Real Party in Interest

News & Analysis as of

No Review of PTAB Determination to Not Institute an IPR, Again - Achates Reference Publishing, Inc. v. Apple, Inc.

Addressing a decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) to not institute inter partes review IPR proceedings, the U.S. Court of Appeals for the Federal Circuit concluded...more

Identification of Cases in Comments to Proposed Rule Change Is Consistent With Prior Guidance in PTAB Practice Guide

Privity and real party-in-interest (RPI) issues have become important, sometimes case determinative, for petitioners filing post-grant challenges such as inter partes reviews and covered business method reviews. The U.S....more

Carefully Consider Corporate Relationships When Determining Real Parties-In-Interest

The PTAB denies institution of an inter partes review (IPR) based on a failure to list a parent corporation as a real party-in-interest (RPI). ...more

PTAB Institutes Kyle Bass Lialda Patent IPR

After filing over thirty petitions for Inter Partes Review of Orange Book-listed patents for various drugs, Kyle Bass and his Coalition for Affordable Drugs finally have made it over the first hurdle. The USPTO Patent Trial...more

Federal Circuit Holds That It Lacks Jurisdiction To Review PTAB’s § 315 Time-Bar Determination

The Federal Circuit has again held that it lacks jurisdiction to review certain decisions of the U.S. Patent Trial & Appeal Board in Inter Partes Reviews, continuing the Court’s apparent “hands off” approach to reviewing PTAB...more

Ray Charles Foundation Can Challenge Heirs’ Attempt to Reclaim Copyrights - Ray Charles Foundation v. Robinson et al.

The U.S. Court of Appeals for the Ninth Circuit reversed a district court’s dismissal of a suit brought by the sole beneficiary of the Ray Charles estate, concluding that the Ray Charles Foundation had standing to challenge...more

First Bass IPR Instituted

After having its first three IPR petitions denied, yesterday the Patent Trial and Appeal Board (PTAB) instituted the first IPR petition filed by hedge fund manager Kyle Bass and the Coalition for Affordable Drugs II LLC. On...more

Standing Conferred Only to a Privy of the Petitioner - Acxiom Corporation v. Phoenix Licensing, LLC

Addressing the issue of standing, the Patent Trial and Appeal Board (PTAB or Board) denied institution of a covered business method (CBM) patent review, finding that the petitioner failed to provide sufficient proof...more

Achates Reference Publishing, Inc. v. Apple Inc. (Fed. Cir. 2015)

Earlier this week, in the Achates Reference Publishing, Inc. v. Apple Inc. case, the Federal Circuit reaffirmed the holding in In re Cuozzo Speed Techs., LLC that it could not review any decision by the Patent Trial and...more

PGR Order Offers Insight Into Successful and Unsuccessful Discovery Requests

Parties to inter partes review and post grant review proceedings have continued to struggle to find the right formula in successfully navigating the PTAB’s requirements for a motion for additional discovery. In American...more

Intellectual Property Alert: USPTO Issues Second Round of AIA Rule Changes

On August 19, 2015, the United States Patent and Trademark Office announced a new round of proposed changes to practice before the Patent Trial and Appeal Board, including inter partes review, post-grant review, the...more

Kyle Bass’ IPRs: Are You Next?

Kyle Bass has made waves throughout the pharmaceutical industry since February, when he and entities associated with his hedge fund, Hayman Capital, began filing IPR petitions at the PTO. While Bass claims to target “weak”...more

USPTO Introduces Second Wave of PTAB Rule Changes

On August 20, 2015, the US Patent and Trademark Office (“USPTO”) issued a Proposed Rule containing amendments to the Rules of Practice governing proceedings before the Patent Trial and Appeal Board (“PTAB”). This proposed...more

Summary of PTO’s Proposed Rules Changes for AIA Proceedings

The America Invents Act (AIA) was enacted into law on Sept. 16, 2011, and the U.S. Patent and Trademark Office implemented rules for governing the inter partes review, post-grant review, transitional program for covered...more

Texas Hospital Strikes Back at Aetna

On February 23, 2015, Aetna filed suit in Texas federal court against Robert A. Behar, M.D. and North Cypress Medical Center (North Cypress), alleging that Dr. Behar, the CEO of North Cypress, offered impermissible ownership...more

Kyle Bass Loses Round 1 of IPR Attack Against Pharma/Biotech Patents

On August 24, 2015, the Patent Trial and Appeal Board (PTAB) declined institution of two petitions filed by Coalition For Affordable Drugs for Inter Partes Reviews (IPRs) of Acorda’s patents (U.S. Patent Nos: 8,007,826,...more

PTAB Denies Institution of Kyle Bass's Ampyra Patent Challenge

The USPTO Patent Trial and Appeal Board (PTAB) has put an end to Kyle Bass’s Ampyra patent challenge, by denying institution of Inter Partes Review (IPR) proceedings. While many were hoping the PTAB would render a decision...more

Celgene’s Pending Sanctions Motions against Kyle Bass’s Hedge Fund

The Patent Trial and Appeals Board (PTAB) previously authorized Celgene Corporation (“Celgene”) to move for sanctions against the Coalition for Affordable Drugs (“Coalition”), an entity affiliated with a Kyle Bass hedge fund...more

The PTAB’s Proposed Rule Changes (August 20, 2015)

Patent owners can include expert testimony with a preliminary response. The Patent Office (Office) conducted a nationwide listening tour in April and May of 2014 to gauge the effectiveness of the rules governing...more

Board Dismisses Petition for Failure to Name All Real Parties-In-Interest

Patent Owners get frustrated when they believe a petition fails to identify all real parties-in-interest. This is understandable, given the difficulties in obtaining additional discovery on the issue. However, sometimes...more

US Patent Trial and Appeal Board proposes rule changes to AIA trials

The United States Patent and Trademark Office (USPTO) recently issued its proposed changes to the rules for AIA trials, which include inter partes review (IPR), post-grant review (PGR) and the transitional program for covered...more

USPTO Announces Second Set of IPR Changes

On August 19, 2015, USPTO Director, Michelle Lee, explained the anticipated, second set of proposed changes to be made to IPR proceedings as inter partes review approaches its 3rd birthday. The first set of changes was...more

MERS: Better Than a Faster Horse

MERSCORP, Inc. (“MERS”) has been under fire for years. We wrote about it a while back when residential mortgage borrowers challenged the ability of MERS to foreclose on mortgages it held on the theory that MERS, as a mere...more

IP Newsflash - August 2015 #2

FEDERAL CIRCUIT CASES - Federal Circuit Quashes $287 Million Enhanced Damages Award Finding Objectively Reasonable Defenses Raised During Litigation - The Federal Circuit has reversed a district court’s award of...more

PTAB Decisions Add Some Clarity to Estoppel in AIA Post-Grant Proceedings

The Leahy-Smith America Invents Act (“AIA”) created three new mechanisms for members of the public, including competitors, to challenge the validity of an issued U.S. Patent. As of June 30, 2015, 3,160 petitions for inter...more

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