Real Party in Interest

News & Analysis as of

Amendments to the Rules of Practice for Trials Before the PTAB Take Effect May 2, 2016

The US Patent and Trademark Office has announced amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board that will take effect on May 2, 2016. The amendments generally adopt the rules proposed...more

Real Party-in-Interest in Post-Grant Proceedings

A party petitioning for inter partes review (IPR) is required to name all real parties-in-interest (RPIs)—this helps ensure proper application of statutory estoppel and assists the Patent Trial and Appeal Board (PTAB) in...more

PTO Issues Final Rule Changes to IPR Proceedings

The PTO issued its long-anticipated rule changes for IPR and PGR proceedings. These rules follow up on immediate changes to the rules that were implemented about a year ago. Generally considered pro-Patent Owner changes to...more

Fish & Richardson’s Post-Grant Report 2015

Since the enactment of the America Invents Act (AIA) in September 2012, post-grant proceedings have become an important part of litigation strategy, and in some instances are helping to reduce the time and cost associated...more

IPR Survives Despite Petitioner Failure to Name All Real Parties of Interest - Mako Surgical Corp. v. Blue Belt Techs., Inc.

Addressing the real parties in interest (RPI) requirement for inter partes review (IPR) petitions, a panel for the Patent Trial and Appeal Board (PTAB or Board) declined to terminate an already instituted IPR, despite the...more

Board to Petitioner: No RPI, No IPR - Corning Optical Comm’s RF, LLC v. PPC Broadband, Inc.

Addressing the requirement to disclose the real parties-in-interest (RPI) for an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) denied the petitioner’s request for rehearing regarding the...more

Suggestion of Control Not Enough for RPI Challenge; Nexus Matters for Commercial Success - Universal Remote Control, Inc. v....

Addressing the real parties-in-interest (RPI) requirement for inter partes review (IPR) and the “nexus” requirement for commercial success to rebut an obviousness challenge, the Patent Trial and Appeal Board (PTAB or Board),...more

Spangenberg Finds Partner to Target Nucynta® Patent

About a year ago, certain hedge-fund petitioners made headlines by filing IPR petitions targeting various biopharma patents. Most notably, Kyle Bass, founder of Dallas-based hedge fund Hayman Capital Management, and his...more

New Rules of Court Regarding Writ Petitions in Small Claims Court Cases

Effective January 1, 2016, new Rules of Court detail the procedures for filing writ petitions in small claims court cases. See Cal Rules of Ct 8.970?–?8.977. These new court rules elaborate on CCP §116.798, which was enacted...more

File It Early: The PTAB Rejects an IPR Petition for Being One Day Late—Despite Protestations of "Malfunctioning" PTO Website

35 U.S.C. § 315(b) bars petitions for an inter partes review that are 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...more

Federal Circuit Provides Additional Insight into the Scope of Board Institution-Related Decisions That Are Not Appealable

Just as inter parties review proceedings (“IPRs”) are limited in scope, addressing invalidity based only on patents and printed publications, practitioners should keep in mind that appellate review of United States Patent...more

Non-Litigant, You Are Not Needed in This IPR - Unified Patents Inc. v. C-Cation Techs., Inc.

Addressing joinder issues, the Patent Trial and Appeal Board (PTAB or Board) denied a request to institute an inter partes review (IPR) and a request for joinder, finding joinder would complicate the instituted IPR and that...more

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

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