who is “entitled” to
enforce that right. In the context of IPRs—adversarial
proceedings that offer “a second look at an earlier admin-
istrative grant of a patent,” Cuozzo, 136 S. Ct. at 2144—
the “right” being enforced is a petitioner’s right to seek
administrative reexamination of the patentability of
issued claims as an alternative to invalidating those
claims in a judicial proceeding. Thus, the 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.
We now turn to the second question: who is entitled
to bring an IPR? Under the provisions of the AIA, “a
person who is not the owner of a patent” may petition for
IPR, “[s]ubject to the provisions of this chapter.” 35

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 21
U.S.C. § 311(a). One of these limiting provisions is
§ 315(b). A second is § 315(a), a related provision that
prohibits an IPR from being “instituted if, before the date
on which the petition for such a review is filed, the peti-
tioner or real party in interest filed a civil action challeng-
ing the validity of a claim of the patent.” Other provisions
place requirements on the petition itself. See id.
§§ 311(b)–(c), 312.
Structurally, the AIA permits the filing of an IPR by
anyone who is neither the patent owner nor a petitioner,
“real party in interest,” or “privy of the petitioner” whose
petition would be time-barred under either § 315(a) or
§ 315(b) from filing an IPR petition. We note that the
universe of permissible IPR petitioners seeking to chal-
lenge patent claims is significantly larger than the uni-
verse of plaintiffs who would have Article III standing to
bring a declaratory judgment action challenging the
validity of a patent in federal court. The PTO recognizes
this unique feature of IPRs, stating in its Trial Practice
Guide that “[t]he typical common-law expression of the
‘real party-in-interest’ (the party ‘who, according to the
governing substantive law, is entitled to enforce the
right’) does not fit directly into the AIA trial context”
because “[t]hat notion reflects standing concepts, but no
such requirement exists in the IPR or PGR context.” 77
Fed. Reg. at 48,759. Although we agree with the PTO’s
assessment, we do not think that this reality renders the
meaning of the term “real party in interest” ambiguous in
the IPR context.
As a starting point, Congress clearly did not intend
for the term “real party in interest” to be interpreted so
broadly as to mean that “anyone who otherwise would be
able to petition for IPR” will always be deemed the sole
real party in interest. Such an interpretation would
render the terms “petitioner” and “privy of the petitioner”
in § 315(b)—and § 312(a)’s obligation to identify all real
parties in interest—meaningless. It would also render

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 22
much of § 315(e)’s two estoppel provisions meaningless.
These provisions prevent not only petitioners, but also
real parties in interest, from requesting or maintaining
alternative administrative attacks or asserting subse-
quent invalidity challenges in federal court “on any
ground that the petitioner raised or reasonably could have
raised during that inter partes review.” 35 U.S.C.
§§ 315(e)(1), (2).3
Just how close must the relationship between the real
party in interest and the IPR petitioner (or the petition)
be? Wright & Miller and other authorities provide exam-
ples of legal relationships in which a nonparty is or is not
a “real party in interest.” Two are particularly relevant in
this case. First, “[a]s a general rule, a person who is an
attorney-in-fact or an agent solely for the purpose of
bringing suit is viewed as a nominal rather than a real
party in interest and will be required to litigate in the
3 The legislative history of § 315(e), which we dis-
cuss in greater detail below, confirms this view, with one
Senator stating:
The present bill also incorporates S. 3600’s exten-
sion of the estoppels and other procedural limits
in sections 315 and 325 to real parties in interest
and privies of the petitioner. . . . [P]rivity is an
equitable rule that takes into account the ‘‘practi-
cal situation,’’ and should extend to parties to
transactions and other activities relating to the
property in question.
157 Cong. Rec. S1376 (Mar. 8, 2011) (statement of Sen.
Kyl) (emphasis added). Although the second sentence of
this Senator’s statement only explicitly mentions privity,
the common-law rules governing real parties in interest
are similarly applicable to parties to transactions and
other activities relating to particular property.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 23
name of the principal rather than in the agent’s own
name.” Wright & Miller § 1553. That said, an agent with
an ownership interest in the subject matter of the suit, or
one who is the trustee of an express trust or a party in
whose name a contract has been made for the benefit of
another, may qualify as a real party in interest. Id.
Second, an incorporated or unincorporated association “is
not the appropriate party for bringing suit to assert the
personal rights of its members” absent statutory authori-
ty to do so. Id. § 1552. “[T]he association may become the
real party in interest by acquiring the rights of its mem-
bers by a bona-fide assignment.” Id.
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. See Trial Practice
Guide, 77 Fed. Reg. at 48,759. Indeed, the PTO correctly
recognizes that the related concept of privity “is an equi-
table rule that takes into account the ‘practical situation,’
and should extend to parties to transactions and other
activities relating to the property in question.” Id. (em-
phasis added) (citing 157 Cong. Rec. S1376 (Mar. 8, 2011)
(statement of Sen. Kyl)).
At the same time, the common law aims to protect de-
fendants in one action from later legal actions brought by
related parties who are actually entitled to relief. As
stated in Wright & Miller, “[t]he ‘negative’ function of the
rule governing who is a real party in interest enables a
defendant to present defenses he has against the real
party in interest to protect the defendant against a subse-
quent action by the party actually entitled to relief, and to
ensure that the judgment will have proper res judicata
effect.” Wright & Miller § 1543 n.3 (citing Key Construc-
tors, Inc. v. Harnett Cty., 315 F.R.D. 179, 183 (E.D.N.C.
2016)). This notion applies with equal force in the IPR
context—a patent owner dragged into an IPR by a peti-

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 24
tioner, who necessarily has an interest in canceling the
patent owner’s claims, should not be forced to defend
against later judicial or administrative attacks on the
same or related grounds by a party that is so closely
related to the original petitioner as to qualify as a real
party in interest. Section 315(e) is designed to prevent
this very possibility by estopping real parties in interest
and privies of the petitioner from challenging claims in
later judicial or administrative proceedings on any ground
that the IPR petitioner raised or reasonably could have
raised during the IPR.
2. Legislative History
Turning to the legislative history, we find nothing
that suggests Congress intended for the term “real party
in interest” to have a meaning that departs from its
common-law origins. Instead, it reveals that Congress
intended for it to have an expansive formulation. A 2011
House Report on the AIA explains that, “[i]n utilizing the
post-grant review process, petitioners, real parties in
interest, and their privies are precluded from improperly
mounting multiple challenges to a patent or initiating
challenges after filing a civil action challenging the validi-
ty a claim in the patent.” H.R. Rep. No. 112–98, at 48
(2011), reprinted in 2011 U.S.C.C.A.N. 67, 78 (emphasis
added). In the following paragraph, the report makes
clear that Congress “recognizes the importance of quiet
title to patent owners to ensure continued investment
resources.” Id. Thus, “[w]hile this amendment is intend-
ed to remove current disincentives to current administra-
tive processes, the changes made by it are not to be used
as tools for harassment or a means to prevent market
entry through repeated litigation and administrative
attacks on the validity of a patent.” Id. (emphases added).
Other statements from members of Congress reveal
that the terms “real party in interest” and “privy” were
included in § 315 to serve two related purposes: (1) to

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 25
ensure that third parties who have sufficiently close
relationships with IPR petitioners would be bound by the
outcome of instituted IPRs under § 315(e), the related IPR
estoppel provision; and (2) to safeguard patent owners
from having to defend their patents against belated
administrative attacks by related parties via § 315(b).
For example, during the March 2011 Senate debates,
Senator Kyl stated that “[t]he present bill also incorpo-
rates S. 3600’s extension of the estoppels and other proce-
dural limits in sections 315 and 325 to real parties in
interest and privies of the petitioner.” 157 Cong. Rec.
S1376 (Mar. 8, 2011) (statement of Sen. Kyl). He contin-
ued that “privity is an equitable rule that takes into
account the ‘practical situation,’ and should extend to
parties to transactions and other activities relating to the
property in question.” Id. (emphases added). He then
stated that, “[i]deally, extending could-have-raised estop-
pel to privies will help ensure that if an inter partes
review is instituted while litigation is pending, that
review will completely substitute for at least the patents-
and-printed-publications portion of the civil litigation.”
Id. One of his colleagues, Senator Schumer, expressed a
similar belief, stating that “[a] ‘privy’ is a party that has a
direct relationship to the petitioner with respect to the
allegedly infringing product or service.” Id. at S5432
(Sept. 8, 2011) (statement of Sen. Schumer).
3. Conclusion Regarding Statutory Interpretation
We conclude that, with respect to the dispute in this
case, § 315(b) is unambiguous: Congress intended that
the term “real party in interest” have its expansive com-
mon-law meaning. Because “the statutory language is
unambiguous and ‘the statutory scheme is coherent and
consistent,’” our inquiry ceases and “we need not contem-
plate deferring to the agency’s interpretation.” Barnhart,
534 U.S. at 450, 462 (first quoting Robinson, 519 U.S. at
340; then quoting Chevron, 467 U.S. at 842–43).

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 26
C. The Board Took an Unduly Restrictive View of “Real
Party in Interest” and Committed Other Errors
The Board made several critical errors in this case.
First, it made certain factual findings that are not sup-
ported by substantial evidence and, at various points,
failed to consider the entirety of the record. Second, it
failed to adhere to the expansive formulation of “real
party in interest” that is dictated by the language, struc-
ture, purpose, and legislative history of § 315(b).
Determining whether a non-party is a “real party in
interest” demands a flexible approach that takes into
account both equitable and practical considerations, with
an eye toward determining whether the non-party is a
clear beneficiary that has a preexisting, established
relationship with the petitioner. Indeed, the Trial Prac-
tice Guide, on which the Board relied, suggests that the
agency understands the “fact-dependent” nature of this
inquiry, explaining that the two questions lying at its
heart are whether a non-party “desires review of the
patent” and whether a petition has been filed at a non-
party’s “behest.” Trial Practice Guide, 77 Fed. Reg. at
48,759.
Although the Board quoted the portion of the Trial
Practice Guide expressing these two questions and the
Guide’s statement that “multiple factors [are] relevant to
the question of whether a non-party may be recognized
as” a real party in interest in its institution decision, J.A.
1437, it did not apply these principles in its § 315(b)
analysis. For example, the Board did not meaningfully
examine two factors the Trial Practice Guide deems
“[r]elevant”: Salesforce’s relationship with RPX and “the
nature of” RPX as an entity. 77 Fed. Reg. 48,760. The
Trial Practice Guide lists these factors after posing a
hypothetical in which a trade association to which “Party
A” belongs, “Trade Association X,” files an IPR. Although
the Guide explains that, “if Trade Association X files an

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 27
IPR petition, Party A does not become a ‘real party-in-
interest’ or a ‘privy’ of the Association simply based on its
membership in the Association,” it also provides that this
reality does not mean “that Party A’s membership in
Trade Association X . . . in th[is] scenario[] is irrelevant to
the determination . . . .” Id. Instead, “deeper considera-
tion of the facts in the particular case is necessary to
determine whether Party A is a ‘real party-in-interest’ or
a ‘privy’ of the petitioner.” Id.
We conclude that the Board’s consideration of the evi-
dence was impermissibly shallow, both under the Trial
Practice Guide and the common law it incorporates. The
evidence of record reveals that RPX, unlike a traditional
trade association, is a for-profit company whose clients
pay for its portfolio of “patent risk solutions.” J.A. 73.
These solutions help paying members “extricate them-
selves from NPE lawsuits.” J.A. 29. The company’s SEC
filings reveal that one of its “strategies” for transforming
the patent market is “the facilitation of challenges to
patent validity,” one intent of which is to “reduce expens-
es for [RPX’s] clients.” J.A. 31. Yet the Board did not
consider these facts, which, taken together, imply that
RPX can and does file IPRs to serve its clients’ financial
interests, and that a key reason clients pay RPX is to
benefit from this practice in the event they are sued by an
NPE.
This implication becomes stronger when one considers
the discovery produced in this case. First, even though it
is undisputed that RPX nominally adhered to its “best
practices,” which prohibit it from discussing IPRs with
clients who do not agree to be named as real parties in
interest, J.A. 80, these practices do not bear on whether
RPX files IPR petitions to benefit specific clients that
previously have been accused of patent infringement.
Moreover, several of the factors that RPX considers when
identifying potential IPR candidates are highly probative
of whether particular individual clients would benefit

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 28
from having RPX file IPR petitions challenging patents
they have been accused of infringing. These include
(1) the number of patents “asserted in the campaign”;
(2) the likelihood of a new validity challenge by another
entity; (3) the number of “RPX clients, including those
covered under RPX insurance policies, in suit”; (4) the
“estimated cost of litigation defense”; and (5) “potential
reputational benefits” to RPX. J.A. 80–81. Each of these
factors is suggestive of whether any given RPX client
would benefit from having RPX file an IPR petition chal-
lenging patents that have been asserted against that
client in district court. Yet, again, the Board did not
examine these factors, in contravention of its obligations
under the Administrative Procedure Act (“APA”). Falkner
v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006) (“This court
applies the standards of the Administrative Procedure Act
(‘APA’) in reviewing decisions of the Board.” (citation
omitted)).4
4 We also note that the circumstances surrounding
RPX’s creation of its Best Practices Guide—none of which
the Board considered—cast additional doubt on the com-
pany’s motivations. On June 5, 2014, a different panel of
the Board issued a decision denying institution of an IPR
in RPX Corp. v. Virnetx Inc., explaining why it believed
that non-party Apple Inc. was a real party in interest in
that case. No. IPR2014-00171 (P.T.A.B. June 5, 2014),
Paper No. 49. The Board held that, “based on the record
presented, the interactions between RPX and Apple show
an implicit authorization to challenge the Virnetx Pa-
tent.” Id., slip. op. at 9. Fewer than forty days later, RPX
began following its Best Practices Guide, which it claims
“help[s] ensure that RPX is complying with all contractual
obligations and to ensure that RPX is and will be deemed
by the PTAB and district courts as the sole real party-in-

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 29
“[S]ubstantial evidence review ‘requires an examina-
tion of the record as a whole, taking into account both the
evidence that justifies and detracts from an agency’s
opinion.’” Princeton Vanguard, LLC v. Frito-Lay N. Am.,
Inc., 786 F.3d 960, 970 (Fed. Cir. 2015) (quoting Falkner,
448 F.3d at 1363); see Butte Cty. v. Hogen, 613 F.3d 190,
194 (D.C. Cir. 2010) (explaining that an agency’s refusal
to consider evidence bearing on the issue before it is, by
definition, arbitrary and capricious within the meaning of
5 U.S.C. § 706, which governs review of agency adjudica-
tions, meaning that the agency must take account of all
the evidence of record, including that which detracts from
the conclusion the agency ultimately reaches). “Our
review under that standard ‘can only take place when the
agency explains its decisions with sufficient precision,
including the underlying factfindings and the agency’s
rationale.’” Princeton Vanguard, 786 F.3d at 970 (quot-
ing Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d
1352, 1357 (Fed. Cir. 2000)). None of the Board’s institu-
tion decisions nor its final written decisions grapple with
the facts outlined above, all of which bear directly on the
issue of whether, and under what circumstances, RPX
takes a particular client’s interests into account when
determining whether to file IPR petitions. The Board’s
selective weighing of the record evidence does not pass
muster under the APA. “Just as it may not short-cut its
legal analysis, the Board may not short-cut its considera-
tion of the factual record before it.” Id.
The facts and arguments that the Board did consider
do not persuade us that its decision not to consider the
interest in all validity challenges unless another real
party-in-interest is expressly identified.” J.A. 80 (empha-
ses added); id. at 1227 ¶ 14 (disclosing the date on which
the Best Practice Guide was created).

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 30
aforementioned evidence was harmless. First, although
there is little evidence regarding RPX’s weighing of its
“best practices” factors in this case, its Vice President of
Client Relations, Chuang, did testify that:
• RPX considered AIT a non-practicing entity,
J.A. 1235–36 ¶¶ 35–37;
• “RPX filing [these IPRs] would likely result in
positive reputational benefits with the large
number of companies (clients and prospects
alike) in the software industry,” J.A. 1237–38
¶ 41;
• After Salesforce’s CBM petitions were denied,
“it was highly unlikely that any party other
than RPX would challenge the AIT Patents be-
fore the Patent Office unless and until the AIT-
Salesforce Litigation was resolved,” J.A. 1238–
39 ¶ 43; and
• Salesforce was time-barred from challenging
the ’482 and ’111 patents before the PTO, J.A.
1239 ¶ 43.
RPX did not point to any other clients whom it believed
might be at risk of infringement claims arising out of the
patents on which the IPR was instituted. Indeed, it
conceded that no one else would likely have an incentive
to challenge these particular patents. It simply cited
testimony that its reputation might be boosted by the
filing of an IPR which could serve to protect this client.
Given that one of RPX’s publicly stated business solutions
is to file IPRs where its clients have been sued by non-
practicing entities to “reduce expenses for [its] clients,”
J.A. 31, and that any IPR petitions Salesforce might have
wanted to file would have been time-barred, this evidence
at least suggests that RPX may have filed the three IPR
petitions, in part, to benefit Salesforce.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 31
The Board emphasized Chuang’s testimony that “[t]he
primary factor driving RPX’s decision to file [the] IPRs”
was “the ability to file a very strong petition against a low
quality patent in the software sector before the NPE
extracted its price from its first litigation and proceeded
to assert the patents more broadly against other targets,”
which would “prevent multiple future lawsuits against
clients, prospects, and the industry at large and, as a
result, provide significant reputational benefits to RPX.”
J.A. 1398. The Board seemed to believe that, so long as
RPX articulated an independent interest in pursuing the
IPRs, that was enough to make it—and not Salesforce—
the real party in interest. But, as discussed above,
§ 315(b) does not presume the existence of only one real
party in interest—it is not an either-or proposition. The
point is not to probe RPX’s interest (it does not need any);
rather, it is to probe the extent to which Salesforce—as
RPX’s client—has an interest in and will benefit from
RPX’s actions, and inquire whether RPX can be said to be
representing that interest after examining its relationship
with Salesforce. The Board’s focus on RPX’s motivations
to the exclusion of Salesforce’s reveals its misunderstand-
ing of controlling legal principles.5
A different Board panel recently focused on similar
connections between a time-barred party (Springpath)
and the nominal petitioner (Cisco) when determining that
a petition was barred for failing to identify all real parties
5 As noted above, the Board never required RPX to
assert or prove that “the industry at large” would be
impacted by or have an interest in these patents or these
IPRs. Thus, even if it were enough for RPX to prove that
it had other clients who might benefit from the invalida-
tion of the patents at issue, the Board did not require RPX
to prove that to be true.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 32
in interest. See Cisco Sys., Inc. v. Hewlett Packard Enter.
Co., No. IPR2017-01933 (P.T.A.B. Mar. 16, 2018), Paper
No. 9. There, after citing the Trial Practice Guide for the
proposition that Boards can take into account “whether a
non-party ‘funds and directs and controls’ an IPR petition
or proceeding; the non-party’s relationship with the
petitioner; the non-party’s relationship to the petition
itself, including the nature and/or degree of involvement
in the filing; and the nature of the entity filing the peti-
tion,” id. at 13 (citing 77 Fed. Reg. at 48,760), the Board
found that the patent owner “present[ed] unrebutted
evidence that Petitioner invested 34 million dollars into
Springpath prior to the filing of the Petition and had
attained ‘board-level representation’ at Springpath—all of
which establishes a longstanding relationship between
Petitioner and Springpath,” id. at 14. According to the
Board, “[w]hile this evidence does not show control or
funding by Springpath of this IPR, it can be considered as
evidence that Cisco is representing Springpath’s interest,
rather than its own and, thus, it is pursuing its Petition
as a proxy for Springpath.” Id.
The Board went on to determine that the evidence
was “sufficient to demonstrate a proxy relationship such
that Cisco was a proxy for Springpath in filing the Peti-
tion,” crediting the patent owner’s assertion that “[i]t is
Springpath that is accused of infringing the ’799 Patent in
the district court litigation, not Cisco,” that “Cisco is not,
and has never been, a defendant in the Springpath dis-
trict court litigation,” and that “[n]one of Cisco’s products
have been accused of patent infringement in that litiga-
tion.” Id. at 15 (citing 77 Fed. Reg. 48,759 for the proposi-
tion that a “real party-in-interest” is “the party that
desires review of the patent”). Finding that Cisco had
failed to explain adequately what “independent reason” it
had to file the IPR petition, the Board found it to be a
proxy of Springpath. Id. at 16. Here, the Board’s failure
to consider Salesforce’s interest in the IPRs, its decision

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 33
not to examine critically either RPX’s business model, its
underestimation of the relevance, in the context presented
here, of the fact that Salesforce and RPX had overlapping
members on their respective boards of directors, J.A.
1401, and its decision to accept at face value RPX’s expla-
nation of its own interest in the IPRs indicates that the
Board did not adequately assess whether Salesforce
actually “desire[d] review of the patent[s].” 77 Fed. Reg.
at 48,759.
Next, the Board relied on Chuang’s averment that
“RPX did not have any contractual obligation to file [the]
IPRs or any ‘unwritten,’ implicit or covert understanding
with Salesforce that it would do so.” J.A. 1398 (citation
omitted). As explained more fully below, however, a non-
party to an IPR can be a real party in interest even with-
out entering into an express or implied agreement with
the petitioner to file an IPR petition.
The Board also cited Chuang’s testimony that RPX
followed its Best Practices Guide in this case and accord-
ingly “had no communication with Salesforce whatsoever
regarding the filing of IPR petitions against the AIT
Patents before the AIT IPRs were filed.” J.A. 1229 ¶ 20.
RPX also submitted evidence that it “did not know before
filing the AIT IPRs what (if any) impact an IPR filing
would have on RPX’s relationship with Salesforce,” and
that it even considered whether Salesforce might react
negatively to RPX’s filing of the IPR petitions. J.A. 1240
¶ 46. Chuang testified that “defendants often express
concern about validity challenges potentially emboldening
a plaintiff if unsuccessful or creating conflicts with their
litigation strategy,” and that RPX did not know what, if
any, prior art challenges Salesforce may be planning in
the litigation. J.A. 1240 ¶ 46. He further testified that
RPX did not have any contractual obligation to file the
IPRs or any unwritten, implicit or covert understanding
with Salesforce that it would do so. J.A. 1239 ¶ 45.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 34
Chuang did not, however, testify that RPX actually
believed Salesforce would have reacted negatively to
RPX’s filing of IPR petitions challenging claims of the ’482
and ’111 patents. Rather, the evidence submitted indi-
cates the company’s understanding that the very chal-
lenges to validity included in the IPR petitions were
challenges Salesforce would like to have made if not time-
barred from doing so. Indeed, Chuang’s own averments
about the timing and content of the communications
between RPX and Salesforce in relation to the Salesforce
litigation and the denied CBM petitions indicate the
contrary.6 The evidence might actually indicate that RPX
6 Chuang testified that “RPX originally looked at
the AIT Patents after the AIT-Salesforce Litigation was
filed” pursuant to its “customary practice” of monitoring
newly filed patent infringement lawsuits to identify suits
brought by NPEs. J.A. 1235 ¶¶ 35–36. Moreover, accord-
ing to Chuang, RPX “most likely” identified the ’482 and
’111 patents as “good potential IPR candidates that
aligned well with the selection criteria” set forth in the
Best Practices Guide during a meeting held on February
20, 2015. J.A. 1236–37 ¶¶ 37–40. This was less than
three weeks after Salesforce’s CBM petitions were denied.
Approximately five weeks after the Board denied
Salesforce’s CBM petitions, RPX asked Salesforce during
a phone call “if Salesforce would like RPX to reach out to
AIT to try to obtain information regarding AIT’s expecta-
tions for its litigation campaign in view of the fact that
Salesforce’s petition for CBM review had been denied.”
J.A. 1232 ¶ 27. According to Chuang, Salesforce indicated
that it was not interested in having RPX reach out to AIT
at that time, but would inform RPX if circumstances
changed in the future. J.A. 1232–33 ¶ 27. Finally, in
April or May 2015, “Salesforce began to bring up the
subject of the AIT-Salesforce Litigation,” and “RPX im-

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 35
worked to ascertain, with a strong degree of confidence,
its client’s desires, while taking last-minute efforts to
avoid obtaining an express statement of such desires. The
law has a label for this: willful blindness. See Global-
Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 769
(2011) (“While the Courts of Appeals articulate the doc-
trine of willful blindness in slightly different ways, all
appear to agree on two basic requirements: (1) the de-
fendant must subjectively believe that there is a high
probability that a fact exists and (2) the defendant must
take deliberate actions to avoid learning of that fact.”
(footnote and citation omitted)).
AIT accused RPX of engaging in this very practice.
See J.A. 1368. But the Board, without providing any
reasoned explanation, wrote that it was “not persuaded
that the evidence of record supports th[e] assertion[s]”
that RPX has “adopted a ‘willful blindness’ strategy” and
“intentionally operates its business to circumvent the
PTAB’s RPI case law.” J.A. 1400. It further explained
that “RPX has provided declaration testimony that ex-
plains RPX’s ‘best practices’ for identifying RPIs that
contradicts Patent Owner’s assertion.” J.A. 1400 (empha-
sis added) (citing paragraphs 14–19 of Chuang’s declara-
tion). Substantial evidence does not support this
determination—nothing in these paragraphs, or anything
mediately indicated that it was not inclined to discuss
that matter, and the topic of discussion turned else-
where.” J.A. 1233 ¶ 28. Had the Board examined any of
this evidence, it might have interpreted Salesforce’s
change of heart and RPX’s effort not to acquire any addi-
tional information as a mutual desire to avoid entering
into an express agreement under which RPX would file
IPR petitions challenging AIT’s patents for Salesforce’s
benefit.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 36
else in Chuang’s declaration or RPX’s reply to AIT’s
preliminary response on real-party-in-interest “contra-
dicts” AIT’s theory that RPX filed IPR petitions challeng-
ing the two patents asserted in the Salesforce action to
benefit Salesforce, where Salesforce itself was time-barred
from filing petitions. The insufficiency of the Board’s
reasoning is especially important because RPX bore the
burden of persuasion on this issue, as the Board itself
recognized. J.A. 1396–97 (recognizing that, “[w]hen a
patent owner provides sufficient evidence prior to institu-
tion that reasonably brings into question the accuracy of a
petitioner’s identification of RPIs, the overall burden
remains with the petitioner to establish that it has com-
plied with the statutory requirement to identify all [real
parties in interest].” (citing Zerto, No. IPR2014-01295,
slip op. at 6–7)).7
In sum, we believe that the Board’s determination
that Salesforce was not a real party in interest under
§ 315(b) relied on an impermissibly narrow understanding
7 This has been and continues to be the Board’s po-
sition with respect to the placement of the burden of
persuasion on this question. See, e.g., Dep’t of Justice v.
Iris Corp. Berhad, No. IPR2016-00497, slip op. at 5
(P.T.A.B. Jan. 22, 2018), Paper No. 50 (“The real-party-in-
interest and privity requirements are components of a
petitioner’s case in chief; establishing a failure to meet
those requirements is not an affirmative defense on which
a patent owner bears the burden.”); Atlanta Gas Light Co.
v. Bennett Regulator Guards, Inc., No. IPR2013-00453,
slip op. at 6–8 (P.T.A.B. Jan. 6, 2015), Paper No. 88
(“[T]he burden remains with the petitioner to establish
that it has complied with the statutory requirement to
identify all the real parties in interest.” (emphasis add-
ed)).

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 37
of the common-law meaning of the term, was not based on
consideration of the entirety of the administrative record,
and seemingly misallocated the burden of proof. Any one
of these errors might warrant vacatur—together, they
compel it. The Supreme Court “has stressed the im-
portance of not simply rubber-stamping agency factfind-
ing,” explaining that the “APA requires meaningful
review” and that “its enactment meant stricter judicial
review of agency factfinding than Congress believed some
courts had previously conducted.” Dickinson v. Zurko,
527 U.S. 150, 162 (1999) (holding that APA standards
governing judicial review of agency findings and conclu-
sions apply when the Federal Circuit reviews PTO deci-
sions). At the same time, the Court explained that the
APA requires courts to “review[] an agency’s reasoning to
determine whether it is ‘arbitrary’ or ‘capricious.’” Id. at
164 (citing SEC v. Chenery Corp., 318 U.S. 80, 89–93
(1943)). Relying on these principles, we have held that
“substantial evidence review ‘requires an examination of
the record as a whole, taking into account both the evi-
dence that justifies and detracts from an agency’s opin-
ion.’” Princeton Vanguard, 786 F.3d at 970 (quoting
Falkner, 448 F.3d at 1363). The Board did not consider
critical evidence proffered by AIT. Nor did it adequately
explain why it rejected certain of AIT’s common law
theories, particularly where RPX bore the burden of
proving its petitions were not time-barred under § 315(b).
Finally, we note that several other legal theories de-
scribed in Wright & Miller that were not considered by
the Board may apply to the facts of this case. The PTO’s
rules and Trial Practice Guide expressly reference Wright
& Miller as an authority its tribunals should consider
when rendering real party-in-interest determinations,
and we hold that it was error for the Board not to have

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 38
considered these theories, particularly because AIT raised
arguments that directly implicate them.8
For instance, § 1553 of Wright & Miller explains that,
“[a]s a general rule, a person who is an attorney-in-fact or
an agent solely for the purpose of bringing suit is viewed
as a nominal rather than a real party in interest and will
be required to litigate in the name of the principal rather
than in the agent’s own name.” Wright & Miller § 1553.
This section clarifies that an agent with an ownership
interest in the subject matter of the suit, or one who is the
trustee of an express trust or a party in whose name a
contract has been made for the benefit of another, may
qualify as a real party in interest. Id. AIT effectively
raised this argument below, labeling RPX as “an exten-
sion of the client’s in-house legal team” that helps “selec-
tively clear” liability for infringement as part of its
“patent risk management solutions.” J.A. 17. Depending
on the nature of the parties’ relationship, an entity can
serve as an agent to a principal and file an IPR on the
principal’s behalf even without the two formally agreeing
that the agent will do so. See Restatement (Third) of
Agency, § 1.01 cmt. c (Am. Law Inst. 2006) (“Thus, a
person may be an agent although the principal lacks the
right to control the full range of the agent’s activities, how
the agent uses time, or the agent’s exercise of professional
judgment.”). There is no indication that the Board con-
8 While AIT’s time-bar arguments below centered
on the theory that Salesforce was a real party in interest,
rather than a privy of RPX, AIT repeatedly urged that
RPX was a “proxy” for Salesforce and raised arguments
resting on theories relating thereto. See J.A. 17, 1367–68.
On remand, if necessary, the Board must address these
other theories focused on the actual relationship between
Salesforce and RPX.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 39
sidered AIT’s contention that Salesforce is a real party in
interest because RPX acted as its attorney-in-fact or its
express or implied litigating agent.
Similarly, a related section of a different treatise dis-
cusses “preclusion by consent and estoppel by conduct,”
beginning with the remark that “[t]he repose and reliance
interests generated by a judgment may deserve protection
against nonparties for reasons of acquiescence that depart
from any of the common ‘privity’ theories of participation,
representation, or property.” 18A Charles Alan Wright,
Arthur R. Miller, & Edward H. Cooper, Federal Practice
& Procedure § 4453 (2d ed. 2018) (“Wright, Miller, &
Cooper”) (emphasis added). The treatise continues by
noting that, “[a]lthough acquiescence furnishes the most
apt single label for these reasons, several distinctive
principles can be identified.” Id. It then provides that:
One, relying on actual consent to be bound, may
fairly be treated as an aspect of preclusion by
judgment. The others are better viewed as species
of apparent authority or estoppel by conduct; the
distinctive feature of these theories is that the ap-
parent authority or estoppel arises from conduct
that relates to litigation between other persons.
Such conduct may include conduct of a nonparty
that apparently authorizes a party to represent
his interests; acquiescence in a situation that has
been created by a prior judgment; and failure to
dispel a party’s reasonable belief that the nonpar-
ty will honor the judgment in pending litigation.
Id. (emphases added). In this case, AIT argued that RPX
had apparent authority to file the IPR petitions to benefit
Salesforce, pointing to RPX’s public statement that its
“interests are 100% aligned with those of [its] clients” and

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 40
to the timing of Salesforce’s substantial payments to RPX.
J.A. 20. The Board erred in its § 315(b) analysis by not
considering this theory.9
Importantly, we do not question the Board’s authority
to make findings of fact, or our obligation to defer to those
findings when not supported by substantial evidence.
Where, however, the Board made its findings without
considering the entirety of the evidentiary record, appears
to have imposed—even if inadvertently—the burden of
proving that RPX was not the only real party in interest
on AIT, and assessed the evidence it did consider through
an incorrect legal lens, we cannot find that substantial
evidence supports the Board’s ultimate conclusion.
III. CONCLUSION
For the foregoing reasons, we vacate the Board’s 428
and 111 Decisions, and remand for further proceedings.
The Board’s decisions in this case neither considered the
full range of relationships under § 315(b) and the common
law that could make Salesforce a real party in interest
with respect to this IPR nor properly applied the princi-
ples articulated in the Trial Practice Guide upon which it
purported to rely. The Board also failed to comply with
its obligations under the APA to consider the evidence
that justifies and detracts from its conclusions and to
explain sufficiently its rationale for rejecting AIT’s argu-
ments and theories.
We do not reach the merits of any of the patentability
arguments raised in AIT’s opening brief. In its discretion,
the Board may authorize additional discovery relevant to
9 In addition, § 1552 of Wright & Miller and § 4456
of Wright, Miller, & Cooper examine the rights of associa-
tions, and also appear to be relevant to the undisputed
facts of this case.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 41
whether Salesforce is either a real party in interest or a
privy of RPX for purposes of § 315(b). Additional discov-
ery may be particularly warranted in the face of the non-
frivolous challenge made to date by AIT to RPX’s some-
what bald assertions regarding who the real parties in
interest are in these IPRs.
VACATED AND REMANDED
COSTS
Costs to Applications in Internet Time, LLC.

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United States Court of Appeals
for the Federal Circuit
______________________
APPLICATIONS IN INTERNET TIME, LLC,
Appellant
v.
RPX CORPORATION,
Appellee
______________________
2017-1698, 2017-1699, 2017-1701
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-01750, IPR2015-01751, IPR2015-01752.
______________________
REYNA, Circuit Judge, concurring.
I concur with my colleague Judge O’Malley’s opinion
that the Patent Trial and Appeal Board (“Board”) erred in
its determination that RPX’s petitions for inter partes
review (“IPR”) are not time barred under 35 U.S.C.
§ 315(b).
But I also conclude that the Board erred by failing to
fully address the question of whether RPX’s petitions are
time barred under the privity provision of § 315(b). This
error constitutes an independent ground for vacating and
remanding.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 2
I. P RIVITY U NDER § 315(B)
The Leahy-Smith America Invents Act (“AIA”) pro-
vides that the Patent and Trademark Office (“PTO”) may
not institute an IPR where the petition “is filed more than
1 year after the date on which the petitioner, the real
party in interest, or privy of the petitioner is served with
a complaint alleging infringement of the patent.” 35
U.S.C. § 315(b); Pub. L. No. 112-29, § 3(b)(1), 125 Stat.
284, 287 (2011).
Neither the AIA nor the Patent Act (35 U.S.C. §§ 1 et
seq) defines “privity” or “privy of the petitioner.” Nor has
this court had ample opportunity to address the legal
standards for privity under § 315(b), primarily because
time bar determinations under § 315(b) were not reviewa-
ble until the en banc court recently held that “time-bar
determinations under § 315(b) are reviewable by this
court,” and overruled earlier panel decisions to the con-
trary. Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364,
1374 (Fed. Cir. 2018) (en banc).
In Wi-Fi One, we recognized that, as a well-
established common law concept, privity under § 315(b)
should be examined under the backdrop of the “cardinal
rule of statutory construction that where Congress adopts
a common-law term without supplying a definition, courts
presume that Congress knows and adopts the cluster of
ideas that were attached to the term.” WesternGeco LLC
v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir.
2018) (quoting FAA v. Cooper, 566 U.S. 284, 291–92
(2012)) (quotation marks omitted); see Wi-Fi One, LLC v.
Broadcom Corp., 887 F.3d 1329, 1335 (Fed. Cir. 2018)
(“Wi-Fi One Remand”) (“Congress intended to adopt
common law principles to govern the scope of the section
315(b) one-year bar.”). The AIA’s legislative history also
recognizes the common law meanings for privity. See
WesternGeco, 889 F.3d at 1317; Wi-Fi One Remand, 887
F.3d at 1335. Congress did not leave to the PTO’s discre-

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 3
tion to determine the legal standards for privity; it is a
question well within the province of the judiciary. See
McDonnell Douglas Corp. v. United States, 323 F.3d 1006,
1014 (Fed. Cir. 2003) (holding that “determination of legal
standards is a pure issue of law” that we review de novo).
Privity is a well-recognized common law concept that
is primarily based on the legal relationship between par-
ties. The general definition of privity is “[t]he connection
or relationship between two parties, each having a legally
recognized interest in the same subject matter (such as a
transaction, proceeding, or piece of property).” Privity,
Black’s Law Dictionary (10th ed. 2014). The Supreme
Court has noted that “[t]he substantive legal relationships
justifying preclusion are sometimes collectively referred to
as ‘privity.’” See Taylor v. Sturgell, 553 U.S. 880, 894 n.8
(2008).
The roots of privity are grounded in the general prin-
ciple of due process that one is not bound by a judgment
“in a litigation in which he is not designated as a party or
to which he has not been made a party by service of
process.” Hansberry v. Lee, 311 U.S. 32, 40 (1940) (quot-
ing Pennoyer v. Neff, 95 U.S. 714 (1877)). On the other
side of the same coin, due process also prohibits a litigant
from taking a second bite at the apple by relitigating the
same case through the persona of another, its privy. See
Green v. United States, 355 U.S. 184, 187 (1957) (explain-
ing that it is “deeply ingrained” in our system of jurispru-
dence that one should not be allowed to make “repeated
attempts” to prosecute a case). Thus, due process protects
both claimants and defendants from abusing the judicial
system, and privity is a key safeguard of this protection.1
1 Privity serves the important purpose of precluding
parties from contesting matters where they had a “full
and fair opportunity to litigate[,] protect[ing] their adver-

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 4
Relevant here, a person not a party to a litigation may
have appeared in that litigation through the persona of
another, its privy. Privity recognizes those instances
where a person that was not a party in an initial litigation
should be precluded from a subsequent litigation involv-
ing the same or a similar claim. See Montana, 440 U.S. at
153–54. Thus, where privity is shown to exist between a
party to a second case and a party who is bound by an
earlier judgment, the party to the second case—who was
not a party in the first action—is also bound by the earlier
judgment. Richards v. Jefferson Cty., 517 U.S. 793, 798
(1996).
In the AIA context, the privity provision of § 315(b)
“prevent[s] successive challenges to a patent by those who
previously have had the opportunity to make such chal-
lenges in prior litigation.” WesternGeco, 889 F.3d at 1319.
Congress deemed the common law principle of privity
important enough that, under §315(b), it withheld from
the PTO authority to institute an IPR where the petition
“is filed more than 1 year after the date on which the
petitioner, the real party in interest, or privy of the peti-
tioner is served with a complaint alleging infringement of
the patent.”
In this case, the question squarely before the PTO
was whether non-party Salesforce.com, Inc. (“Salesforce”)
is a privy of appellee RPX Corporation (“RPX”) such that
RPX should be time barred under § 315(b) because
Salesforce was served with an infringement complaint by
appellant Applications in Internet Time, LLC (“AIT”)
more than one year prior to the filing of the IPRs. The
saries from the expense and vexation attending multiple
lawsuits, conserve[ing] judicial resources, and foster[ing]
reliance on judicial action by minimizing the possibility of
inconsistent decisions.” See Montana v. United States,
440 U.S. 147, 153–54 (1979).

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 5
legal standard applicable to that question is whether
there exists a significant legal relationship between
Salesforce and RPX that establishes privity.
The Supreme Court has provided a non-exhaustive
list for examining whether the legal relationship between
two parties establishes that one is the privy of the other.
The list consists of six categories that create independent
exceptions to the common law rule that normally forbids
non-party preclusion in litigation: (1) an agreement
between the parties to be bound; (2) pre-existing substan-
tive legal relationships between the parties; (3) adequate
representation by the named party; (4) the non-party’s
control of the prior litigation; (5) where the non-party acts
as a proxy for the named party to relitigate the same
issues; and (6) where special statutory schemes foreclose
successive litigation by the non-party (e.g., bankruptcy
and probate). Taylor, 553 U.S. at 894–95. The Supreme
Court noted that this list of six categories is meant to
provide a “framework” for considering non-party preclu-
sion, “not to establish a definitive taxonomy.” Id. at 893
n.6. The Supreme Court did not limit the application of
the framework to either real party in interest or privity; it
equally applies to both. See id. at 894 n.8 (applying in
situations where “nonparty preclusion is appropriate on
any ground” (emphasis added)).
This court has recognized and applied the Taylor
framework for § 315(b) time bar determinations. See
WesternGeco, 889 F.3d at 1319 (listing the six Taylor
categories); Wi-Fi One Remand, 887 F.3d at 1336 (holding
that privity and real party in interest under § 315(b)
should be examined “consistent with general legal princi-
ples,” citing Taylor). In addition, the PTO follows the
caselaw from the Supreme Court and this court. See
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756
(Aug. 14, 2012). The PTO’s Trial Practice Guide provides
that “[t]he USPTO will apply traditional common-law
principles” to evaluate what parties constitute “privies” or

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 6
“real parties in interest.” Id. at 48,759. The Trial Prac-
tice Guide seeks to define “real party in interest” and
“privity” by indicating that a real party in interest is the
party that desires review of the patent or the party on
behalf of which the petition was filed, while explaining
that “[t]he notion of ‘privity’ is more expansive,” encom-
passing legal relationships that are “sufficiently close
such that both [the petitioner and the privy] should be
bound by the trial outcome and related estoppels.” Id.
II. T HE BOARD’S D ECISION
In its arguments before the Board, AIT contended
that RPX’s petitions should be time barred under § 315(b)
because the statute “merely requires that the real party-
in-interest or a privy be time barred without speaking of
control.” J.A. 2024 (emphasis added). AIT argued that
RPX had “an unusually close relationship” with Salesforce
and acted as a “proxy” or an “agent” for Salesforce—
allegations that are traditionally associated with privity.
See Taylor, 553 U.S. at 894. AIT specifically cited Tay-
lor’s “six categories that create an exception to the com-
mon law rule that normally forbids nonparty preclusion in
litigation.” Patent Owner’s Preliminary Response at *5,
RPX Corp., IPR2015–1750 (P.T.A.B. Nov. 27, 2015). AIT
further alleged that this case fit “[u]nder a [Taylor] cate-
gory relevant here”—namely, relitigating through a
proxy. Id. By linking the alleged “proxy” relationship
between RPX and Salesforce to Taylor, AIT correctly
understood that “proxy” is a form of privity. AIT has
maintained its position throughout the IPR proceedings.
In its institution decisions and final written decisions,
the Board ignored the § 315(b) privity question. Instead,
it focused on the real party in interest inquiry and decided
that Salesforce was not a real party of interest because
RPX did not have actual control in the prior CBM pro-
ceeding. I agree with Judge O’Malley that the standard
employed by the PTO in its real party in interest inquiry

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 7
was impermissibly narrow and constituted error. In my
view, the Board also erred by failing to address whether
RPX was a privy of Salesforce.
III. P RIVITY BETWEEN RPX AND SALESFORCE
Consistent with its arguments before the Board, AIT
argues on appeal that the Board committed legal error by
“ignor[ing] the prohibition against a ‘privy’” mandated by
§ 315(b). Appellant’s Br. 11, 23–24. AIT argues that the
Board’s failure to address privity under § 315(b) consti-
tutes legal error because “the Board exceeded the scope of
its delegated authority and violated a clear statutory
mandate.” Id. at 18. I agree.
AIT invokes the second ground under Taylor—
substantive legal relationship—by arguing that
“[a]dditional relevant factors [for finding privity] include
[] the non-party’s relationship with the petitioner,” id.
(citing the PTO’s Trial Practice Guide), and that RPX had
“an unusually close relationship” with Salesforce. Id. at
20–21. AIT also alleges that RPX’s petitions violated the
fifth ground under Taylor—relitigate through a proxy.
Patent Owner’s Preliminary Response at *5, RPX Corp.,
IPR2015–01750. I address these two grounds in turn.
AIT is correct that privity is based on whether there is
a “substantive legal relationship” between the parties.
Taylor, 553 U.S. at 894. The substantive legal relation-
ship inquiry focuses on the legal obligations between the
parties, not between a party and a proceeding. See Insti-
tution Decision at *8, RPX Corp., IPR2015–1750 (P.T.A.B.
May 12, 2016) (basing its real party in interest determi-
nations on “whether a non-party exercises control over a
petitioner’s participation in a proceeding, or whether a
non-party is funding the proceeding or directing the pro-
ceeding” (emphases added)). While “control” over a pro-
ceeding may be germane to a form of privity, the Board
failed to consider whether RPX and Salesforce were in a

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 8
substantive legal relationship in a broader context. This
was error.
Privity between parties does not hinge on any single
proceeding. It is a broader inquiry into whether the
parties have a “substantive legal relationship.” See
Taylor, 553 U.S. at 894. Under Taylor, “[q]ualifying
relationships include, but are not limited to, preceding
and succeeding owners of property, bailee and bailor, and
assignee and assignor.” Id. A common character of these
relationships is that the two parties share a high degree
of commonality of proprietary or financial interest. See In
re Gottheiner, 703 F.2d 1136, 1140 (9th Cir. 1983) (hold-
ing that privity exists “when there is sufficient commonal-
ity of interest”). These forms of relationship are based on
whether the relationship is anchored or based on legal
obligations or commitments. For example, non-party
preclusion could apply between an indemnitor and an
indemnitee, or between an insurer and an insured on the
basis that such relationships form privity. Intel Corp. v.
U.S. Int’l Trade Comm’n, 946 F.2d 821, 839 (Fed. Cir.
1991) (holding that “an indemnification agreement, in
other cases, has alone been enough to find privity”); see
Ridgway v. Gulf Life Ins. Co., 578 F.2d 1026, 1029 (5th
Cir.1978) (“The contractual relation of liability and social
policy supply the necessary privity of party between
insured and insurer to bind the latter.”). The foregoing
examples have little to do with “control” over a prior or
current litigation, yet privity exists.
The record before the court shows that although RPX
and Salesforce are separate business entities, there exists
a legal relationship between them that is defined by
mutual legal obligations and commonality of interest.
The record suggests that the form of substantive legal
relationship between RPX and Salesforce precisely is that
which defines privity.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 9
First, RPX advertises itself as “the leading provider of
patent risk solutions, offering defensive buying, acquisi-
tion syndication, patent intelligence, insurance services,
and advisory services.” J.A. 73–74. RPX’s business model
involves buying patents from companies and licensing
them back. Hence, one form of the legal relationship
between RPX and Salesforce is that of patentee and
licensee.
Second, RPX provides insurance against non-
practicing entities (“NPE”) patent infringement suits to
clients who purchase insurance policies.2 This suggests
another form of the legal relationship between RPX and
Salesforce as that of insurer and insured.3
Third, RPX has advertised that its “interests are
100% aligned with those of [its] clients,” it could “serve as
an extension of a client’s in-house legal team,” and it
could “facilitat[e] challenges to patent validity.” J.A. 28,
31, 71. Thus, another form of the legal relationship
between RPX and Salesforce is an attorney-client rela-
tionship.
2 According to an annual report to the Securities
and Exchange Commission filed on March 10, 2014, RPX
stated that “[w]e offer and have written insurance policies
for clients interested in additional management of their
exposure to patent infringement claims brought by
NPEs.” J.A. 31. It is unclear whether Salesforce has
purchased any insurance policies from RPX.
3 In this context, upon payment of a claim, an in-
surer typically becomes subrogated to the interests of the
insured, in particular to recover monies paid by the
insured. Any judgment taken in subrogation for or
against the insured would extend to the insurer precisely
because there exists a substantive legal relationship. See
18A C. Wright, A. Miller, & E. Cooper, Federal Practice
and Procedure, § 4451 (2d ed. 2002).

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 10
To be clear, the existence of any one of these forms of
legal relationships alone does not necessarily establish
privity. However, if the extent of the legal obligations
between the parties (i.e., RPX and Salesforce) is such that
the parties share a high degree of commonality of proprie-
tary or financial interest, privity is established and
§315(b) bars the institution of the IPR petitions. Indeed,
given the circumstances, any single one of the forms could
suffice to establish privity under §315(b).4 In this case,
when viewed in aggregate, the record evidence suggests
sufficient basis of privity, such that the PTO erred in
ignoring the issue of privity.
The record also suggests that RPX may have acted as
a proxy/representative for Salesforce, which independent-
ly establishes privity under the Taylor framework. See
Taylor, 553 U.S. at 895 (“[A] party bound by a judgment
may not avoid its preclusive force by relitigating through
a proxy.”).
RPX’s Vice President Mr. Chuang states that “the
services RPX provides Salesforce do not include filing
IPRs.” J.A. 96, 101. The record, however, suggests that
RPX may have acted in a proxy/representative capacity.
The invalidation of AIT’s patents-in-suit would directly
benefit Salesforce because Salesforce was sued by AIT for
infringing the same patents. RPX, as advertised, provides
complementary patent risk solutions to its clients, “in-
cluding the facilitation of challenges to patent validity,
coordinating prior art searches, and other services in-
4 For example, the terms of the insurer–insured re-
lationship could create certain subrogation rights wherein
in the case of a loss, the insurer stands in the shoes of the
insured, a legal obligation that may establish that, as a
matter of law, the insurer had notice of the action giving
rise to its subrogated interest. See Intel Corp., 946 F.2d
at 839; Ridgway, 578 F.2d at 1029.

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 11
tended to improve patent quality and reduce expenses for
our clients.” J.A. 31 (emphasis added). RPX’s past prac-
tice included filing IPRs on behalf of its clients. See
Denial of Institution at *9―10, RPX Corp. v. VirnetX, Inc.,
IPR2014-0171 (P.T.A.B. June 23, 2014) (and six other
related proceedings). IPR is one form of “challenge[] to
patent validity.”
RPX stated to the Board that “[e]ven if it were true
that RPX’s services to Salesforce involved the filing of
IPRs, that alone would not make Salesforce an RPI [i.e.,
real party in interest].” J.A. 103. This is incorrect.
Relitigation through a proxy is itself an independent
ground to establish privity. See Taylor, 553 U.S. at 895.
If RPX was indeed contractually obligated to file the IPRs
on behalf of Salesforce, then privity exists and the peti-
tions should be time barred. See Pac. Gas & Elec. Co. v.
United States, 838 F.3d 1341, 1350 (Fed. Cir. 2016) (find-
ing that “party standing outside of privity by contractual
obligation stands in the shoes of a party within privity”).
This and other arguments by RPX concerning real party
in interest were effective in drawing the attention of the
PTO away from privity and to focus on real party in
interest. It caused the PTO to lose sight of the “more
expansive” notion of privity. See 77 Fed. Reg. at 48,759.
When viewed through the lens of the more expensive
notion of privity, the record clearly suggests that RPX
may have acted as a proxy on behalf of Salesforce. The
record contains evidence suggesting that the interests of
RPX and Salesforce are aligned. Salesforce is a signifi-
cant client for RPX.5 They are not competitors: Salesforce
5 The nonpublic record shows that Salesforce is a
significant client for RPX. Salesforce paid RPX more than
[ ] between 2012 and 2015 with increasing annual
payments from about [ ] in 2012 to more than [ ] in
2015. J.A. 82 (confidential information redacted).

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 12
is a software company and RPX holds itself out to the
public as a patent risk management company. Both
Salesforce’s prior CBM petitions and RPX’s IPR petitions
sought to invalidate the same patents owned by AIT.
RPX claims to have independent reasons for pursuing the
IPR petitions, but there is no evidence to show that RPX’s
interests conflict with Salesforce’s interests. To the
contrary, RPX advertises that its “interests are 100%
aligned with those of [its] clients,” and that it “serve[s] as
an extension of a client’s in-house legal team.” J.A. 28,
31, 71.
Thus, the record reveals that Salesforce was more
than a bystander to RPX’s filing of these IPR petitions.
Salesforce was a preexisting client of RPX, representing a
significant and growing revenue stream. Invalidation of
the patents-in-suit would directly benefit Salesforce. RPX
advertised providing insurance services against patent
infringement claims brought by NPEs. These are indica-
tors of privity. And given RPX’s documented history of
acting as a proxy on behalf of its clients in filing IPR
petitions, coupled with RPX’s offering of patent validity
challenges to its fee-paying members, AIT proffered
sufficient concrete evidence to suggest that RPX was in
privity with Salesforce.
I would remand with instruction that the Board thor-
oughly review whether privity exists between RPX and
Salesforce, including application of all of the Taylor
factors. In addition, while the Board partially granted
AIT’s motion for additional discovery into “whether Peti-
tioner [RPX] should have identified Salesforce as an RPI
in this proceeding,” it denied AIT’s request for discovery
into “[d]ocuments discussing any efforts by RPX to shield
its clients from being named as real parties in interest in
inter parte [sic] reviews and covered business method
patent reviews.” J.A. 972, 1069. The § 315(b) time bar
inquiry is broader than the real party in interest inquiry,

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 13
and the Board should consider new motions for additional
discovery.
IV. CONFLATION OF § 315(B) WITH § 312(A)(2)
On remand, the Board should not repeat its error of
conflating § 315(b) with § 312(a)(2). Sections 315(b) and
312(a)(2) entail distinct, independent inquiries. Section
312(a)(2) requires that a petition may be considered only
if “the petition identifies all real parties in interest.”
Section 312(a)(2) is akin to a pleading requirement that
can be corrected, and this court has noted that “the Direc-
tor [of the PTO] can, and does, allow the petitioner to add
a real party in interest.” Wi-Fi One, 878 F.3d at 1374 n.9.
Section 312(a)(2) does not act as a prohibition on the
Director’s authority to institute. In contrast, § 315(b)
“sets limits on the Director’s statutory authority to insti-
tute” if a petition is time barred. Id. at 1374.
This court has recognized the difference between the
two statutory provisions and has warned that § 315(b)
should not be “conflat[ed]” with § 312(a)(2).6 Id. at 1374
n.9. I suspect that this is what happened in this case.
Despite AIT’s specific allegation that RPX should be
time barred under § 315(b), the Board framed the entire
issue as “whether Petitioner has identified all RPIs”—a
§ 312(a)(2) determination. J.A. 1395 (institution deci-
sions); see id. at 1396 (summarizing that “we must deter-
mine whether Salesforce should have been identified as
an RPI in this proceeding”); id. at 1402―03 (concluding
6 Importantly, this court has not determined
whether it has authority to review the Board’s institution
decisions related to § 312(a)(2) determinations. Wi-Fi
One, 878 F.3d at 1375 (“We do not decide today whether
all disputes arising from §§ 311–14 are final and nonap-
pealable. Our holding applies only to the appealability of
§ 315(b) time-bar determinations.”).

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 14
that “we are not persuaded that Salesforce should have
been identified as an RPI in this proceeding”); id. at
403―04 (same, final written decisions).
Importantly, the Board failed to expressly address
whether RPX’s petitions were time barred under § 315(b).
Rather, the Board viewed § 315(b) as a mere “relevant
factor” to the real party in interest inquiry. J.A. 1069
(“[D]etails of the relationship between Petitioner [RPX]
and Salesforce and Petitioner’s reasons for filing the
instant Petitions, particularly in view of the fact
Salesforce is time-barred under 35 U.S.C. § 315(b), are
certainly relevant to the RPI inquiry in these proceedings.”
(emphasis added)).
As the Supreme Court recently noted, Congress de-
signed IPR to be a “party-directed, adversarial process,”
not an “agency-led, inquisitorial process.” SAS Inst. Inc.
v. Iancu, 138 S. Ct. 1348, 1355 (2018) (emphasis added).
The Board is required to address the issues that the
parties raise during the proceeding, and it lacks authority
to substitute its choice of issues over that of the parties’.
Thus, when a patent owner alleges a violation of § 315(b)
and proffers concrete evidence in support, the Board is
required to conduct a thorough § 315(b) analysis and
include such analysis it in its decisions.7
7 Note that the conflation of § 315(b) and § 312(a)(2)
is not isolated to this case. See, e.g., Institution Decision
at *1, Broad Ocean Techs., LLC, IPR2017-0803, 2017 WL
3671102 (P.T.A.B. Aug. 23, 2017); Institution Decision at
*3, Elekta, Inc., IPR2015-1401, 2015 WL 9898990
(P.T.A.B. Dec. 31, 2015); Institution Decision at *3, LG
Display Co., Ltd., IPR2014-1362, 2015 WL 930460
(P.T.A.B. Mar. 2, 2015). The Board, however, has proper-
ly distinguished § 315(b) and § 312(a)(2) in some cases.
See Institution Decision at *3, Aruze Gaming Macau, Ltd.,

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APPLICATIONS IN INTERNET TIME v. RPX CORPORATION 15
Due process, the bedrock of privity, requires as much.
This is particularly true in the context of §315(b). As a
threshold issue prior to institution, § 315(b) time bar
determinations are vital because IPRs can deprive a
patentee of significant property rights through the cancel-
lation of claims, as in this case. The AIA imposes no
standing requirement on who may file a petition, but the
gate to IPR institution is not open to every would-be
petitioner. Section 315(b) is the gatekeeper to deny
institution of petitions from time barred petitioners, their
real parties in interest, and their privies.
IPR2014-1288, 2015 WL 780607 (P.T.A.B. Feb. 20, 2015).
For example, the Board in Aruze noted that “[t]he parties’
briefs comingle their analyses of the issues of RPI and
privity, and often use the terms interchangeably.” Id.
The Board in Aruze recognized that “[t]he two terms
describe distinct concepts with differing effects under the
statute,” noting that “35 U.S.C. § 312(a)(2) [requires that
a] petition must identify all RPIs, but not privies,” and
proceeded in analyzing § 315(b) and § 312(a)(2) separate-
ly. Id. at *8–11. Nonetheless, the body of the Board’s
decisions conflating § 315(b) and § 312(a)(2) inquiries
could be one reason why the parties sometimes comingle
privity and real party in interest challenges in IPR pro-
ceedings. This comingling practice cannot continue.

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