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In an IPR Proceeding With Several Listed Petitioners, The Petitioners Must Speak With A Single Voice

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In IPR2014-00954, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Petravick, Deshpande, and Clements) issued a decision regarding the proper identification of lead and backup counsel listed in the powers of attorneys in cases involving multiple parties constituting a single Petitioner. The Board explained:

According to 37 C.F.R. ยง 42.2, “Petitioner” means “the party filing a petition requesting that a trial be instituted.” In circumstances not involving a motion for joinder or consolidation of separate proceedings, for each “petition” there is but a single party filing the petition, no matter how many companies are listed as petitioner or petitioners and how many companies are identified as real parties-in-interest. Thus, before the Board, the separate companies constitute and stand in the shoes of a single “Petitioner.” Because the eleven companies constitute, collectively, a single party, they must speak with a single voice, both in writing and oral representation.

The Board then went on to address the fact that while the petition properly identified lead and backup counsel, the powers of attorney filed by the various real parties in interest were not consistent with that identification. In one instance, one party excluded certain identified lead and backup counsel while certain other powers of attorney filed by the other real parties in interest excluded other certain identified backup counsel.
As a result the Board ordered the Petitioner to file updated powers of attorney consistent with the designation of lead and backup counsel set forth in the Petition.

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This decision addresses a procedural issue regarding inter partes review before the PTAB, but one that could have important implications. Companies agreeing to jointly file a petition for inter partes review must be mindful that, except in cases involving joinder or consolidation of separate proceedings, the Board will not allow each company listed as Petitioner or a real party in interest to be separately heard. Instead, the Board requires that the “Petitioner” speak with “a single voice” regardless of the number of real parties in interest. Thus, companies considering forming or joining a group to file an IPR should consider that one consequence of filing a petition as one of several real parties in interest is that they will not have the opportunity to be separately heard. 505 Games, Inc. et al. v. Babbage Holdings, Inc., Case IPR2014-00954 (Clements) (August 22, 2014), Paper 17.

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.