Holding: Whether a party is a real party in interest or privy under Section 315(e)(1) is a question of fact that should not be decided in the first instance on appeal. This argument may be forfeited if not brought before the PTAB when determining standing for an appeal after a final written decision in an IPR.
Apple and several other companies filed petitions for IPR of US Pat. No. 7,933,431, owned by Gesture Technology. The PTAB joined these petitions and found claims 1-10, 12, and 14-31 to be unpatentable and found claims 11 and 13 not unpatentable. The ‘431 Patent is directed to analyzing the output of one or more TV cameras and using the data as input to a computer concerning the location a person or objects held by a person. The cameras have light sources that illuminate targets associated with the hands, feet, or head of a user or an object held by the user. The cameras sense the illuminated targets and provide image information to the computer.
The ‘431 Patent was subject to a prior IPR filed by Unified Patents, LLC just a week before the IPR filed by Apple. Unified Patents is a multi-member organization, and Apple is a member of Unified Patents. A final written decision in the Unified Patents IPR was issued on November 21, 2022, and the PTAB found claims 7-9 and 12 to be unpatentable, while claims 10, 11, 13 were found to not be unpatentable. The final written decision for the Apple IPR was issued nine days later.
Gesture argued that Apple does not have standing to appeal under 35 U.S.C. §315(e)(1) since it is a real party in interest or a privy of Unified Patents. Section 315 states that the “petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision . . ., or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” Gesture’s argument followed that since Apple is a member of Unified Patents, they are a real party in interest or privy of Unified Patents. Therefore, Apple could no longer maintain a proceeding before the Patent Office once the final decision was issued in the Unified Patents IPR. However, whether a party is a real party in interest or privy is a question of fact that should not be decided on first instance on appeal. Since Gesture could have brought this argument before the PTAB, but failed to do so, the Federal Circuit held Gesture’s standing argument to be forfeited.
Upon finding that Gesture’s Section 315 argument was forfeited, the Federal Circuit reviewed and upheld each of the patentability decisions made by the PTAB. With regard to claims 11 and 13, Apple argued that the PTAB ignored its presented evidence. However, the Federal Circuit found that the PTAB provided a reasoned analysis for its rejection of Apple’s arguments and stated that the PTAB is not required to expressly discuss each and every piece of evidence that is presented.
Federal Circuit Precedential 
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