I.EXECUTIVE SUMMARY

Throughout the Patent Trial and Appeal Board's ("PTAB") history, patent owners have tried to leverage a petitioner's alleged failure to name all real parties-in-interest ("RPIs") as a way to achieve denial of an inter partes review ("IPR") petition or trial termination. The effectiveness of those efforts has ebbed and flowed. Initially, some PTAB panels viewed naming of RPIs as a jurisdictional requirement, concluding that RPI-naming errors were not fixable after the 35 U.S.C. § 315(b) one-year bar.1 Petitioners could lose their petition filing date based on RPI missteps, resulting in then untimely petitions.2 Later decisions backed away from that hardline stance, finding that some RPI errors made without deceptive intent were fixable.3 Regardless, petitioners are tasked with identifying RPIs to the best of their ability.

For the first six years of PTAB post-grant trial practice, the RPI analysis focused on whether an unnamed party exerted sufficient "control" over the petition, relying on factors such as having input into whether a PTAB challenge was filed, payment of PTAB-related attorney/filing fees, and selection of prior art in determining whether an unnamed party was an RPI.4 In Applications in Internet Time v. RPX Corp. ("AIT"), the Federal Circuit faulted the PTAB for focusing too narrowly on "control."5 The court stated that a flexible approach should be used to determine whether a non-party is an RPI.6 This flexible approach requires both equitable and practical considerations in determining whether a non-party is an RPI.7 This paper analyzes post-AIT Federal Circuit and PTAB decisions addressing RPI challenges, including the PTAB's precedential decision in Ventex Co., Ltd, v. Columbia Sportswear North America, Inc ("Ventex"). The analysis demonstrates that in many cases, both the Federal Circuit and the PTAB continue to focus primarily on the "control" factor in analyzing RPI issues.

II.WHY DOES IDENTIFYING AN RPI MATTER?

Identifying RPIs in a petition for IPR serves two purposes: (1) to ensure that the petition is permissible, and (2) to make clear to whom post-PTAB-trial estoppel will apply.8 An IPR petition may be barred from institution when the petitioner or RPI previously filed a civil action challenging the validity of the patent or if the petitioner or RPI waited more than one year to file after being served with a patent infringement compliant.9 Estoppel provisions seek to protect patent owners from numerous patent attacks as well as prevent an unnamed RPI from having a "second bite at the apple" with a petition that would otherwise be estopped.10 Although the petitioner's initial identification of RPIs is accepted unless disputed by the patent owner, the petitioner also has the burden in demonstrating that its petition is not timebarred by 35 U.S.C. § 315(b).11

Footnotes

1 Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., No. IPR2013-00606, Paper 13 at 12 (P.T.A.B. Mar. 20, 2014).

2 Id.

3 Lumentum Holdings, Inc., v. Capella Photonics, Inc., No. IPR2015-00739, Paper 38 at 5 (P.T.A.B. Mar. 4, 2016).

4 RPX Corp. v. VirnetX Inc., No. IPR2014-00171, Paper 49 at 6–10 (P.T.A.B. June 5, 2014) (determining that the petitioner acted as a proxy for an unnamed party); RPX Corp. v. VirnetX Inc., No. IPR 2014-00171, Paper 57 at 6–10 (P.T.A.B. July 14, 2014).

5 Applications in Internet Time, LLC, v. RPX Corp., 897 F.3d 1336, 1345 (Fed. Cir. 2018).

6 at 1351.

7 Id.

8 Leahy-Smith America Invents Act, 35 U.S.C. §§ 312(a)(3), 315(a)(1), (b), (e)(1) (2011); Worlds Inc. v. Bungie, Inc., 903 F. 3d 1237, 1240-41 (Fed. Cir. 2018).

9 Under 35 U.S.C. § 315(a)(1), "[a]n inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent." Leahy-Smith America Invents Act, 35 U.S.C. § 315(a)(1) (2011). Under 35 U.S.C. § 315(b), "if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent." Leahy-Smith America Invents Act, 35 U.S.C. § 315(b) (2011).

10 Estoppel provisions seek "to protect patent owners from harassment via successive petitions by the same or related parties, to prevent parties from having a 'second bite at the apple,' and to protect the integrity of both the USPTO and Federal Courts by assuring that all issues are promptly raised and vetted." United States Patent and Trademark Office, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 12 (Nov. 2019).

11 The Federal Circuit has gone to great lengths to note that this acceptance is not a "'rebuttable presumption' that formally shifts a burden of production to the patent owner" but rather a "practical" approach to conducting post-grant trial proceedings. Worlds Inc., 903 F. 3d at 1242-43. The court has noted that "a patent owner must produce some evidence to support its argument that a particular third party should be named a real party in interest." Id. at 1242.

To read the full article click here

Originally published 02 July, 2020

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.