Amazon.com, Inc.v.Appistry, Inc.

Patent Trial and Appeal Board

Jul 13, 2015

13293527 (P.T.A.B. Jul. 13, 2015)

Trials@uspto.gov Paper 18
571-272-7822 Entered: July 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMAZON.COM, INC. and AMAZON WEB SERVICES, INC.,
Petitioner,

v.

APPISTRY, INC.,
Patent Owner.
____________

Case IPR2015-00480
Patent 8,200,746 B2
____________

Before DAVID C. McKONE, JAMES A. TARTAL, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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Patent 8,200,746 B2

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I. INTRODUCTION
Amazon.com, Inc. (“Amazon.com”) and Amazon Web Services, Inc.
(“AWS”) (collectively, “Petitioner”) filed a Petition (“Pet.”) to institute an
inter partes review of claims 1–17, 19–20, and 22–27 of U.S. Patent
No. 8,200,746 B2 (“the ’746 patent,” Ex. 1001). Paper 2. Appistry, Inc.
(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 8.
We have jurisdiction under 35 U.S.C. § 314.
In the Preliminary Response, Patent Owner contends that the Petition
fails to list “all the real parties-in-interest,” as required by 35 U.S.C.
§ 312(a)(2). Prelim. Resp. 3–11. The Board sought additional briefing from
Petitioner directed to Patent Owner’s contention that Amazon Digital
Services, Inc. (“ADS”) and AWSHC, LLC (“AWSHC”) are real parties-in-
interest to the instant petition. Paper 17. Petitioner was permitted to include
evidence (exclusive of additional testimony) as part of any additional
briefing. Id. Petitioner did not file a brief or evidence in response to the
Board’s request.
Upon consideration of the Petition, the Preliminary Response, and the
evidence of record, we determine Petitioner has not sufficiently
demonstrated that the Petition complies with the statutory requirement to
identify all real parties-in-interest. Accordingly, the Petition is denied.
A. Related Proceedings
The parties indicate that the ’746 patent is involved in a district court
infringement action between Petitioner and Patent Owner that was
transferred recently from the U.S. District Court for the Eastern District of
Missouri, Eastern Division (Case No. 4:13-cv-02547-HEA) to the United
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States District Court for the Western District of Washington, Seattle
Division (Case No. 2:15-cv-00311). Paper 9, 2; Paper 15, 2.
II. ANALYSIS
In an inter partes review, the statutory requirement under 35 U.S.C.
§ 312(a)(2) that a petition identify all real parties-in-interest is a threshold
issue. See Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case
IPR2013-00453, slip op. at 7–8 (PTAB Jan. 16, 2015) (Paper 88). We
generally accept the petitioner’s identification of real parties-in-interest at
the time of filing the petition. Our practice in this regard, however, acts as a
rebuttable presumption that benefits the petitioner. When, as here, a patent
owner provides sufficient rebuttal evidence that reasonably brings into
question the accuracy of the petitioner’s identification of real parties-in-
interest, the burden remains with the petitioner to establish that it has
complied with the statutory requirement. This allocation of the burden for
establishing whether a third party has, or has not, been identified properly as
a real party-in-interest accounts appropriately for the fact that a petitioner is
far more likely to be in possession of, or have access to, evidence relevant to
the issue than the patent owner.
Our Practice Guide explains that a real party-in-interest, as used in the
AIA trial context, “is the party that desires review of the patent. Thus, the
‘real party-in-interest’ may be the petitioner itself, and/or it may be the party
or parties at whose behest the petition has been filed.” Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). The
determination of whether a party is a real party-in-interest is a “highly fact-
dependent question” (id.), in which the focus is on the party’s relationship to
the inter partes review pending before the Board, and the degree of control
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the party can exert over the proceeding. See Aruze Gaming Macau Ltd. v.
MGT Gaming Inc., Case IPR2014-01288, slip op. at 11 (PTAB Feb. 20,
2015) (Paper 13). “[I]f a nonparty can influence a petitioner’s actions in a
proceeding before the Board, to the degree that would be expected from a
formal copetitioner, that nonparty should be considered [a real party-in-
interest] to the proceeding.” Id. at 12.
The Petition identifies only Amazon.com and AWS as real parties-in-
interest. Patent Owner contends that the Petition fails to identify all real
parties-in-interest because Amazon.com and AWS have no direct
relationship, but instead, Amazon.com controls AWS only through ADS and
AWSHC. Prelim. Resp. 8–10.
Patent Owner contends that Amazon.com’s 2013 Annual Report and
Form 10-K (Ex. 2003), filed with the Securities and Exchange Commission,
identifies Andrew R. Jassy as Senior Vice President of AWS, and as an
Executive Officer of Amazon.com. Prelim. Resp. 5 (citing Ex. 2003, 16).
According to Patent Owner, Amazon.com exercises control over AWS
because “Mr. Jassy, who is an officer of Petitioner Amazon.com, Inc. and is
directly responsible to Petitioner Amazon.com’s CEO and its Board of
Directors, heads up and controls Petitioner AWS, which ‘is a subsidiary of
Amazon.com.’” Id. at 6 (citing Ex. 2004). With respect to AWSHC and
ADS, Patent Owner argues:
[T]he decision to file the Petition on behalf of AWS ultimately
fell on Mr. Jassy and, in turn [Amazon.com’s President, Chief
Executive Officer, and Chairman of the Board Jeffrey P.
Bezos], and the Board of Directors of Amazon.com. But the
only way that Amazon.com can exercise such control over
AWS, under the corporate structure explained above, is
indirectly. That is, it must exercise control over ADS, which
can then exercise control over AWSHC, which in turn can
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exercise control over AWS. As such, these entities (ADS and
AWSHC) are also necessarily controlling (or at least have the
ability to control) Petitioner AWS’s participation in the present
proceeding.
Id. at 7.
Patent Owner also contends that, by virtue of the parent-subsidiary
relationship between ADS, AWSHC, and AWS, “both AWSHC and ADS
can exercise complete control over AWS, including its participation in this
proceeding.” Id. at 6 (citing Copperweld Corp. v. Independence Tube Corp.,
467 U.S. 752, 771–72 (1984)). According to Petitioners’ Federal Rule of
Civil Procedure 7.1 Disclosure of Corporation Interest Certificate
(Ex. 2002), filed in the related district court proceeding, Petitioner AWS is a
wholly-owned subsidiary of AWSHC, which in turn is a wholly-owned
subsidiary of ADS, and ADS is a wholly-owned subsidiary of Petitioner
Amazon.com. These corporate relationships are illustrated in the following
diagram reproduced from page 4 of Patent Owner’s Preliminary Response.

Patent Owner provides sufficient evidence that reasonably brings into
question the accuracy of Petitioner’s identification of the real parties-in-
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interest. While the existence of a parent-subsidiary relationship alone may
not be sufficient to establish a parent’s status as a real party-in-interest, in
this case the close corporate relationship between Amazon.com and AWS
strongly suggests that ADS and AWSHC, the subsidiary companies in the
chain of corporate ownership between Amazon.com and AWS, are involved
and controlling corporations representing the unified interests of themselves
and Petitioner.
The burden remains with Petitioner to establish that it has complied
with the statutory requirement to identify all real parties-in-interest.
Petitioner was given the opportunity to provide additional evidence to rebut
Patent Owner’s evidence and meet its burden, but Petitioner chose not to
provide any such evidence. As a result, we determine, based on the record
before us, Petitioner has not sufficiently demonstrated that the Petition
complies with the statutory requirement to identify all real parties-in-
interest. See 35 U.S.C. § 312(a); 37 C.F.R. § 42.8(b)(1).
Having determined that the Petition does not comply with the
statutory requirement to identify each real party-in-interest, the Board
determines that the Petition is incomplete. Board Rule 42.106(b) provides
that “[w]here 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.” In this instance, however, it is uncontroverted that a complaint
alleging infringement of the ’746 patent was served on December 23, 2013.
Pet. 2; Prelim. Resp. 12. Thus, even if corrected, the earliest filing date that
could be accorded to the Petition would not fall within the one-year period
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Patent 8,200,746 B2

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specified by 35 U.S.C. § 315(b), and the Petition would be denied as
untimely.

III. ORDER
In consideration of the foregoing, it is
ORDERED that the Petition is denied.

PETITIONER:
Alicia Meros Carney
Alan M. Fisch
FISCH SIGLER LLP
alicia.carney@fischllp.com
alan.fisch@fischllp.com

PATENT OWNER:

Alan Norman
Anthony Blum
THOMPSON COBURN LLP
anorman@thompsoncoburn.com
ablum@thompsoncoburn.com