October 21, 2014

In 2013, Cardsoft, LLC (Patent Owner) sued First Data Corp. (Petitioner) and First Data Merchant Services Corp. for patent infringement in the Eastern District of Texas, serving its complaint on May 2, 2013.  (Cardsoft (Assignment for the Benefit of Creditors) LLC v. First Data Corp., Civil Action No. 2:13-cv-290 (E.D. Tex.).)  The complaint alleged infringement of U.S. 6,934,945 and U.S. 7,302,683, relating to sending and receiving information over a network.

On April 30, 2014, Petitioner filed IPR petitions requesting review of the ‘945 and ‘683 patents (IPR2014-00715 and IPR2014-00720, respectively).  An issue arose in the IPRs because VeriFone had a duty of indemnification to First Data Corporation. But VeriFone had been sued in 2008 by Cardsoft LLC for patent infringement of the same patents, and therefore was statutorily barred under 35 U.S.C. § 315(b).  (Cardsoft, Inc. v. VeriFone Systems, Inc., Civil Action No. 2:08-cv-00098 (E.D. Tex.).)

The Mandatory Notices of the ‘945 IPR Petition state:

The real party in interest is First Data Corporation []. We believe that VeriFone is NOT a real party in interest. VeriFone, per an indemnity with First Data, is providing the funding for this petition. However, the sole and exclusive control over this petition rests entirely with First Data. To the extent that the VeriFone indemnity agreement provided for any ability to assume control of any litigation, VeriFone has disclaimed any right to such control (see Ex. 1011 ). First Data determined which counsel to use, and is using its normal patent counsel for this petition, not counsel for VeriFone. The prior art used in this petition was discovered from the Cardsoft v. VeriFone litigation records, but First Data decided which references to use. Copies of some prior art were obtained from VeriFone, and VeriFone counsel indicated certain references which it believed rendered the subject patent invalid, but First Data counsel exercised independent judgment in determining which prior art to use and in fact selected different prior art references than those which VeriFone believed were the strongest.

It should be noted that First Data was sued after Cardsoft obtained a jury verdict victory against VeriFone. Instead of suing VeriFone for willful infringement for post-verdict sales, Cardsoft elected to sue First Data, likely with knowledge of the indemnity which provides indemnification for some although not all of the accused devices. It would be contrary to the reasons for establishing Inter Partes Reviews to deny First Data the opportunity for an IPR challenge in such a situation.

(‘945 Petition, pp. 1-2 (IPR2014-00715).)  The Petition summarized different PTAB decisions which declined to find a real party in interest based on funding and sharing of prior art.  It also referenced PTAB Chief Judge James Smith:

Chief Judge James Donald Smith of the BPAI explained that the Proposed Rules from February of 2012 deliberately declined to promulgate particular factors as the future Patent Trial and Appeal Board (PTAB) intends to consider each case on its specific facts. [Explanation of Real Party in Interest Requirement provided by Chief Judge James Donald Smith, Board of Patent and Appeals and interferences (“BPAI”). Available at http:/ /www.uspto.gov/aia implementation/smith-blogextravaganza. j sp#heading-2.]

(Id., p. 3.)  The ‘683 Petition in the -00720 proceeding includes similar Mandatory Notices.

But in parallel Decisions dated October 17, 2014, the Board disagreed with the Petitioner and found VeriFone to be a real party in interest in both proceedings.  The Board also decided that each petition was barred under 35 U.S.C. § 315(b), based on the following factors:

Petitioner’s Control and Funding:

The evidence demonstrates that VeriFone desires an inter partes review of the ’945 patent and has controlled, and/or has had an opportunity to control, the events leading up to the filing of the Petition. Petitioner acknowledges that “VeriFone, per an indemnity with [Petitioner], is providing the funding for this petition.” Corr. Pet. 1. Per the Letter Addendum, we understand this “funding” to include Petitioner’s attorney fees and at least the nearly $24,000 petition fees associated with filing the Petition. Ex. 1011, 1; Master Engagement Agreement, Section 6.1. We find that per this same indemnity agreement VeriFone had an opportunity to control all of the events leading up to the filing of the Petition. In particular, Section 6.1.3 of the Master Engagement Agreement indicates that VeriFone “shall have the right at its expense to employ counsel . . . to defend against Claims that VeriFone is responsible for . . . and to compromise, settle and otherwise dispose of such Claims.” Id., 3. The Letter Addendum indicates that “VeriFone has agreed to this associated indemnification as to the IPR.” Id., 1. Thus, up to April 28, 2014 (i.e., two days prior to the Petition being filed), VeriFone had every opportunity and right, per the indemnification agreement, to control the filing of the Petition and pursue an inter partes review of the challenged patent. That the opportunity to control ended just two days prior to filing the Petition, does not negate the control or opportunity to control the events leading up to the filing of the Petition. By Petitioner’s own admission, and during the period leading up to the filing of the Petition, counsel for VeriFone communicated with counsel for Petitioner about initiating an IPR, including discussing what prior art to assert. Corr. Pet. 2. Moreover, VeriFone agreed to, and did, pay for all costs associated with the filing of the Petition. We have considered Petitioner’s arguments that it alone decided to use different prior art for this proceeding compared to the prior art that VeriFone asserted in the 2008 Litigation. See id. Petitioner, however, does not provide sufficient evidence that would support this assertion, and in any event, even if true, that alone would not outweigh the other evidence of record that tends to show that VeriFone controlled and/or had the opportunity to control the filing of the Petition.

Decision Denying Institution, IPR2014-00715, Paper 9, Oct. 17, 2014, pp. 7-8.

VeriFone’s Current Interest in the Proceeding:

The Board found that VeriFone had an interest in the outcome of these IPR proceedings:

Moreover, we find that VeriFone has an interest in the review of the ’945 patent in this proceeding. VeriFone was found to have infringed the ’945 patent in the 2008 Litigation and was unable to invalidate the ’945 patent in that proceeding. See Ex. 1007 ¶ 8. VeriFone also must defend and indemnify Petitioner in the 2013 Litigation for Petitioner’s alleged willful infringement of the ’945 patent from the sale of VeriFone products that were found to have infringed the ’945 patent in the 2008 Litigation. Invalidity of the ’945 patent has been asserted in the 2013 Litigation that VeriFone is defending under its indemnity agreement with First Data Merchant Services. Ex. 2003, 3 (second affirmative defense). VeriFone has an interest in an inter partes review of the ’945 patent at least equal to that of Petitioner. The record evidence establishes, however, that VeriFone could not have pursued an inter partes review on its own or in conjunction with the Petitioner, because VeriFone would have been barred from doing so pursuant to 35 U.S.C. § 315(b).

Id., pp. 8-9.

Petitioner’s Failure to Name RPI Within One Year Bar

The Board also found that the Petition itself lacked a proper statement of the real parties in interest, and therefore was barred under § 315(b) because Petitioner’s correction would have occurred after the one year bar date:

Moreover, because VeriFone is a real party-in-interest, the Petition does not identify “all real parties in interest” as required by 35 U.S.C. § 312(a). As a result, the Board determines that the Petition is incomplete.

Section 42.106(b) of Title 37 of the Code of Federal Regulations provides:

(b) Incomplete petition. Where a party files an incomplete petition, no filing date will be accorded, and the Office will dismiss the petition if the deficiency in the petition is not corrected within one month from the notice of an incomplete petition.

Ordinarily, because the Petition is incomplete, the Board would give Petitioner one month from the date of this decision to correct the deficiency and list VeriFone as a real party-in-interest. In this instance, however, curing the omission of VeriFone as a real party-in-interest would be futile because, even if corrected, the earliest filing date that could be accorded to the Petition that identifies VeriFone as a real party-in-interest would not fall within the one-year period specified by 35 U.S.C. § 315(b).

Id., p. 10.

So the Board seems to have denied these IPR petitions on the grounds that: (1) a real party in interest (e.g., VeriFone) would have been barred due to the 2008 litigation, and (2) because, procedurally, any correction of the petition would also fall necessarily outside of the statutory one-year bar of the 2013 litigation.  This case provides another example of how the Board interprets facts relating to real parties in interest and an example of the Board’s decision to apply the one-year IPR bar under 35 U.S.C. 315(b) to corrections of real parties in interest in IPR petitions.