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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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Azure Networks, LLC and Tri-County Excelsior Foundation (“Plaintiffs,” “Azure” or “TCEF”) filed a patent infringement action against several defendants, including Qualcomm and Marvell, among others. As explained by the court, “[t]he ‘129 Patent is entitled ‘Personal Area Network with Automatic Attachment and Detachment’ and discloses a Personal Area Network (“PAN”), which is managed by a hub device and can support wireless “attachment” of multiple Personal Electronic Accessories (“PEAs”). ‘129 Patent at 3:10-32.”

The court further explained the ownership of the patent as follows: “Robert Donaghey, the sole inventor of the ‘129 Patent, assigned his rights to BBN Technologies Corp. (“BBN”) in 2007, who then assigned the ‘129 Patent to Azure. Azure is a Texas limited liability company with its principal place of business in Longview, Texas. Complaint at 2. In June 2010, Azure donated numerous patents and patent applications (including the application that later issued as the patent-in-suit) to TCEF. TCEF is a Texas non-profit corporation with its principal place of business in Marshall, Texas. Id. Only July 30, 2010, TCEF and Azure entered into an exclusive license agreement whereby Azure received a ‘worldwide, transferable, exclusive license under the [‘129 Patent], with the right to sublicense others, to (i) make, have made, use, sell, offer to sell, import and lease any products, (ii) use and perform any method, process, and/or services, and (iii) otherwise practice any invention in any manner, such that Azure has full right to enforce and/or sublicense the [‘129 Patent].'”
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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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Plaintiff Parkervision, Inc. filed a patent infringement action against Qualcomm. Qualcomm answered the complaint and alleged an affirmative defense of inequitable conduct and a counterclaim that included a claim for inequitable conduct. Parkervision moved to strike the affirmative defense and the counterclaims pertaining to inequitable conduct, among other defenses and claims.

As explained by the district court, “Qualcomm counterclaims that ParkerVision’s ‘551 patent is unenforceable due to ParkerVision’s inequitable conduct and that the other five ParkerVision patents — ‘518, ‘371, ‘734, ‘342, and ‘845 — are also unenforceable because they stem from the ‘551 patent. (Doc. No. 91, ¶¶ 69-116.) All six of the inequitable conduct counterclaims thus rest on the factual allegations regarding the ‘551 patent. Specifically, Qualcomm sets forth three theories of inequitable conduct, alleging that Michael Q. Lee, the ‘551 patent’s prosecuting attorney, and David F. Sorrells, an inventor: (1) “buried” the Patent and Trademark Office (“PTO”) with references; (2) belatedly disclosed a material reference to the PTO; and (3) materially misrepresented four references to the PTO. Qualcomm urges the Court to consider the alleged inequitable conduct cumulatively, as a “course of deliberate egregious misconduct.” (Id. ¶ 35.)”
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Blue Spike, LLC (“Blue Spike”) filed a patent infringement action against Biolink Solutions LTD. (“Biolink”) and Biometric, LLC. Biolink is a Russian company that has no offices, employees, agents, distributors or related entities in Texas, but does business in Texas according to the complaint. Blue Spike served Biolink with the complaint through the Texas Secretary of State. Biolink moved to quash service of the summons on the ground that it was not served through the procedures set forth in the Hague Convention.
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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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The following six decisions in patent cases pending in the Central District of California

were reported for the period of January 1 through January 11, 2013.

DATE

CASE AND HOLDING

JUDGE

MOTION TYPE

1/2/2013

The Tawnsaura Group, LLC v. Maximum Human Performance, LLC, 2-12-cv-07189

Otero

Dismiss

The court denied defendants’ motion to dismiss plaintiff’s complaint because the asserted patents for health improvement methods contained ineligible subject matter.

Jumbo Bright Trading Limited, et. al. v. The Gap, Inc., 2-12-cv-08932

Pregerson

Preliminary Injunction

The court denied plaintiffs’ motion for a preliminary injunction to preclude defendant from selling its accused shoes because plaintiffs failed to present sufficient evidence of irreparable harm.

1/4/2013

Marketlinx Inc. v. Industry Access Incorporated, et al. , 2-12-cv-03496

Olquin

Compel – Source Code

The court granted plaintiff’s motion to compel the production of defendant’s source code.

1/8/2013

Medsquire LLC v. Compulink Business Systems Inc., 2-11-cv-10122

Fitzgerald

Compel – Invalidity Contentions

The court denied plaintiff’s motion to compel defendants to provide further invalidity contentions.

TriPharma, LLC v. First Fruits Business Ministry LLC, et. al., 8-12-cv-00404

Selna

Contempt – Preliminary Injunction

The court denied plaintiff’s unopposed motion to find defendants in contempt of a preliminary injunction because plaintiff failed to establish a knowing violation of the injunction.

1/10/2013

InTouch Technologies Inc. v. VGo Communications Inc., 2-11-cv-09185

Anderson

Motion for Judgment – Declaration that the patents-in-suit were invalid.

The court sustained plaintiff’s objection to defendant’s motion for judgment which included a declaration that the patents-in-suit were invalid as to all claims where the jury found invalidity as to only one claim per patent.

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. 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.

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After the recent Federal Circuit decision in the Apple v. Samsung case and the district court’s application of that reasoning to find that a permanent injunction should not issue in Apple’s favor, many predicted that it would be very difficult to obtain a permanent injunction in patent cases going forward where many components are at issue. Not so fast.

As the district court explained in the Brocade Communications Systems (“Brocade”) v. A10 Networks (“A10”), upon the showing of an appropriate causal nexus a permanent injunction should issue. “Some have suggested that these standards herald the death, or at least the wounding, of the permanent injunction in patent cases involving hardware or software products with hundreds or thousands of components. One standard in particular – the “casual nexus” standard – bears the brunt of this discussion. Whether those opinions are fair or even accurate is something this court cannot say. What this court can say, however, is that whatever the “trend” of permanent injunctions in such cases, the Federal Circuit has made clear that injunctions can and should continue to issue upon the assembly and presentation of an appropriate record. After careful consideration of the parties’ voluminous papers and substantial oral arguments, the court is persuaded that the record in this case, which shows a clear causal nexus between Brocade’s loss of exclusivity in its inventions and A10’s infringement, is one such example.”
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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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