ARTICLE
11 August 2025

Patent Owners Have No "Freestanding" Right To PTAB RPI Determination, Rules Federal Circuit

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The Federal Circuit has issued a precedential decision that further clarifies the extent to which patent owners may appeal final written decisions (FWDs) from the Patent Trial and Appeal Board (PTAB).
United States Intellectual Property

The Federal Circuit has issued a precedential decision that further clarifies the extent to which patent owners may appeal final written decisions (FWDs) from the Patent Trial and Appeal Board (PTAB). On June 5, the court denied Dolby Laboratories Licensing's appeal of a decision against Unified Patents in which the Board ruled in Dolby's favor on validity but declined to address its argument that nine Unified member companies should have been named as real parties in interest (RPIs). The Federal Circuit held that Dolby lacked standing to appeal the PTAB's RPI decision as the prevailing party in an IPR against a patent not asserted in litigation, determining in part that none of the statutory bases cited by Dolby overcame that standing defect.

Article III of the US Constitution establishes that for a court to hear a case, the plaintiff must have suffered an injury in fact that is addressable by that court—a principle commonly known as Article III standing, or constitutional standing. However, America Invents Act (AIA) reviews are somewhat uniquely situated in this regard: Although the PTAB falls under the USPTO, an executive branch agency, meaning that AIA reviews are not subject to this standing requirement as a matter of first instance, appeals are handled by the Federal Circuit, a specialist Article III court. As a result, parties must establish that they have Article III standing to appeal PTAB FWDs, while institution decisions (and, as discussed further below, decisions on certain matters tied to institution) are statutorily barred from appeal.

The patent here at issue (10,237,577) broadly relates to video compression and was assigned prior to issuance by Hanyang University to Korean monetization firm Intellectual Discovery Co., Ltd., which in September 2019 (six months after the patent's issuance) assigned it to Dolby Laboratories Licensing, a subsidiary of Dolby Laboratories. As mentioned above, the patent has not been asserted in any infringement litigation to date, a fact of later relevance to the standing issue.

In December 2020, the patent was challenged in an inter partes review (IPR) (IPR2021-00275) filed by Unified Patents, which describes itself on its website as an "international membership organization that seeks to improve patent quality and deter unsubstantiated or invalid patent assertions in defined technology sectors (Zones) through its activities". As described by Unified, it seeks to do so in part through the filing of IPRs against patents in zones with "substantial assertions" by standard essential patent (SEP) holders and/or NPEs. Though Unified listed itself as the only real party in interest in the -275 IPR, Dolby argued in its preliminary response that the petitioner should have named nine members of its SEP Video Codec Zone as RPIs, and that by allegedly failing to do so as required under 35 U.S.C. § 312(a)(2), its petition should be denied.

However, the PTAB disagreed in its June 2021 decision granting institution, explaining that under its October 2020 precedential decision in SharkNinja v. iRobot (IPR2020-00734), the Board does not have to address whether a party is an unnamed RPI in deciding institution "unless the time bar or estoppel provisions under 35 U.S.C. § 315 would be implicated"—meaning, respectively, if the alleged RPI would have otherwise fallen outside of the one-year window from service of a complaint in which it could have filed an IPR, or if it was barred from reasserting certain invalidity arguments—". . . or the omission is otherwise material to the case at the institution stage". That was not the case here, the PTAB held, as there was no litigation that could implicate time bar or estoppel issues, adding that Dolby had failed to make any allegations to the contrary. Moreover, as noted in SharkNinja and the Board's prior precedential decision in Lumentum v. Capella Photonics (IPR2015-00739), the failure to name an RPI does not deprive the PTAB of jurisdiction. The Board reached essentially the same conclusions in declining to revisit the RPI issued in its June 2022 FWD, in which it also granted Unified's motion to seal information about its members but otherwise ruled in Dolby's favor—declining to invalidate any of the challenged claims from the '577 patent.

Although it prevailed as to validity, Dolby nonetheless appealed in July 2023 (23-2110), challenging the Board's decision not to address its RPI arguments—contending in part that both the FWD in this case and the underlying SharkNinja decision exceeded the PTAB's authority by skipping the RPI analysis in the name of "cost and efficiency". Dolby asserted that it had standing based on "the statutory right of a 'dissatisfied' party under 35 U.S.C. § 319" (allowing appeal of an FWD by a party "dissatisfied" with that decision); based on a "statutory right to information under 35 U.S.C. § 312(a)(2)" (i.e., such a right stemming from the statute setting the RPI requirement); and based on various harms allegedly resulting from the PTAB's refusal to decide the RPI issue. In contrast, both Unified and then-USPTO Director Kathi Vidal, who filed a brief in intervention on her agency's behalf, argued that Dolby lacks Article III standing to appeal a PTAB decision "that does not injure it" (as phrased by Vidal); that none of the statutory arguments raised by Dolby superseded that lack of standing; and that the alleged harms cited by Dolby were too speculative to establish an injury-in-fact.

The Federal Circuit agreed with Unified and the USPTO (the latter now represented by Acting Director Coke Morgan Stewart, under whose leadership the agency raised essentially the same positions at oral argument) in its June 5 decision on appeal. The court began by rejecting Dolby's argument that it had standing based on its right to appeal as a "dissatisfied" party under § 319, holding simply that under Federal Circuit law, "[i]t is well established that a statutory right to appeal under the America Invents Act (AIA) does not obviate the requirement for Article III standing" (citation omitted).

The Federal Circuit then turned to Dolby's argument that it had suffered the violation of an informational right under § 312(a)(2) (which, as noted above, provides that the PTAB may only consider an AIA review petition that identifies all RPIs). Here, the court held that this falls under the Supreme Court's 2021 holding in TransUnion v. Ramirez (594 U.S. 413), which "found an informational right exists in cases involving 'public-disclosure or sunshine laws that entitle all members of the public to certain information'". While the Federal Circuit found that the "express purposes" of the statutes at issue in certain exemplary cases cited in TransUnion (Public Citizen v. Department of Justice, 491 U.S. 440, 449, 446–47 (1989); and Federal Election Commission v. Akins, 524 U.S. 11, 20, 14– 15 (1998)) was "to allow the public access to certain information", it noted "[b]y contrast] that the Supreme Court has characterized the purpose of the AIA (in Thryv v. Click-To-Call Technologies, 590 U.S. 45, 54 (2020)) as "to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs".

Even if patent owners did have the right to an RPI determination stemming from § 312(a)(2), the Federal Circuit held, "such a right only arises in the context of IPR proceedings; there is no freestanding right to that information". To the contrary, the court ruled that the RPI requirement instead falls under the category of matters tied to institution, and thus falling under the statutory appellate bar for such matters: "Rather than creating a special statutory cause of action, the AIA bars judicial review of IPR institution decisions, which includes decisions concerning the RPI requirement under 35 U.S.C. § 312(a)(2)". As a result, the Federal Circuit held that the statute does not create an informational right.

Finally, the Federal Circuit rejected each of the additional bases upon which Dolby alleged it had suffered an injury in fact as a result of the PTAB's decision not to address the RPI issue. As to the first, that the alleged RPIs may be breaching license agreements, the court found that the patent owner "does not argue any of the Alleged RPIs are subject to license agreements with Dolby, much less provide evidence the Alleged RPIs are breaching license agreements". For its second argument, that the PTAB administrative patent judges (APJs) that issued the Board's FWD may have had conflicts with the alleged RPIs, the court found that Dolby had never alleged an actual conflict despite knowing the identities of the alleged RPIs (which are sealed in public-facing documents) and their financial information, and that the APJs themselves had sufficient information to make a conflicts determination. "More importantly, Dolby cannot show harm from a potential conflict because it prevailed before the Board", the court held. Third, as for Dolby's contention that "the Alleged RPIs may not be properly estopped in future proceedings", the court found that there was no evidence it would be "barred from asserting estoppel" in any such litigation, explaining that there are no "pending or threatened" actions or even allegations of infringing activity concerning the '577 patent, and that there is no collateral estoppel stemming from the PTAB's decision not to address the RPI issue that would bar Dolby from litigating it in a later proceeding. Fourth, with respect to Dolby's contention that "Unified may be disincentivized from filing IPRs if it must identify its members as RPIs", the court found that Dolby had offered no sufficient evidence in support (merely citing testimony from Unified's CEO that such a ruling would require a "dramatic departure" from its current practices), thus dismissing this alleged harm as "far too speculative to establish injury in fact".

Having found that Dolby showed no injury in fact sufficient for Article III standing, the Federal Circuit concluded by dismissing its appeal without reaching the merits.

Lastly, it is worth noting that shifts in the political winds could lead Congress to revisit the RPI requirement. In early May, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL), and Mazie Hirono (D-HI) reintroduced the PREVAIL Act, which if passed into law could make sweeping changes to the PTAB—in relevant part, requiring membership groups to more clearly identify any RPI in the proceeding, particularly where that RPI is a group member. See here for more on that proposed bill.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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