Precedent Indicates Mistaken RPI Correctable Without Date Reset

A few weeks back I pointed out that the Patent Trial & Appeal Board (PTAB) had changed its position on whether or not a new RPI designation requires a resetting of the petition filing date. It has now made that determination precedential, along with two other decisions on the topic.
Continue Reading PTAB Determines that RPI Designation is Not a Statutory Requirement After All

Recent Decisions Find Meeting of Statutory Requirement Subject to Agency Discretion

A properly filed AIA trial trial petition must name all real-parties-in-interest (RPI). The RPI requirement is recited by a number of IPR statutes, 35 U.S.C. § 312(a); and 35 U.S.C. § 315(a), (b) and (e). (The PGR statutes include corresponding provisions).

The requirement to name all RPI’s, while seemingly straightforward, has been the subject of numerous disputes at the Patent Trial & Appeal Board (PTAB). Reason being, if the RPI listing is incorrect, the filing date would need to be reset.  And since petition timing can run afoul of the 1-year time bar when the filing date is adjusted (315(b)), identifying an improper RPI listing can lead to termination of the petition.

Early on in the PTAB’s existence, this RPI requirement was a “gotcha” of sorts, especially for companies having parent entities or closely controlled affiliates.  However, whether the RPI listing was inaccurate based on simple oversight, or by design, the PTAB treated the cases alike. That is, the corrected RPI listing led to a new filing date, which in many cases doomed the petition.

More recent decisions, however, take the position that termination in this regard is discretionary.Continue Reading Is RPI No Longer an Issue at the PTAB?

PTAB 2018: A Year of Agency Recalibration

The Patent Trial & Appeal Board (PTAB) stole much of the 2018 patent law spotlight. From landmark Supreme Court decisions such as Oil States and SAS Institute, to significant en banc Federal Circuit decisions in WiFi-One, PTAB practice evolved more in 2018 than in any prior year. That said, the most impactful 2018 changes for practitioners were driven by the agency.

Under the pro-patent leadership of Director Iancu, the agency is expected to drive still further change in 2019.
Continue Reading Top 5 PTAB Practice Developments of 2018

Federal Circuit Finds PTAB Discovery Determinations One-Sided

On the heels of Applications in Internet Time, LLC v. RPX Corporation, the Federal Circuit once again finds itself considering a PTAB RPI/Privity dispute. In RPX, the Court held that “determining whether a non-party is a “real party in interest” demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” That is, the inquiry is fact-dependent, and not limited to one party controlling the other as some PTAB decisions seemed to suggest.

Last week, the Court examined the allocation of burdens in such disputes in Worlds Inc. v. Bungie, Inc., finding that the PTAB may be improperly shifting the burden to Patent Owners in RPI/Privity discovery disputes.
Continue Reading Burden Clarification To Expand PTAB Discovery for RPI/Privity Disputes?

Recalibration of RPI/Privy Perspectives Post-WiFi

Prior to the Federal Circuit’s decision in WiFi One, real-party-in-interest/privy disputes in AIA trials were the sole province of the Patent Trial & Appeal Board (PTAB). Now that the softened appeal bar allows consideration of such disputes (especially as they relate to the one year window of 315(b)), the Court is recalibrating PTAB practices in this regard.

Earlier this month, the Court issued its decision in Applications in Internet Time, LLC v. RPX Corporation. The public version of that opinion was issued yesterday, explaining that the Board was unduly narrow in its RPI analysis. This is one of the more significant decisions on PTAB practice this year and will very likely reinvigorate RPI/privy disputes at the Board.
Continue Reading PTAB Faulted for its Narrow RPI/Privy Analyses