In Mojave Desert Holdings, LLC, v Crocs, Inc., No. 2020-1167 (Fed. Cir. Feb. 11, 2021), the Federal Circuit held that a successor-in-interest is a real party-in-interest to an inter partes reexamination.
Crocs sued U.S.A. Dawgs for infringement of U.S. Patent No. D517,789. U.S.A. Dawgs filed a third-party request for inter partes reexamination of the '789 patent. U.S.A. Dawgs then filed for bankruptcy and sold its assets to Dawgs Holdings, LLC, including all "assets, properties and rights of every kind and nature." Dawgs Holdings then assigned all rights to Mojave. The Board ultimately upheld the patent and denied Mojave's petition to change the real party-in-interest. Mojave appealed.
The Federal Circuit held that because all rights had been assigned, including its interest in the inter partes reexamination, Mojave was the successor-in-interest. Accordingly, the Court held that the Board erred in denying Mojave's petition to substitute for U.S.A. Dawgs as the real party-in-interest and that Mojave had standing to challenge to the '789 patent. The Federal Circuit also held that U.S.A. Dawg retained the ability to file a protective notice of appeal, and doing so sufficed to confer jurisdiction on the Court. The Court then granted Mojave's motion to substitute on appeal.
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