Defect in Patent Assignment Results in IPR Challenge Effectively Going Unopposed

by Knobbe Martens
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Knobbe Martens Olson & Bear LLP

Old Republic’s IPR petition was effectively unopposed due to a defect in the chain of assignment, which led the PTAB to hold all claims unpatentable without considering arguments or evidence submitted in favor of patentability in Old Republic Gen. Ins. Group, v. Owner of U.S. Patent No. 6,519,581, IPR2015-01956, Paper 39 & IPR2015-01957, Paper 38 (P.T.A.B. Apr. 18, 2017).

Old Republic filed two IPR petitions that collectively challenged all claims from U.S. 6,519,581.  The petitions were served on the correspondence addresses of record for Intellectual Ventures (“IV”) and AllAdvantage.  Before the IPR petitions were filed, IV had asserted the ’581 patent against Old Republic in district court.  However, the district court determined that IV lacked standing due to a break in the chain of assignment, such that AllAdvantage was the true owner of the ’581 patent, not IV.  IV appealed the district court’s decision to the Federal Circuit.

While the appeal was pending, the PTAB allowed IV to participate in the IPR as the “purported” patent owner having a potential interest in the ’581 patent.  IV filed a preliminary response, a patent owner response, presented evidence, and conducted oral argument.  After completion of the oral argument, the Federal Circuit affirmed the district court’s decision that IV did not own the ’581 patent.  See Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1324 (Fed. Cir. Mar. 7, 2017).  In view of the Federal Circuit’s decision, the PTAB determined that it should not consider IV’s IPR filings, arguments, and evidence because IV was not the patent owner. 

In addition, the PTAB determined that the petition had been appropriately served under 35 U.S.C. § 312(a)(5) and 37 C.F.R. § 42.105(a) because the petition was served on the correspondence address of record for AllAdvantage and the correspondence address listed in Public PAIR for IV.  See Old Republic, IPR2015-01956, Paper 38 at 6–7.  Also, the PTAB provided AllAdvantage with seven business days to elect to participate in the IPR after the Federal Circuit’s decision.  AllAdvantage elected not to participate, and no other entity made an appearance in the IPR as the patent owner.  Lacking arguments or evidence from any patent owner, the PTAB held all claims unpatentable.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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