Real Party-in-Interest

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Time Bar Challenge Must Be Raised before the Board, Not Saved for Appeal

By Michael R. Weiner on Posted in Real Party-in-Interest, Trial Procedures
Since the Federal Circuit’s 2018 en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, (discussed here) the court has reviewed a number of PTAB decisions on whether an IPR petition was filed more than one year after the petitioner was served with a complaint asserting the challenged patent, and thus time-barred under 35 U.S.C. … Continue Reading

Petitioner Has Burden of Persuasion on Real Party in Interest

By Michael R. Weiner on Posted in Discovery, Real Party-in-Interest, Trial Procedures
Under 35 U.S.C. § 312(a), an IPR petition must identify “all real parties in interest,” and, an IPR petition is time-barred under 35 U.S.C. § 315(b) if “filed more than 1 year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging … Continue Reading

Successful IPR Petition Time Barred Under 35 U.S.C. §315(b) by Involuntarily Dismissed Complaint

By Kate Nuehring Su on Posted in Appeals, Institution / Denial, Inter Partes Review, IPR, Real Party-in-Interest
In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Appeal Nos. 2017-1555, 217-1626 (Fed. Cir. Sept. 28, 2018), the Federal Circuit vacated the Patent Trial and Appeal Board’s final written decision in an IPR because institution of the IPR should have been time barred under 35 U.S.C. §315(b).  Additionally, the Federal Circuit declined to … Continue Reading

Federal Circuit Upholds Board’s Use of Control Standard of Privity to Assess Time Bar

By Marshall Gerstein on Posted in Inter Partes Review, Real Party-in-Interest
It is undisputed that institution of an inter partes review (IPR) is time-barred under 35 U.S.C. § 315(b) if the petition is “filed more than 1 year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent. The … Continue Reading

Federal Circuit Affirms Tribal Sovereign Immunity Does Not Apply to IPR

By Lynn L. Janulis, Ph.D. on Posted in Appeals, Inter Partes Review, IPR, Real Party-in-Interest
The Federal Circuit recently affirmed the PTAB’s decision that tribal immunity cannot be asserted in an IPR (Saint Regis Mohawk Tribe v. Mylan Pharma Inc., Case No. 2018-1638 (Fed. Cir. July 20, 2018). On appeal, Allergan, Inc. (“Allergan”) argued that the Board improperly denied its motion to withdraw from IPR proceedings, and the Saint Regis … Continue Reading

Federal Circuit Admonishes PTAB for Taking Short-cuts

By Sandip H. Patel on Posted in Institution / Denial, Inter Partes Review, Real Party-in-Interest
In Application in Internet Time v. RPX Corp., Nos. 2017-1698, -1699, -1701 (Fed. Cir. July 9, 2018), the Federal Circuit decided that the Patent Trial and Appeal Board “applied an unduly restrictive test for determining whether a person or entity is a ‘real party in interest’ within the meaning of [35 USC] § 315(b) and … Continue Reading

Federal Circuit Requests Briefing from Patent Office Regarding § 315(b) Time-Bar Determinations

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, IPR, Real Party-in-Interest, Trial Procedures
On June 7, 2018, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp. requested that intervenor, Patent Office director Andrei Iancu, and appellee Broadcom, file a response to Wi-Fi One’s second petition for rehearing.  Wi-Fi One, Case No. 2015-1944, Docket No. 212 (June 7, 2018).  At issue was whether the court should grant Wi-Fi … Continue Reading

Tribal Sovereign Immunity Alone Cannot Protect Patents from IPR

By Lynn L. Janulis, Ph.D. on Posted in Appeals, Inter Partes Review, Real Party-in-Interest
In late March, the Federal Circuit issued an order staying the PTAB proceedings concerning numerous related IPRs of patents issued to Allergan, Inc. (“Allergan”), but assigned to the Saint Regis Mohawk Tribe (“the Tribe”). These IPRs were headed toward a final hearing on the merits previously scheduled for April 3rd. In those IPRs, the PTAB denied the Tribe’s … Continue Reading

Precedential and Informative Board Decision on Serial IPR Petitions

By Lynn L. Janulis, Ph.D. on Posted in Institution / Denial, Inter Partes Review, IPR, Real Party-in-Interest, Sections 102/103
Serial IPR petitions directed to previously-challenged patents account for many of the petitions filed with the PTAB; however, 35 U.S.C. § 325(d) provides the Board with discretion to reject petitions where the same, or substantially the same, prior art or arguments have already been presented to the USPTO.  The Board recently designated as precedential part … Continue Reading

Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

By Sharon M. Sintich, Ph.D. on Posted in Amendments, Appeals, Discovery, Estoppel, Institution / Denial, Inter Partes Review, IPR, Legislation, Post Grant Review, Real Party-in-Interest, Stays, Trial Procedures
The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial … Continue Reading

Guidance on Requesting Motions for Sanctions

By Sharon M. Sintich, Ph.D. on Posted in Covered Business Method, Discovery, Inter Partes Review, IPR, Real Party-in-Interest, Trial Procedures
On November 10, 2016, the Intellectual Property Owners Association (IPO) hosted a panel discussion entitled Ethics in AIA Post-Grant Proceedings at the PTAB with the Honorable Thomas Giannetti, Lead Administrative Patent Judge of the PTAB. The main topic of the discussion was guidance on motions for sanctions.  The rules relating to trial practice before the … Continue Reading

PTAB’s Reconsideration of Institution Decision Unreviewable on Appeal

By Michael R. Weiner on Posted in Appeals, Institution / Denial, Inter Partes Review, IPR, Real Party-in-Interest
In denying a petition for rehearing, the Federal Circuit determined in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. that under Cuozzo, the court lacks authority to review a PTAB decision that reconsidered an IPR institution decision, and then terminated the IPR because the petition failed to identify the real party in interest. As we have … Continue Reading

Federal Circuit Again Refuses to Review PTAB’s Application of the Time Bar to AIA Petitions

By Sandip H. Patel on Posted in Discovery, Institution / Denial, Inter Partes Review, Legislation, Real Party-in-Interest
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

The Personal Touch: PTAB Grants Bass and Spangenberg IPR Petition

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Inter Partes Review, Real Party-in-Interest, Sections 102/103
On May 20, 2016, the PTAB granted Kyle Bass and Erich Spangenberg’s petition for IPR (IPR2016-00245) against a patent owned by Alpex Pharma SA (Alpex).  The petition sought cancellation of claims 1-9 of U.S. Patent No. 8,440,170, asserting that the claims were obvious in view of numerous references.  The claims of the ‘170 patent are generally … Continue Reading

PTAB Provides Procedural Guidance with Five Precedential Opinions

By Marshall Gerstein on Posted in Amendments, Discovery, Real Party-in-Interest, Trial Procedures
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

PTAB Requests Further Briefing on Petition for Sanctions Against Hedge Fund Coalition

By Katherine L. Neville, Ph.D. on Posted in Inter Partes Review, Real Party-in-Interest
The PTAB recently revisited Patent Owners’ requests to file motions for sanctions against the Petitioner, Coalition for Affordable Drugs (“CFAD”).  The CFAD was started in conjunction with hedge fund manager Kyle Bass, who has been accused of filing IPRs in order to manipulate company stock price for his hedge fund’s monetary gain.  Recently, in Coalition … Continue Reading

PTAB Denies Institution of Two IPR Petitions Filed by Hedge Fund

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Institution / Denial, Inter Partes Review, Legislation, Real Party-in-Interest, Sections 102/103
As the patent community anxiously awaits the PTAB’s decision concerning whether the Coalition For Affordable Drugs (CFAD) should be sanctioned for filing an IPR petition against a Celgene patent¹, the PTAB recently denied institution of two IPR petitions² the CFAD filed concerning two Acorda patents that cover Ampyra, a billion-dollar drug for treating multiple sclerosis.  The … Continue Reading

Pharma Patent Owner Attacks Bass IPR Petitions by Requesting Discovery of Real Parties-In-Interest

thumbnail image of DNA strandBy Marshall Gerstein on Posted in Biotechnology, Discovery, Real Party-in-Interest
A picture can be worth a thousand words. This one illustrates the complex web of actual and potential real parties-in-interest (RPIs) that a pharmaceutical patent owner is attempting to pierce for two IPR petitions recently filed by Coalition For Affordable Drugs II—one of several similarly-named creations of hedge-fund manager Kyle Bass and his Hayman Credes … Continue Reading

Is the Coalition for Affordable Drugs Abusing the IPR Process?

By Julianne M. Hartzell on Posted in Institution / Denial, Inter Partes Review, Legislation, Real Party-in-Interest, Sections 102/103
The PTAB granted leave on June 9 for the patent owner, Celgene Corporation, to file a motion for sanctions seeking dismissal in several IPRs¹ filed by the Coalition for Affordable Drugs. The Coalition for Affordable Drugs, an organization created by the hedge fund Hayman Credes Master Fund L.P., has filed multiple IPRs against pharmaceutical companies with … Continue Reading

Real Party-In-Interest Not Necessarily Established by Co-Defendants in Litigation

By Eric M. Brusca, Ph.D. on Posted in Inter Partes Review, Real Party-in-Interest
Whether a non-identified party is a real party-in-interest to a proceeding is a highly fact-dependent question. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)).  “A common consideration is whether the non-party exercised or could have exercised control over a … Continue Reading

Real Party in Interest – A Strategy For Attacking IPR Petitions.

By Heather R. Kissling on Posted in Inter Partes Review, Real Party-in-Interest
Recent statistics suggest that approximately two thirds of claims challenged in IPR proceedings are held to be invalid by the PTAB.  For PTAB trials instituted on petitions filed in Art Unit 1600 at the U.S. Patent and Trademark Office, which examines patent applications in the biotechnology and pharmaceutical arts, 100% of the final decisions rendered … Continue Reading
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