–Part I–
Since the storied emergence of the patent troll (non-practicing entity (NPE) for those preferring the multisyllabic, PC terminology), it is not uncommon for an entire industry to find themselves on the same side of the defendant fence of a patent infringement suit. Where the targeted industry includes a mixture of small to large competitors, it is especially common for smaller targets to form temporary litigation alliances amongst themselves, and with their larger, deep pocket competitors.
These alliances are memorialized as written contracts or “joint defense agreements” (JDA). The purpose of such agreements is to provide for a structured exchange of information for mutual defense benefit, and protect this communication from discovery requests under the auspices of the joint-defense privilege.
When such agreements are in place, and inter partes reexamination is sought as a concurrent litigation strategy, a common concern is the applicability of the estoppel provision of 35 USC § 315(c) to the co-defendants as participants of the joint defense. As explained next, it is clear that the USPTO does not consider mere co-defendant status as being in “privity” pursuant to 37 C.F.R. §1.915(b)(7-8). However, once multiple parties are contractually bound as one, by JDA, for the purpose of sharing effort and resources for both reexamination and litigation purposes, the issue becomes less clear cut.
In other words, where one defendant of a multi-defendant group chooses to seek inter partes reexamination, are the otherwise unrelated, co-defendants now in “privity” by virtue of the JDA and subject to inter partes reexamination estoppel?
The answer to this question likely depends upon whether the USPTO or District Court is considering the issue, the content of the JDA, and conduct of the joint defendants relative to the reexamination.
1. USPTO
In the USPTO, the privity issue is presented when a Patent Holder challenges, by petition, the certification provided by the Requester in a request for inter partes reexamination. (Rule 915(b)(8)) In such a petition, the Patent Holder argues that the request for inter partes reexamination is defective and should be vacated for failing to properly identify the real-parties-in-interest (i.e., all privies). For example, in 95/000,166 (found here), the Patent Owner asserted that participation in a concurrent litigation as co-defendants, and as members of a joint defense group demonstrated privity between such defendants.
As noted in the ‘166 petition decision, whether or not co-defendants may benefit from a reexamination filing, does not make them privies in the eyes of the Office. In this regard, the Office specifically notes:
The above quote cites the General Comments in the Rules to Implement Optional Inter Partes Reexamination Proceedings, 65 FR 76759 (December 7, 2000). The Petition Decision then goes on to note that participation in a joint defense group for the litigation does not, absent more, imply the “direction and control” necessary to establish privity for the purposes of the reexamination proceeding. Petition Decision at page 10.
More recently, a petition filed in 95/001,206 (found here) “challenged the accuracy of the certification,” using guidance provided by the Office in a recent Order to Show Cause involving the “TrollBusters” (TB) organization. (See our previous post on this topic, TrollBusters decision). In the TrollBusters decision, TB’s request for inter partes reexamination was denied a filing date, in doing so, the Office outlined a framework for analyzing the real party in interest under Rule 915(b)(7) & (8). The factors identified by the Office as tending to show that unnamed parties may be in privity with the Requester included:
-Technical oversight
-Financial Contribution
-Editorial control over strategic issues.
The recent ‘206 petition attempts to follow the TB framework, implying financial contribution between litigants, the use of common counsel, technical oversight, and overlapping work product allegedly leveraged to prepare the reexamination request. A decision on this petition remains outstanding.
While the Office may still be reluctant to disturb their “face value” analysis of the privity issue, in the ‘206 petition filing, a much closer call is presented.
In Part II of this series, we will explore the potential offensive use of JDA created privity in Federal District Courts with respect to reexamination estoppel, and offer suggestions in avoiding the issue.