Holding: The AIA does not create an informational right to know the identity of all real parties in interest in an IPR proceeding, such that the PTAB’s refusal to adjudicate this issue constitutes an injury in fact to confer Article III standing.
Dolby owns US Patent 10,237,577 directed to a prediction method for using an in-loop filter. Unified Patents filed an IPR alleging that some claims of the ‘577 Patent were invalid as being anticipated and obvious in view of the prior art. In its IPR petition, Unified certified that it was the only real party in interest (RPI). Dolby believed that nine other entities should have been named as RPIs. However, typically, in order to promote efficiency and to save costs, the PTAB only decides an RPI dispute if the dispute is material to the proceeding, and the PTAB declined to adjudicate whether these additional parties were RPIs. In its final written decision, the PTAB found Dolby’s claims to not be unpatentable and again declined to adjudicate the issue with the additional nine alleged RPIs, finding that none of those parties would have been time-barred or estopped from bringing the IPR.
Dolby appealed to the Federal Circuit, asking the court to decide on the issue of the alleged RPIs. However, the Federal Circuit only has jurisdiction to review a PTAB decision when there is a case or controversy and the appellant can meet the minimum requirements to show standing. Article III standing is not required to file an IPR petition or obtain a decision from the PTAB, but is required once review is sought at the Federal Circuit. To meet the Article III standing requirements, an appellant must have: (1) suffered an injury in fact; (2) that is fairly traceable to the challenged conduct of the appellee; and (3) that is likely to be redressed by a favorable judicial decision.
Dolby argued that they have standing to appeal the PTAB’s decision under 35 U.S.C. § 319, which states that a party that is “dissatisfied” with the final written decision of the PTAB may appeal. However, the Federal Circuit did not find this to be sufficient, as a statutory right to appeal under the America Invents Act (AIA) does not automatically confer Article III standing. Article III standing still requires an injury in fact.
Dolby next argued that 35 U.S.C. § 312(a)(2) gives a patent owner an informational right to know the identity of all RPIs in an IPR proceeding, and there is an injury-in-fact if this information is not disclosed. However, in other cases where an informational right constitutes an injury-in-fact, the purpose of the violated statute was to allow the public access to certain information. The purpose of the AIA is to create a more efficient patent system, not to provide public disclosure of RPIs. Therefore, the Federal Circuit found that the AIA does not create an informational right to the identities of RPIs that could construe standing to Dolby.
Beyond statutory arguments, Dolby raised additional concerns, but the court found these to be too speculative to warrant consideration. As an example, Dolby argued that the alleged RPIs may be breaching licensing agreements or may not be properly estopped in future proceedings. However, Dolby offered no evidence of license agreements or potential litigation that may lead to estoppel. Dolby also argued that Unified may be disincentivized from filing IPRs if it had to identify its member as RPIs, but did not present evidence that this would cause Unified to change its strategies.
Since Dolby failed to demonstrate an injury in fact, the Federal Circuit dismissed its appeal, affirming the PTAB’s decision to refrain from adjudicating the disputed RPI issue.
Federal Circuit Precedential 
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