Tag Archives: Privity

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 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

PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit

By Sandip H. Patel on Posted in Institution / Denial, Inter Partes Review
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

Federal Circuit Declares Unreviewable PTAB’s Refusal to Apply Assignor Estoppel

By Thomas L. Duston on Posted in Appeals, Institution / Denial
The Federal Circuit continues to declare aspects of the PTAB’s work to be beyond its review.  Most recently, in Husky Injection Molding Systems Ltd., v. Athena Automation Ltd., Case Nos. 2015-1726, 2015-1727 (Fed. Cir. Sept. 23, 2016), the Federal Circuit, in a 2-1 decision, concluded that it lacked authority to question the PTAB’s refusal to … Continue Reading

Suppliers Can Lack Standing to Seek CBM Review on Behalf of Customers

By Thomas L. Duston on Posted in Covered Business Method, Institution / Denial
In several recent decisions, the PTAB has clarified the standing required to file petitions seeking Covered Business Method review.  Under the AIA, standing to seek Covered Business Method review is limited to those charged with infringement and their “privies.”  “Privies,” however, do not encompass merely any party with whom the petitioner is in “privity.”  “Privies” … 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
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