Failed PTAB Bill Reemerges For a 6th Time

Yesterday, U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (here). Also yesterday, some of the very same senators introduced the Patent Eligibility Restoration Act of 2023

The co-introduction of these bills suggests a plan to drive compromise on patent eligibility.Continue Reading New PTAB Bill to Drive 101 Compromise?

Virtual CLE Program January 24 – 27th

IPWatchdog’s PTAB Masters 2022 (PTAB-palooza if you prefer), is coming next week!

The free, 4-day CLE program is virtual, and will focus on the PTAB from the viewpoint of both the patent owner and petitioners challenging patents.  Topics will explore political and legislative developments impacting the agency in

RPX Business Dealings With Salesforce Result in RPI Snafu

Earlier this month, the PTAB issued its remand decision in RPX Corp. v. Applications In Internet Time, LLC (here).  As a reminder, the Federal Circuit (pre-Thryv) instructed the PTAB to further analyze under a more “flexible approach” whether Salesforce was a real party-in-interest (RPI) to two RPX-filed IPR petitions.  On remand, the Board held that Salesforce was an RPI, and that the petitions at issue were therefore time-barred under § 315(b).

The outcome is hardly surprising given the bad facts of RPX, but has anything really changed for RPI/privy analyses?
Continue Reading PTAB Bounces RPX on Unique RPI Relationships

Discretionary Consideration Bars ReturnMail Side-Step Via Intervenor

Last fall, I explained that the Patent Trial & Appeal Board (PTAB) was considering the relationship of government contractors in Court of Federal Claim (COFC) patent disputes against the U.S. government.  That is, given the typical existence of a contract between the government and the contractor, what such a relationship meant for RPI/privy determinations.

Perhaps not surprisingly, the PTAB has found privity to exist between the government and its contractors in common contractual scenarios. For example, where the contractor intervenes in the COFC matter. And that the later AIA petition of the contractor (outside the 315(b) window of the government) is barred.

Perhaps more surprisingly, however, is the discretionary consideration under 314(a) relative to ReturnMail that would effectively close the PTAB to patent disputes at the COFC.
Continue Reading PTAB Closed to Court of Federal Claims Matters?

Federal Gov’t & Federal Contractors in the Court of Federal Claims – A Legal Relationship?

Federal government contractors are protected from patent infringement suits when infringing activities are performed pursuant to a contract with the Federal Government. 28 U.S.C. § 1498(a).  Under § 1498, rather than sue such contractors directly in a Federal District Court, patentees must instead file a suit against the United States in the Court of Federal Claims.  Typically, contractors will intervene thereafter and become third party defendants.

When these contractors lodge IPR petitions with the PTAB, they often take the view that since they were never served with a “complaint for infringement,” that the one year anniversary of the 1498 complaint does not preclude such filings under 35 U.S.C. § 315(b).  But a recent case will explore the legal relationship of the Federal Government to its contractors, and whether at least a privity relationship exists for purposes of applying 315(b) to the complaint anniversary date.
Continue Reading PTAB Considers RPI/Privy Relationship of Federal Gov’t in Related Court of Federal Claims Dispute

Indemnification “Significant and Meaningful Relationship”

Extending a trend started last spring, the PTAB is looking more closely at AIA trial petitions coming from separate parties.  For parties seeking to pursue an AIA trial proceeding, this trend should give pause to those considering participation in Joint Defense Groups, or linked to another petitioner by business arrangement or indemnification obligation.

Last week, in PayPal Inc. v. Ioengine LLC, the Board explained that a customer/supplier relationship, together with indemnification obligation is enough to be considered a “same petitioner” in a General Plastic analysis.
Continue Reading PTAB Focuses on Customer/Supplier Relationship in 314(a) Denial

September Webinar to Focus on RPI/Privy Issues

The September edition of the webinar series will be held this Wednesday September 18th@ 2-3PM (EST). The September program is entitled Avoiding PTAB Pitfalls: Indemnification & Joint/Common Interest Agreements.

The webinar will explore the increasing complexities of real party in interest (RPI) and privity determinations before

Statutory Petition Requirement Correctable

Back in April I discussed the Patent Trial & Appeal Board’s (PTAB) evolving position that an updated RPI designation did not require a resetting of the petition filing date. That is, despite telling Congress that the RPI was a statutory requirement for a petition to be considered in 2015, and that correction of RPI required a new filing date, the Board migrated to a new view that such mistakes could be excused if made without deceptive intent (more recently relying on a footnote in Wifi-One explaining the Board’s practice of accepting corrections to defective filings.)

Last week, the Federal Circuit issued a precedential opinion finding that the PTAB’s interpretation of its remedial regulations in this regard were not plainly erroneous or inconsistent.
Continue Reading CAFC Endorses PTAB Practice of Accepting Late RPI Designations

Interactions During Preliminary Proceeding Can Doom PTAB Filing

Since last summer’s decisions in Applications in Internet Time, LLC v. RPX Corp., and Worlds Inc. v. Bungie, Inc., the Patent Trial & Appeal Board (PTAB) has seen RPI/privity disputes spring back to the fore. The renewed scrutiny presents challenges for petitioners participating in joint defense groups or those obligated under indemnification agreements.

A precedential decision issued today by the Federal Circuit highlights the danger of new RPI and privy interactions post-petition filing. 
Continue Reading Post-filing Conduct Impacts PTAB RPI/Privity Determinations