Articles Posted in Inter Partes Review

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Under 35 U.S.C. 312(a)(2) and 37 CFR § 42, all “real parties in interests” (RPIs) are required to be named in an Inter Partes Review petition. Failure to name all RPIs could result in denial of a petition. The policy behind this requirement is rooted in the estoppel provisions that apply to decisions by the Patent Trial and Appeal Board (“PTAB”). Namely, a final written decision by the PTAB estops the petitioner (or all real parties in interest) and their privies from asserting invalidity or unpatentability on any ground that the petitioner raised or “raised or reasonably could have raised” during the IPR or PGR proceeding in a district court, International Trade Commission, or other USPTO proceeding. See 35 U.S.C. 315(e)(1), as amended, and 35 U.S.C. 325(e)(1). The PTO has also identified potential conflicts of interest and credibility of evidence as reasons for requiring the identification of all RPIs.

However, there is no clear definition for what constitutes a RPI. Indeed, the lack of a clear standard was by design due to the highly fact-dependent nature of determining who constitutes a real party in interest:

Who constitutes a real party in interest or privy is a highly fact-dependent question, especially on the issue of whether a party who is not a named participant in a given proceeding nonetheless constitutes a “real party in interest” or “privy” to that proceeding. Courts and commentators agree that there is no “bright-line test” for determining the necessary quantity or degree of participation to qualify as a “real party in interest” or “privy” based on the control concept. See Gonzalez v. Banco Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994); see also Wright & Miller § 44512 (“The measure of control by a nonparty that justifies preclusion cannot be defined rigidly.”). Accordingly, the Office has not enumerated particular factors regarding a “control” theory of “real party in interest” or “privy” in the proposed rules. Instead, to resolve a real party in interest or privy dispute that may arise during a proceeding, the Board plans to consider each case on its specific facts.

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In IPR2012-0004, on January 24, 2013, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Blankenship, Giannetti and McNamara) issued its Decision on Petitioner MacAuto USA’s (“Petitioner”) IPR petition for review of BOS GmbH & KG (“Patent Owner”) U.S. Patent No. 6,422,291. The ‘291 patent relates to a roll-up blind especially suited for mounting on the rear window of an automobile.

In its Preliminary Response, the Patent Owner asserted that the Petition should be denied based on, among other things, the fact that a complaint was served on the Petitioner’s parent company more than a year before the filing of the petition. Under 35 U.S.C. section 315(b), an inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. In granting the petition over the Patent Owner’s argument, the Board relied on the fact that the prior lawsuit was voluntarily dismissed without prejudice and, as such, under Federal Circuit law, the effect of such a dismissal “leaves the parties as though the action had never been brought.”
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In IPR2012-00035, on January 22, 2013, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Lane, Robertson and Guest) issued an order concerning an ex parte email sent by Petitioner Nissan North America, Inc. (“Petitioner”). According to the Petitioner’s email, in its Preliminary Response the Patent Owner made arguments based on an obvious mathematical error, e.g., stating that .5 microns is 500 angstroms when it actually is 5000 angstroms. In its ex parte email, the Petitioner asked for the proper procedure for requesting the Board to take judicial notice of this “false statement.”

In its Order, the PTAB expressed concerned about the manner and content of the Petitioner’s ex parte email to the Board:

The error asserted by Nissan is not the subject of this Order. Instead it is the manner and content of the Nissan email that are of concern. It is troubling that Nissan contacted the Board and included information to rebut the Collins Preliminary Response without authorization to do so. It is even more troubling that Nissan did so without providing Collins with a copy of the email. Communications with a Judge or other Board member regarding a specific proceeding is not permitted unless both parties have an opportunity to be involved in the communications. 37 CFR 42.5(d). The Practice Guide notes certain exceptions to the prohibition, e.g., where a party seeks to arrange a conference call. The Nissan email does not fall into any of the listed exceptions.

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The United States Patent and Trademark Office’s new post-grant proceedings, including Inter Partes Review, are akin to litigation proceedings in several respects. As a result, the PTO Rules provide for the pro hac vice admission of litigation lawyers not licensed to practice before the Patent Office. However, practitioners should be aware that the grant of admission is not automatic and the application represents more than a mere formality.

Pursuant to 37 C.F.R. 42.10(c):

(c) The Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to the condition that lead counsel be a registered practitioner and to any other conditions as the Board may impose. For example, where the lead counsel is a registered practitioner, a motion to appear pro hac vice by counsel who is not a registered practitioner may be granted upon a showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.

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In IPR2012-00022, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Tierney, Green and Robertson) issued a decision rejecting the Patent Owner Isis Innovation Limited’s (“Patent Owner”) motion for leave to challenge petitioner Arisoa Diagnostics’ (“Petitioner”) standing to file the petition for inter partes review. According to the Patent Owner, the Petitioner lacks standing because it raised the affirmative defense of invalidity as an affirmative defense to the Patent Owner’s counterclaim for infringement of the asserted patent in a Declaratory Judgment Action filed by the Petitioner seeking a declaration of non-infringement in the Northern District of California, Case No. 3:11-cv-06391.

The Patent Owner argued that allowing the Petitioner to file an inter partes review under such circumstances would violate Section 315(a)’s prohibition against filing an IPR when a petitioner has filed a civil action challenging the validity of a claim of the asserted patent before filing the petition for inter partes review. While Section 315(a)(3) provides an exception to this rule in the circumstance when the petitioner’s challenge to the patent’s validity is in the form of a counterclaim in a suit initiated by the patent owner, the Patent Owner argues that this exception does not apply to the circumstances present here.
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Yesterday, the Patent Trial and Appeals Board (“PTAB”) issued a decision in the first IPR filed, i.e., IPR2012-00001. Garmin International, Inc. (“Garmin”) filed the IPR on a patent owned and asserted by Cuozzo Special Technologies LLC (“Cuozzo”), U.S. Patent No. 6,778,074 covering a speed limit indicator.

Central to Garmin’s IPR Petition and the PTAB’s decision was the meaning of the claim term “integrally attached” as used in the claim phrase “a speedometer integrally attached to said colored display.” Garmin argued that, for the purposes of the petition, this term should be given the broad construction urged by the Patent Owner in the related litigation of the ‘074 Patent. Garmin did not identify its proposed construction. The PTAB rejected this approach.
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