Director Considers Common Customer/Supplier Indemnification Scenarios

Earlier this year, the USPTO Director clarified that competitors of a multi-defendant suit do not necessarily share a “significant relationship” consistent with PTAB precedent to justify a discretionary denial of an otherwise meritorious IPR petition. Ford Motor Co. v. Neo Wireless LLC (IPR2023-00763). Late last week, the Director considered another common multi-party litigation scenario. This time the Director explored the degree of interest (i.e., degree of cooperation, contractual obligation, or common purpose) necessary to create an RPI or privity relationship such that a 315(b) bar of one such party applies to the other — specifically, in customer/supplier indemnification scenarios.

In Luminex International Co. Ltd v. Signify Holdings B.V., the Director considered whether an indemnification obligation, absent more, demonstrates an RPI relationship, or creates privity between a customer and supplier.Continue Reading PTAB: Customer/Supplier RPI & Privity?

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 PatentsPostGrant.com 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