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Archive for January 24th, 2014

Beware: Indemnification May Create Privity Under IPR Statutes

Posted On: Jan. 24, 2014   By: Scott A. McKeown
indemnificationIndemnification Obligation May Trigger IPR Clock

Indemnification from a claim of patent infringement is a common warranty in contractual agreements for the exchange of technological goods. In the event of an infringement claim against the contracted goods/services, a demand for indemnity triggers a duty of the supplier to defend against the claim in some manner, typically funding the defense, or taking over responsibility for the defense effort. As I discussed previously, indemnification clauses require special attention after the America Invents Act (AIA).

Recently, in Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR2013-00453, Paper 31, January 22, 2014) the Patent Trial & Appeal Board (PTAB) analyzed the interplay of an indemnification obligation as it relates to 35 U.S.C. § 312(a) and the 12 month window of 35 U.S.C. § 315(b). That is, does the existence of a contract/indemnification clause create privity between the contracting party under the IPR statutes, or render an indemnitor a real-party-in-interest with respect to the indemnified party? Read the rest of this entry »